Perrigo Pharma International DAC v Md Rayhan Hossen, Developer

WIPO Case No. D2024-1162

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Perrigo Pharma International DAC v. Md Rayhan Hossen, Developer

Case No. D2024-1162

1. The Parties

Complainant is Perrigo Pharma International DAC, Ireland, internally represented.

Respondent is Md Rayhan Hossen, Developer, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <perri-go.site> is registered with Atak Domain Hosting Internet ve Bilgi

Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2024. connection with the disputed domain name. On March 19, 2024, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2024.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 23, 2024. 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.

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4. Factual Background

Complainant is a pharmaceutical company specialized in branded and private label self-care products selling
products globally at retailers, pharmacies, and e-commerce outlets in the United States of America (“United

States”), across Europe, and in other major markets.

Some examples of Complainant’s trademark registrations for PERRIGO can be found below:

International Registration

Registration No.	Trademark	Jurisdictions	Class	Date
419881	PERRIGO	Mexico	3	August 13, 1992
United Kingdom
UK00001549951	PERRIGO	5	April 9, 1999
(“UK”)

The disputed domain name was registered on December 31, 2023. According to the evidence provided in the Complaint, it has been used to resolve to a website requesting user information replicating Complainant’s logo for the PERRIGO trademark, later resolving to an error page (without content).

5. Parties’ Contentions

A. Complainant

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

Notably, Complainant contends that the disputed domain name is confusingly similar to the registered trademark PERRIGO, since it merely adds a dash separating “perri” and “go” which would not prevent confusing similarity to Complainant’s trademark PERRIGO.

Therefore, according to Complainant, the disputed domain name is confusingly similar with Complainant’s trademark PERRIGO, fulfilling paragraph 4(a)(i) of the Policy.

Moreover, Complainant states that Respondent is using the disputed domain name to create confusion among Internet users falsely suggesting that Respondent is affiliated with or endorsed by Complainant. This way, Complainant states that no legitimate use of the disputed domain name could be reasonably claimed by Respondent, thus paragraph 4(a)(ii) of the Policy has been fulfilled.

Finally, Complainant adds that Respondent purposefully registered and used the disputed domain name referring to Complainant’s PERRIGO trademark, aiming to obtain data from online users by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of a product or service on Respondent’s website. Complainant informs to have sent a Cease and Desist letter to Respondent requesting the immediate cancellation of the disputed domain name which was not replied to or complied with by Respondent.

Thus, according to Complainant, the requirements for the identification of a bad faith registration and use of the disputed domain name have been fulfilled, pursuant to paragraph 4(a)(iii) of the Policy.

Accordingly, Complainant requests transfer of the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph
4(a) of the Policy have been satisfied, as following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel’s decision shall be based upon the complaint.

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
Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds 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 trademark PERRIGO is reproduced within the disputed domain name as the mere inclusion of a dash
(“-”) does not change the flagrant similarity and intent on the registration. Accordingly, the disputed domain
name is confusingly similar to the trademark for the purposes of the Policy as it merely adds a dash between
“perri” and “go,” therefore not preventing confusion or creating a difference in the overall wording that
compounds Complainant’s trademark PERRIGO. WIPO Overview 3.0, section 1.7.

Moreover, the disputed domain name consists also of the generic Top-Level Domain (“gTLD”) “.site”, can be disregarded for purposes of the confusing similarity analysis under the first element. WIPO Overview 3.0, sections 1.11.

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on 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

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 respondent fails to come forward with such relevant evidence,
complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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 notes that Complainant argues that Respondent has used the disputed domain name to create confusion among Internet users and create the impression that Respondent’s website is affiliated with or endorsed by Complainant as it uses Complainant’s trademark PERRIGO and requests user’s data for unknown purposes, as supported by Annex 10 to the Complaint. Moreover, the construction of the disputed domain name by itself carries a risk of implied affiliation to the Complainant, exacerbated by the impersonating content mentioned above, and as such, cannot constitute fair use.

Panels have held that the use of a domain name for illegal activity (e.g., impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(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.

In the present case, the Panel notes that Respondent has registered the disputed domain name that is confusingly similar to Complainant’s trademark PERRIGO - as explained above in Section 6.A - and that the applicable gTLD “.site”, does not prevent any confusion or association to Complainant.

The Panel finds that it was duly demonstrated that Respondent was aware of Complainant’s rights to the trademark PERRIGO at the time of the registration - as Complainant enclosed proof that the disputed domain name resolved to a website using Complainant’s trademark requesting data from Internet users (Annex 10 to the Complaint).

The Panel concludes the registration and use is in bad faith under paragraph 4(b) of the Policy as the use of the disputed domain name falls under paragraph 4(b)(iv) of the Policy as Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark.

Panels have held that the use of a domain name for illegal activity (e.g., impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name to impersonate Complainant aiming to potentially obtain user’s data (Annex 10 to the Complaint) constitutes bad faith under the Policy.

The Panel finds that the circumstances of the present case allows a finding of bad faith in the registration and use of the disputed domain name, considering that (i) Respondent would likely obtain user’s data by using a confusingly similar disputed domain name to Complainant’s trademark; (ii) Complainant operating

an almost identical domain name, such that Respondent most likely knew (or should have known) of its
existence, taking advantage of the Internet user confusion caused by its use in the disputed domain name;
and (iii) the use of the disputed domain name in order to divert Internet users to a website including
Complainant’s trademark PERRIGO, possibly obtaining their data passing off as Complainant.

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Moreover, the Panel finds it relevant that Respondent has not provided any evidence of good faith registration or use, or otherwise participated in this dispute. Complainant has put forward serious claims regarding the apparent bad faith use of the disputed domain name that the Panel would expect any legitimate party would seek to refute.

Based on the available record, the Panel finds that Complainant has established the third element of the

Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <perri-go.site> be transferred to Complainant.

/Gabriel F. Leonardos/
Gabriel F. Leonardos
Sole Panelist
Date: May 7, 2024