{
    "case_number": "CAC-UDRP-103127",
    "time_of_filling": "2020-06-24 10:41:43",
    "domain_names": [
        "bannwehealth.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "BIOFARMA",
        "LES LABORATOIRES SERVIER"
    ],
    "complainant_representative": "IP TWINS",
    "respondent": [
        "Fundacion Privacy Services LTD"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nBoth Complainants are part of the Servier Group, the largest French pharmaceutical group on an independent level and the second largest pharmaceutical French group in the world. The group is active in 149 countries and employs more than 22,000 people throughout the world. 100 million patients are treated daily with Servier medicinal products and generics.\r\n\r\nWEHEALTH is a department of the Servier Group that was launched in 2016 and is focused on establishing and developing partnerships between the Servier Group and promising startups in the domain of digital health. It has received publicity in the form of various online articles and press releases. On the web, WEHEALTH enjoys a dedicated website, accessible at the address <https:\/\/www.wehealth-digitalmedicine.com>.\r\n\r\nThe Complainant Biofarma is also the registrant of the domain names <wehealth.fr>, registered on 8 June 2016, and <wehealth.com>. Australian and Brazilian subsidiaries of the Complainants are also the registrants of the domain names <wehealthbyservier.com.au> and <wehealthbyservier.com.br>, both registered on 14 November 2016.\r\n\r\nThe disputed domain name was created on 30 April 2020.\r\n\r\nOn 18 June 2020, the Registrar of the disputed domain name confirmed that the Respondent is the current holder of the disputed domain name and that the language of the registration agreement is English.\r\n\r\nThe Respondent has not filed a Response.\r\n\r\n",
    "other_legal_proceedings": "The Panel is not aware of any other pending or decided legal proceedings relating to the disputed domain name.",
    "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Complainant made the following contentions:\r\n \r\nWith respect to identical or similar domain name, the Complainants assert that the disputed domain name is confusingly similar to the trademarks of the Complainants. The second level of the disputed domain name incorporates the whole of the Biofarma’s registered trademark WEHEALTH with the addition of the term “bann”. The Complainants believe that the average internet user will very likely identify “wehealth” within the disputed domain name. The Complainants refer to several WIPO panel decisions which have held that when a domain name wholly incorporates a complainant’s registered mark, this is sufficient to establish identity or confusing similarity for the purposes of the Policy (eg. WIPO Case No. D2000-1525 Magnum Piering, Inc. v. The Mudjackers).\r\n\r\nThe Complainants contend that the distinctive component of the disputed domain name is “wehealth”, which is Biofarma’s trademark as well as an arbitrary term in itself. In the present case, the Complainants argue, the addition of the term “bann” does not lessen the inevitable confusion of the disputed domain name with Biofarma’s WEHEALTH trademark. To the best of the Complainants’ knowledge, the term “bann” could refer to (i) a river located in Ireland; (ii) a German city; or (iii) translation of “to forbid” in Icelandic (source: Google translate).\r\n\r\nShould “bann” refer to one of above-listed definitions or being devoid of any meaning, the Complainants contend that it does not allow the disputed domain name to escape being found confusingly similar to the WEHEALTH trademarks. The mere addition of the term “bann” fails to distinguish the disputed domain name from the Complainants trademarks, which remains recognizable within the disputed domain name.  The Complainants refer to Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states that “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 Complainants also point to WIPO decision D2019-1508 “Crédit industriel et commercial S.A. v. WhoisGuard Protected”, and WIPO decision D2020-0603 “Tipico Co. Ltd. v. Nicholas Bacon”. The Complainants contend that this is all the more true when the trademark in question is composed of an arbitrary word which in their view is the case with WEHEALTH.\r\n\r\nThe Complainants also contend that the disputed domain name should be considered as confusingly similar to the trademark registrations “WEHEALTH by Servier” held by Servier, WEHEALTH being a fanciful term placed in attack position of the concerned trademarks.