WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GmbH & Co. KG v. Domains by Proxy, Inc / Pradeep Dadha / Jonathan Valicenti
Case No. D2006-0465
1. The Parties
The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG, Ingelheim, Germany, represented by Hofstetter, Schurack & Skora Patent-und Rechtsanw�lte, Germany.
The first Respondent is Domains by Proxy, Inc/Pradeep Dadha of Scottsdale, Arizona, United States of America and Royapettah, Chennai, India; the second Respondent is Domains by Proxy, Inc./Jonathan Valicenti of Scottsdale, Arizona, United States of America and Montreal, Quebec, Canada.
2. The Domain Names and Registrar
The disputed domain names are , , , , and are all registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 13, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On April 14, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent Jonathan Valicenti is listed as the registrant for and providing the contact details for the administrative, billing, and technical contact. On April 14, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent Pradeep Dadha is listed as the registrant for and and and providing the contact details for the administrative, billing, and technical contact. On April 18, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent Pradeep Dadha is listed as the registrant for and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 21, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�15,�2006. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 16, 2006.
The Center appointed Gary J. Nelson as the sole panelist in this matter on May�19,�2006. 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.
This proceeding is conducted in English.
4. Preliminary Matter - Partial Dismissal of Action
A UDRP Complaint can only be filed against one Respondent. In this action, the Complainant has filed a Complaint against two different Respondents. The first is Domains by Proxy, Inc./Pradeep Dadha and the current owner of the , , and domain names. The second Respondent is Domains by Proxy, Inc./Jonathan Valicenti and the current owner of the domain name.
Accordingly, the second Complainant Domains by Proxy, Inc./Jonathan Valicenti and the corresponding domain name are dismissed from this proceeding without prejudice. The Complainant shall be free to bring a subsequent action against the identified second Complainant and corresponding domain name, if it chooses to do so.
5. Factual Background
Complainant is the owner of European Community Trademark Registration No. 002409225 for MICARDIS and European Community Trademark Registration No. 000731984 for AGGRENOX and an International Trademark Registration for MOBICOX.
6. Parties’ Contentions
A. Complainant
Complainant is one of the world’s 20 largest pharmaceutical companies and sells pharmaceutical products throughout the world. The Boehringer Ingelheim group currently consists of 144 companies, employees 36,000 people, and was originally founded in the year 1885. Complainant worldwide net sales in 2004 were 8157 million Euros.
Complainant alleges it owns at least 75 registered/pending trademark registrations/applications for AGGRENOX throughout the world. Complainant sells pharmaceuticals branded with the AGGRENOX trademark to assist in the reduction in the risk of stroke.
Complainant alleges it owns at least 100 registered/pending trademark registrations/applications for MICARDIS throughout the world. Complainant sells pharmaceuticals branded with the MICARDIS trademark to assist in the treatment of hypertension.
Complainant alleges it owns at least 13 registered/pending trademark registrations/applications for MOBICOX throughout the world. Complainant sells pharmaceuticals branded with the MOBICOX trademark to assist in the treatment of osteoarthritis.
Complainant alleges the dominant portion of the domain name is “aggrenox” and that the domain name is confusingly similar to the AGGRENOX trademark. Complainant alleges the dominant portion of the domain name is “micardis” and that the domain name is confusingly similar to the MICARDIS trademark. Complainant alleges the dominant portion of the domain name is “mobicox” and that the domain is confusingly similar to the MOBICOX trademark.
Complainant alleges ownership of common law trademark rights in FLOMAX. Complainant sells pharmaceuticals branded with the FLOMAX trademark to assist in the treatment for benign prostatic hyperplasia. Complainant alleges the dominant portion of the is “flomax” and that the domain name is confusingly similar to the FLOMAX trademark.
Complainant also alleges that the Respondent has no rights or legitimate interests in the contested domain names, and that the contested domain names were registered and are being used in bad faith.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no right or legitimate interest in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
; ; and
Complainant is the owner of numerous trademark registrations for AGGRENOX, MICARDIS and MOBICOX. Therefore, Complainant has established rights in these trademarks pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s and and domain names are confusingly similar to Complainant’s AGGRENOX, MICARDIS and MOBICOX marks, respectively, because they incorporate the entirety of Complainant’s trademarks and merely add the generic phrase “buy generic” and the generic top-level “.com” domain name. Neither the addition of a generic phrase to a another’s trademark nor the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similar. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); See also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, Paragraph4(a)(i) is satisfied).
