Decision for dispute CAC-UDRP-107861

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant states that it is the owner of the following trademark registrations:

• United States Trademark Registration No. 6661832 “SUDOCREM” (device mark), registered on 8 March 2022, for goods and services in classes 3 and 5;
• International Trademark Registration No. 1573223 “SUDOCREM” (device mark), registered on 20 November 2020, for goods and services in classes 3 and 5. The trademark designates Pakistan (subsequent designation), as well as many other countries;
• International Trademark Registration No. 886513 “SUDOCREM” (word mark), registered on 19 May 2006, for goods and services in classes 3 and 5. The trademark designates China, as well as many other countries;
• European Union Trademark Registration No. 000239442 “SUDOCREM” (word mark), registered on 2 October 2000, for goods and services in classes 3 and 5;
• United Kingdom Trademark Registration No. UK00900239442 “SUDOCREM” (word mark), registered on 2 October 2000, for goods and services in classes 3 and 5;
• New Zealand Trademark Registration No. 97561 “SUDOCREM” (word mark), registered on 27 July 1973, for goods and services in class 5.

The Complainant proved its ownership of the aforementioned trademark registrations by the submitted extracts from the WIPO Madrid, EUIPO, TM View databases and from the respective national offices registers.

The Complainant is an Irish pharmaceutical company specializing in developing and marketing both branded ethical products and non-prescription pharmaceutical products sold over the counter. For instance, the Complainant produces and markets topical creams, antiseptic creams, cough drops, pain medicine, antibiotics, psoriasis medicines, infection medication, and other pharmaceuticals.

Among the great variety of pharmaceutical products sold by the Complainant, it stands out as an over-the-counter medicated cream for soothing sore skin, treating nappy rash, eczema and acne, sold under the brand name “SUDOCREM”. Invented in 1931, “SUDOCREM” is now a product available in more than 40 countries, with estimated global sales of 34.5 million pots each year.

The Complainant establishes its online presence under, inter alia, the domain name <sudocrem.com>, registered on 2 May 1999.

The disputed domain name <sudocrempakistan.com> (hereinafter “disputed domain name”) was registered on 30 June 2025. According to the Registrar, the Respondent is ‘Muhammad Saeed’. The Respondent’s provided address as being in Pakistan.

COMPLAINANT:
The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

RESPONDENT:

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the UDRP).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

In the present case, the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. Therefore, the Panel proceeds to decide only on the basis of the Complainant’s factual statements and the documentary evidence provided in support of them [Paragraph 5(f) of The Rules].

1. CONFUSING SIMILARITY

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

The WIPO Overview 3.0 in Paragraph 1.2.1 states: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”

The WIPO Overview 3.0 in Paragraph 1.7 states: “[…] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The WIPO Overview 3.0 in Paragraph 1.8 states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

The WIPO Overview 3.0 in Paragraph 1.11.1 states: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., ”.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”

In the present case, the Complainant has established that it owns numerous national, international (designated also for Pakistan) and EU trademark registrations for the “SUDOCREM” verbal element, protected for the classes in connection with pharmaceutical preparations (evidenced by the extracts from the WIPO Madrid, EUIPO, TM View databases and from the respective national offices registers).

The disputed domain name <sudocrempakistan.com> contains the Complainant’s trademark “SUDOCREM” in its entirety, with the mere addition of the general term “PAKISTAN”. Since the Respondent’s indicated address is in Pakistan, the additional term can be understood as a geographical term (country name).

Past panels have declared that the addition of a general/geographical term cannot prevent a finding of confusing similarity. Similarly, the “.com” element of the disputed domain name does not affect the finding of confusing similarity.

Therefore, the disputed domain name is considered to be confusingly similar to the relevant trademark.

As a result, the Panel finds that the Complainant has satisfied Paragraph 4(a)(i) of the UDRP.

2. THE RESPONDENT´S LACK OF RIGHTS OR LEGITIMATE INTEREST IN THE DISPUTED DOMAIN NAME

The Panel finds that the Respondent lacks rights or legitimate interest in the disputed domain name.