\r\n\r\nMoreover, it is common case law within UDRP proceedings that the addition of the gTLD \".com\" is not significant in determining whether the domain name is identical or confusingly similar to the mark.\r\n\r\nTherefore, the Complainants contend that the first condition under Paragraph 4(a) of the Rules is satisfied.\r\n\r\nRegarding Respondent's rights or legitimate interests, the Complainants argue that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name for the following reasons:\r\n\r\nFirstly, according to the Complainants verifications, the Respondent is not commonly known by the disputed domain name which redirects towards an error page (root) or a parking page inviting to purchase the disputed domain name.\r\nThe Complainants researches did not allow to find any element that would suggest that the Respondent could be known by “We health”, “Bannwehealth” or “Bann Wehealth”, the disputed domain name redirecting to the pages mentioned above as well as being listed for sale on Sedo, the Respondent accepting offers of 899 USD or more.\r\n\r\nSecondly, the Complainants were not able to search for trademarks in the name of the Respondent at this stage of the procedure, due to the lack of information available on the WHOIS database. However, considering the current use of the disputed domain name, the Complainants strongly believe that the Respondent has acquired no trademark or service mark related to the WEHEALTH term.\r\n\r\nThirdly, the Complainants researches did not allow to find any clue of preparation to use the disputed domain name in connection with a bona fide offering of goods or services, the disputed domain name being merely parked and offered for sale.\r\n\r\nFourthly, the Respondent has never been granted authorization, license or any right whatsoever to use the trademarks of the Complainants. The Respondent is not commercially linked to the Complainants.\r\n\r\nFifthly, since the adoption and extensive use by the Complainants of the trademarks WEHEALTH and “WEHEALTH by Servier” predates the registration of the disputed domain name by the Respondent, the burden is on the Respondent to establish rights or legitimate interests it\/he\/she may have or have had in the domain names (in line with WIPO Case No. D2003-0174 “PepsiCo, Inc. v. Amilcar Perez Lista d\/b\/a Cybersor”).\r\n\r\nThe Complainants strongly believe that none of the circumstances which set out how a respondent can prove his rights or legitimate interests are present in this case. In light of the above developments, given that the Complainants have made a prima facie case that the Respondent lacks legitimate rights or interest in the disputed domain name, the burden of proof shifts to the Respondent, who should come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (as provided in WIPO Case No. D2003-0455, “Croatia Airlines d.d. v. Modern Empire Internet Ltd.”).\r\n\r\nTherefore, the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name.\r\n\r\nTurning to the bad faith argument, the Complainants assert that the Respondent has registered and is using the disputed domain name in bad faith, for the following reasons.\r\n\r\nFirstly, the Complainants state that the Servier Group is so widely well-known that it is very unlikely that the Respondent ignored the rights of the Complainants on the term WEHEALTH. Several press releases, communiqué or news articles have been released on WEHEALTH and “WEHEALTH by Servier” prior to the disputed domain name registration, on an international level. \r\n\r\nSecondly, WEHEALTH is a fanciful term consisting in a combination of English dictionary words. The combination of “we” and “health” makes no sense, grammatically speaking. As a result, “wehealth” stands out from the domain name “bannwehealth.com”. The Complainant contends that the disputed domain name second level should be read “Bann Wehealth” and claim that the Respondent could not have registered the disputed domain name due to its dictionary meaning and\/or its supposed value as a generic term.\r\n\r\nThirdly, and in light of the two above paragraphs as well as the current use of the disputed domain name, the Complainants strongly believe that the Respondent have registered the disputed domain name primarily for the purpose of selling it to the Complainants, owners of the trademarks WEHEALTH, for valuable consideration in excess of out-of-pocket costs directly related to the domain name.