Confusing similarity is especially acute in this case where the generic phrase “buy generic” has been tagged onto Complainant’s AGGRENOX, MICARDIS and MOBICOX trademarks and relates to the products provided by Complainant. See Accor v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by respondent is descriptive of the complainant’s goods or services marketed in relation to the trademark”). In this case, the Panel concludes the consuming public has become accustomed to the availability of generic versions of main brand pharmaceuticals and, therefore, the phrase “buy generic” relates to Complainant’s trademarks used for pharmaceuticals.
Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the , and domain names.
The Panel finds Complainant has established common law trademark rights in FLOMAX for pharmaceuticals. A common law mark is established when a Complainant’s goods or services become distinctive and acquire secondary meaning. Complainant has established secondary meaning in FLOMAX through its extensive use. In this case, products sold under Complainant’s FLOMAX trademark and the “global topseller” of Complainant’s entire human pharmaceutical product line, with sales of 736 million Euro in 2004 alone. See Keppel TatLee Banck v. Taylor, WIPO Case No. D2001-0168 (“On account of long and substantial use of the said name () in connection with its banking business, it has acquired rights under the common law”).
Respondent’s domain name is confusingly similar to Complainant’s FLOMAX trademark because it incorporates the entirety of Complainant’s FLOMAX trademark and merely adds the generic phrase “buy generic” and the generic top-level “.com” domain name. Neither the addition of a generic phrase to a another’s trademark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similar. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026(finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); See also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, Paragraph4(a)(i) is satisfied).
Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the domain name.
B. Rights or Legitimate Interests
; ; ; and
The Panel finds that the Respondent has no rights or legitimate interest in the , , and domain names.
The Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, the Respondent has not provided any evidence that it is commonly known by the , , and domain names, or that it is commonly known by any name consisting of, or incorporating the names “aggrenox”, “micardis”, “mobicox” or “flomax”.. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that all three of these conditions apply to the present case.
In regard to the domain name, Respondent is currently operating a website featuring a click-through opportunity for a product known as Minoxidil. Because Complainant alleges that Minoxidil is a generic equivalent to its MICARDIS branded product, and because Respondent has not filed a Response, the Panel concludes Minoxidil is a product that competes directly with Complainant’s MICARDIS branded pharmaceutical.
Accordingly, the Panel concludes that Respondent’s use of the domain name, which is confusingly similar to the MICARDIS trademark, and which resolves to a website presenting a click-through opportunity to a product that competes directly with a product offered by Complainant, is not a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).
With regard to the , and domain names, Respondent maintains a passive and undeveloped website. Respondent’s failure to develop active websites corresponding to the , and domain names is evidence supporting the conclusion that Respondent has no right or legitimate interest in these domain names. See Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interest where respondent failed to submit a response to the complaint and made no use of the domain name in question); See also Melbourne IT Ltd. v. Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and Respondent is not commonly known by the disputed domain name).
Complainant has proven the requirement of paragraph 4(a)(ii) of the Policy with regard to the , , and domain names.
C. Registered and Used in Bad Faith
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The Panel finds that the Respondent has registered and is using the contested domain names in bad faith.
The Panel also finds that Respondent likely chose the disputed names with full knowledge of Complainant’s rights in the AGGRENOX, MICARDIS and MOBICOX trademarks. Respondent’s awareness of Complainant’s trademarks may be inferred because the marks were registered with the USPTO prior to Respondent’s registration of the contested domain names and since the marks are well known in the pharmaceutical industry. See Kraft Foods (Norway) v. Wide, WIPO Case No. D2000-0911 (“the fact that respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
With regard to , Respondent is using this domain name to attract Internet users to a website that features a click-through opportunity to a product that competes directly with the products sold by Complainant under its MICARDIS trademark. This is evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
With regard to the , and domain names, Respondent is maintaining passive websites. Because the Panel cannot conceive of how Respondent could legitimately use these domain names in light of how the other disputed domain name is being used, the Panel finds this action is sufficient evidence that Respondent has registered and is using these domain names in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also Red Bull GmbH v. Gutch, WIPO Case No. D2000-0766 (finding that respondent’s expected use of the domain name would lead people to believe that the domain name was connected with complainant, and thus was the equivalent to bad faith use).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii) in regard to the , , and domain names.
8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , and be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Dated: June 14, 2006
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