Perrigo Pharma International DAC v Domain Admin. E-Marketplace Pty

WIPO Case No. DAE2025-0008

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Perrigo Pharma International DAC v. Domain Admin. E-Marketplace PTY
Ltd.

Case No. DAE2025-0008

1. The Parties

The Complainant is Perrigo Pharma International DAC, Ireland, represented by Omega Pharma Innovation &

Development NV, Belgium.

The Respondent is Domain Admin. E-Marketplace Pty Ltd, United States of America.

2. The Domain Name and Registrar

The disputed domain name <perrigo.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2025. On verification in connection with the disputed domain name. On May 15, 2025, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute
Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name
Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name

Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on May 19, 2025. In accordance with the Rules, paragraph
5(a), the due date for Response was June 8, 2025. The Respondent did not submit a formal Response. The
Respondent sent an informal email on May 21, 2025. The Center sent a possible settlement email on May
23, 2025, but the Complainant did not request the suspension of the proceedings. Accordingly, the Center
notified the Parties of the Commencement of Panel Appointment on June 13, 2025.

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The Center appointed Gökhan Gökçe as the sole panelist in this matter on June 19, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant states that the Perrigo Group is a leading global self-care company which was started in
1887. It is now an international pharmaceutical group specialized in branded and private label self-care
products, available at retailers, pharmacies and e-commerce outlets in the United States of America, across
Europe and in other major markets.

The Perrigo Group owns the PERRIGO trademark all over the world. The Complainant is the registered owner of the following trademarks:

- United States of America Trademark Registration No. 1773993 for PERRIGO, registered on June 1, 1993;

- United States of America Trademark Registration No. 4262523 for
2012; and
- European Union Trademark Registration No. 000176883 for PERRIGO, registered on December 16, 1999. , registered on December 18,

The Complainant has also registered domain names that incorporate the PERRIGO trademark used to access and operate its official Perrigo websites, including <perrigo.com> registered on December 21, 1994.

The disputed domain name was registered on April 26, 2025.

On April 28, 2025, and the following days, the Respondent sent e-mails to the Complainant’s several Vice
Presidents and managers to offer the disputed domain name for sale.

As of the date of this Decision, the disputed domain name does not resolve to an active or content-bearing website. Additionally, the disputed domain name redirected to a sales page on Afternic, displaying the message: “This domain is registered but may still be available”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- the disputed domain name identically reproduces the Complainant’s registered trademark.
- the Respondent has no rights or legitimate interests in respect of the disputed domain name;

- the Respondent has registered or is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, following the expiration of the Response deadline, the Center received an informal email from the Respondent on May 21, 2025, stating that its client no longer wished to dispute the matter and provided the authorization code to transfer the

disputed domain name to the Complainant.

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6. Discussion and Findings

6.1 Nature of the UAE Domain Name Dispute Resolution Policy

The Panel notes that the UAE Domain Name Dispute Resolution Policy is substantially similar to the Uniform
Domain Name Dispute Resolution Policy (“UDRP”) and will in this case refer to prior UDRP cases and
principles as well as the applicable sections of the WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), where applicable.

6.2 Substantive Matters

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 6(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has

rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or is being used in bad faith.

Paragraph 6(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the reasonable factual allegations provided in the Complaint as true. See section 4.3 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

For the evaluation of this case, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistently with the consensus views stated therein.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The addition of the country code Top-Level Domain (“cc TLD”) “.ae” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 6(a)(i). WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 6(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

First, the registrations by the Complainant of the trademark PERRIGO constitute prima facie evidence of the authorized to use the Complainant’s trademarks in any manner, including in the disputed domain name.

Second, the Respondent is not commonly known by the disputed domain name, which suggests a lack of rights and legitimate interests in the disputed domain name.

Third, the Respondent’s registration of the disputed domain name on April 26, 2025, came significantly later than the Complainant’s registration of its trademarks. Prior to the Respondent’s registration of the disputed domain name, the Complainant’s trademarks had enjoyed a high degree of fame and reputation.

The absence of a reply to the Complainant’s contentions by the Respondent allows the Panel to draw inferences, and under the circumstances, the absence of such a reply leaves the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name unrebutted.

The Respondent has admittedly registered or acquired the disputed domain name for no other reason than to offer it for sale. However, mere registration does not establish rights or legitimate interests in the disputed domain name (see Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134).

The Panel finds the second element of the Policy has been established.

C. Registered or is Being Used in Bad Faith

The Panel notes that for the purposes of paragraph 6(a)(iii) of the Policy, paragraph 6(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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The Panel considers that the record of this case reflects that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling the disputed domain name to the trademark owner (or its competitor) for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name (absent any evidence from the Respondent to the contrary). Paragraph 6(b)(i) of the Policy. In this case, the disputed domain name is offered for sale for USD 1,999. This figure likely

exceeds the out-of-pocket expenses, which is a further indication of bad faith.

The Respondent admittedly registered or acquired the disputed domain name for no other reason but to resell it.

In general, registration of a domain name for subsequent resale (including for a profit) does not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to the trademark owner of its competitor. However, if the circumstances of the case indicate that the

respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or
otherwise exploit the complainant’s trademark, UDRP panels generally find bad faith on the part of the

respondent. WIPO Overview 3.0, section 3.1.1.

In the present case, the disputed domain name replicates the Complainant’s distinctive trademark. A basic
Internet search against the disputed domain name returns solely the Perrigo business, of which the
Complainant is part of.

The Respondent contacted several representatives of the Complainant multiple times between April 28 and May 12, 2025, with the sole purpose of offering the disputed domain name for sale. In one of these communications, the Respondent explicitly stated that it had received an offer of USD 1,499 from a third party and presented this as the Complainant’s “final opportunity” to acquire the domain name, indicating clear pressure tactics and commercial intent. The original asking price was USD 1,999.

Such conduct demonstrates that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor thereof, for valuable consideration in excess of its out-of-pocket costs (absent any evidence from the Respondent to the contrary). The nature of the domain name, which identically reproduces the well-known PERRIGO trademark, further reinforces the Panel’s view that the Respondent must have had knowledge of the Complainant and its mark at the time of registration.

The Panel also notes that the disputed domain name does not resolve to an active website but instead redirects to a sales listing on Afternic displaying the message: “This domain is registered, but may still be available.” This further supports the conclusion that the Respondent had no legitimate use for the disputed domain name beyond offering it for sale.

Based on the available record, the Panel finds the third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <perrigo.ae> be transferred to the Complainant.

/Gökhan Gökçe/
Gökhan Gökçe
Panelist
Date: July 3, 2025