According to Paragraph 4(a)(ii) of the UDRP, the Complainant shall make a case that the Respondent lacks rights and legitimate interests in the disputed domain name. If the Complainant fulfils this demand the burden of proof shifts to the Respondent and so the Respondent shall demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to prove its rights or legitimate interests, it is assumed that the Complainant satisfied the element of Paragraph 4(a)(ii) of the UDRP (see CAC Case No. 102430, Lesaffre et Compagnie v. Tims Dozman). Moreover, past panels were of the view that it is difficult or sometimes impossible to prove negative facts, i.e., absence of rights or legitimate interest on the part of the Respondent. In this respect, past panels referred to the WIPO Case No. D2000-1769, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni. Within the meaning of Paragraph 4(a)(ii) of the UDRP, once the complainant has made something credible (prima facie evidence), the burden of proof shifts to the Respondent to show that he has rights or legitimate interests in the domain name at issue by providing concrete evidence.

The WIPO Overview 3.0 in Paragraph 2.5.1 states: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.“

The WIPO Overview 3.0 in Paragraph 2.8.1 states: “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”

In the Forum Case No.  FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com>, the Panel stated that: “Here, the WHOIS information of record identifies Respondent as ‘Chad Moston / Elite Media Group.’ The Panel therefore finds under Policy ¶ 4(c) (ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).”

In the present case, the Complainant claims that the Respondent is not affiliated with/authorized by the Complainant in any way to make use of the “SUDOCREM” trademark.

The Complainant claims that:  

• The Respondent is not a licensee of the Complainant, and it has not received any consent, permission, authorization or acquiescence from the Complainant to use its “SUDOCREM” mark in association with the registration of the disputed domain name.
• The disputed domain name and the term “sudocrempakistan” have no meaning in the English language (evidenced by the submitted search from the online dictionary).
• The Complainant has found nothing to suggest that the Respondent owns any identical trademarks to the disputed domain name or to the term “sudocrempakistan” (evidenced by the results of the searches carried out on the EUIPO’s TM View Brand Database).
• There is no evidence that the Respondent has been commonly known by the disputed domain name or by the term “sudocrempakistan” (evidenced by the simple Google search).
• Respondent has not used the disputed domain name in good faith or for a non-commercial activity. The Complainant submitted screenshots that show the website corresponding to the disputed domain name on which the Complainant’s “SUDOCREM” mark is reproduced on top in a prominent manner and where SUDOCREM-branded goods are allegedly offered for sale. For the purposes of the case, the Complainant also underlines that this website:
  • Does not contain any note, information or disclaimer in a prominent manner pointing out that the owner of the website had no relationship with the Complainant.
  • Does not include in the “contact us” section any information about the owner of the website, and it merely reproduces the following text, which leads the user to believe that the website belongs to the Complainant: “At Sudocrem, we value every interaction with our customers. Whether you have a question, concern, or just want to share your experience with our products, we are here to listen and assist. Your satisfaction is our top priority, and we are committed to providing you with the best possible service.”.
  • Reproduces, in an unauthorized manner, images of the Complainant’s SUDOCREM-branded goods and of the “Not just for babies, for everybody” campaign issued by the Complainant.
  • Shows the contact e-mail address: “support@sudocrempakistan.com”.
  • Includes the copyright notice “© 2025, Sudocrem Powered by Shopify”.

According to the Complainant, there is no doubt that the disputed domain name seeks to capitalize the goodwill of the Complainant’s “SUDOCREM” mark, misleading consumers into thinking that the website is operated by or affiliated with the Complainant, when it is not the case. Therefore, this use of the disputed domain name cannot be considered as a bona fide use and it does not meet the cumulative requirements of the Oki Data Test.

The Complainant adds that the disputed domain name resolves to a website which, in view of its content, could be said to impersonate the Complainant in order to purportedly offer for sale the Complainant’s SUDOCREM-branded goods, and as such, it could also be stated that said impersonation can never confer rights or legitimate interests on the Respondent.