\r\n\r\nFourthly, to succeed in a UDRP proceeding, the Complainants must not only show that the domain name was registered in bad faith. The WEHEALTH trademark being arbitrary and intensively used worldwide, the Complainants see no possible way whatsoever in which the Respondent would use the disputed domain name in connection with a bona fide offer of products or services in the first place. The Respondent offers the disputed domain name for sale on the parking page it redirects to and indicates that only offers of 899 USD or more will be considered for the disputed domain name.\r\n\r\nIn light of the above, the Complainants contend that such use of the disputed domain name qualifies as bad faith use by the Respondent, who is attempting to sell the disputed domain name to the corresponding trademark owner. Consequently, the Complainants believe that the third condition under Paragraph 4(a) of the Policy is deemed satisfied.",
    "rights": "The Complainants have, 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 Complainants have rights (within the meaning of paragraph 4(a)(i)of the Policy).",
    "no_rights_or_legitimate_interests": "The Complainants have, 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 Policy).",
    "bad_faith": "The Complainants have, 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 Policy).",
    "procedural_factors": "It has been established that the Rules for Uniform Domain Name Dispute Resolution Policy allow consolidation of multiple domain name disputes and that it is generally possible for multiple complainants to bring a complaint against a single respondent. Circumstances that typically allow for such consolidation are (i) that the multiple complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) that it would be equitable and procedurally efficient to permit the consolidation (see 4.11.1 of WIPO Overview 3.0). The Panel finds that both the Complainant Biofarma and the Complainant Servier have common grievance against the Respondent, that the Respondent engaged in common conduct that has affected both Complainants in a similar fashion, and that it would be equitable and procedurally efficient to permit the consolidation.\r\n\r\nThe Panel further notes that due to the COVID-19 pandemic the written notice of the Complaint was not sent by the CAC because the destination country of the Respondent does not provide delivery services at the moment. According to the CAC, such procedure was preapproved by ICANN. The Rules for Uniform Domain Name Dispute Resolution Policy require that the Provider employs \"reasonably available means calculated to achieve actual notice to Respondent\". The Panel believes that if the CAC sent the Complaint only by all means anticipated by Paragraph 2(a)(ii) of the Rules, particularly to the email address identified by the Respondent when registering the disputed domain names, because physical delivery anticipated by Paragraph 2(a)(i) of the Rules is objectively not available at the moment, then the CAC employed \"reasonably available means\" and satisfied the requirement of the Rules relating to the forwarding of the Complaint to the Respondent. \r\n\r\nTherefore, 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.\r\n",
    "decision": "Accepted",
    "panelists": [
        "Mgr. Vojtěch Chloupek"
    ],
    "date_of_panel_decision": "2020-08-12 00:00:00",
    "informal_english_translation": "The Complainant BIOFARMA SAS (\"Biofarma\") submitted evidence that it is the registered owner of the following trademark registrations:\r\n(i)\tFrench trademark registration WEHEALTH No. 4280290, dated 15 June 2016, registered for goods and services in classes 5, 9, 10, 35, 36, 41, 42 and 44; and\r\n(ii)\tInternational trademark registration WEHEALTH No. 1329611, dated 5 October 2016, registered for goods and services in classes 5, 9, 10 and 44, designating amongst other countries China, India and Russia.\r\n\r\nThe Complainant LES LABORATOIRES SERVIER SAS (\"Servier\") submitted evidence that it is the registered owner of the following trademark registrations:\r\n(i)\tEuropean Union trademark registration WEHEALTH BY SERVIER No. 015850548, dated 20 September 20 2016, registered for goods and services in classes 5, 9, 10, 35, 36, 41, 42 and 44;\r\n(ii)\tFrench trademark registration WEHEALTH BY SERVIER No. 4300433, dated 19 September 2016, registered for goods and services in classes 5, 9, 10, 35, 36, 41, 42 and 44; and\r\n(iii)\tInternational trademark registration WEHEALTH BY SERVIER No. 1361896, dated 11 November 2016, registered for goods and services in classes 5, 9, 10 and 44, designating amongst other countries China, United States, India and Russia.\r\n",
    "decision_domains": {
        "BANNWEHEALTH.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}