The Complainant concludes that there is no doubt that the disputed domain name carries a high risk of implied false affiliation with the Complainant and its SUDOCREM-branded goods, as it could be understood that the disputed domain name resolves to a website owned by, affiliated with, or sponsored/endorsed by the Complainant in order to carry out its commercial activities in Pakistan, when it is not the case.

To the satisfaction of the Panel, the Complainant made a prima facie case that there is no connection between the Complainant and the Respondent and that the Respondent does not have authorization in the disputed domain name from the Complainant.

From the submitted WHOIS information as well as from the simple Google search for “sudocrempakistan”, it is clear that the Respondent is not identified under the disputed domain name.

The Complainant submitted evidence proving that the disputed domain name is used for offering SUDOCREM-branded products online through a website on which the Complainant’s trademark “SUDOCREM” is depicted in its entirety, including the design and the recent brand campaign.

In the circumstances of the present case, the requirement (iii) of the Oki Data test is not met, since the corresponding website does not disclose the Respondent’s relationship with the Complainant. By that, the Respondent’s website simply impersonates the Complainant, and the Internet users might be confused about the affiliation between the Respondent’s and Complainant’s business activities.

From the Panel’s view, the Respondent tried to attract Internet users to the website under the disputed domain name for the purpose of his own commercial gain.

In this regard, the Panel cannot see any rights or legitimate interest from the Respondent in the disputed domain name.

The Respondent did not file any Response to the Complaint. Thus, the Respondent failed to demonstrate rights or legitimate interest in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement under Paragraph 4(a)(ii) of the UDRP.

3. THE REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

The Panel finds that the Respondent registered and used the disputed domain name in bad faith.

The WIPO Overview 3.0 in Paragraph 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith […].“

The WIPO Overview 3.0 in Paragraph 3.6 states: “In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements.”

In the WIPO Case No. D2021-1802, PRADA S.A. v. Domain Administrator, See PrivacyGuardian.org / Zan zhang, the Panel stated: “The website corresponding to the disputed Domain Name displays products bearing the mark PRADA and images of the Complainant’s products for sale with the clear intention to attract, for commercial gain, Internet users to its website, by creating confusion and/or association with the Complainant’s trademarks. This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark PRADA for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed Domain Name has been registered and is being used in bad faith.”.

In the WIPO Case No. D2020-2116, VFS Global Services Private Limited v. WhoisGuard, Inc., Quijano & Associates / Narendra Singhmanushi, the Panel stated: “The Panel also determines that the Respondent’s use of the privacy protection service, WhoisGuard in the circumstances of the present case constitutes additional evidence of bad faith. Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed Domain Name that could be made by the Respondent. The Respondent’s conduct in registering the disputed Domain Name therefore constitutes opportunistic bad faith.”

In the present case, the Complainant has established that it owns numerous national, international (designated also for Pakistan) and EU trademark registrations for the “SUDOCREM” word, protected for the classes in connection with pharmaceutical preparations (proved by the extracts from the WIPO Madrid, EUIPO, TM View databases and from the respective national offices registers).

Past panels have declared that the Complainant’s trademark “SUDOCREM” has certain reputation (see, e.g., the CAC Case No. 107454, Norton Creams Limited v. Richard Bergeron).

As stated above, the disputed domain name is confusingly similar. This finding also indicates bad faith of the Respondent.

The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademarks at the moment of registering the disputed domain name on 30 June 2025.

This conclusion is supported by the fact that the website corresponding to the disputed domain name is using the “SUDOCREM” marks and is offering the SUDOCREM-branded products for sale. The Respondent was and is clearly aware of the Complainant and its products.

Since there is no indication of an affiliation between the Complainant and the Respondent at the website, it can be presumed that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant and its trademarks. Such use cannot be understood as being in good faith.

The Respondent’s identity is hidden in the WHOIS information. The Respondent is not recognized under the disputed domain name, which is underlying the indication of the Respondent’s bad faith.

Overall, it might be concluded that the Respondent did not register and is not using the disputed domain name in good faith.

Following the above-mentioned, the Panel finds that the Complainant has satisfied conditions pursuant to Paragraph 4(a)(iii) of the UDRP.