The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Andrey G Ladner, Private Person of Sankt Peterburg, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2015. On September 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 5, 2015, the Registrar 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 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 the Respondent of the Complaint, and the proceedings commenced on September 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2015.
The Center appointed John Swinson as the sole panelist in this matter on October 8, 2015. 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 is Boehringer Ingelheim Pharma GmbH & Co. KG, a pharmaceutical company based in Germany which was founded in 1885.
MOBIC is a nonsteroidal anti-inflammatory drug which was created by the Complainant. The Complainant owns an international trade mark for MOBIC, registered on November 28, 1990 (among others) (the “Trade Mark”). The Complainant has registered the Trade Mark with the Trademark Clearinghouse (“TMCH”).
The Respondent is Andrey G Ladner, an individual of the Russian Federation. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on July 24, 2015.
The website at the Disputed Domain Name compares prices of the Mobic product at different online pharmacies. Links to the online pharmacies, which sell the Complainant’s product as well as other products, are also provided. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Trade Mark has been registered since November 28, 1990. The Complainant submits that the Disputed Domain Name is identical to the Trade Mark. The Disputed Domain Name incorporates the Trade Mark it its entirety without any additional letter or word. The Complainant submits that the new generic Top Level Domain (“gTLD”) “.space” is not sufficient to avoid a finding that the Disputed Domain Name is identical to the Trade Mark.
The Complainant submits that the Trade Mark is a fanciful term created by the Complainant. It has no meaning in any language. An Internet search for the Trade Mark displays several results, all of which are related to the Complainant.
Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the Disputed Domain Name because the WhoIs information is not similar to the Disputed Domain Name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not related to the Complainant, and does not have any business with the Complainant. The Complainant has not authorized the Respondent’s use of the Trade Mark or the registration or use of the Disputed Domain Name.
The Complainant submits that the Respondent has no rights to or legitimate interests in the Disputed Domain Name.
Registration and Use in Bad Faith
The Complainant submits that, as the Disputed Domain Name is identical to the Trade Mark, the Respondent must have been aware of the Trade Mark at the time he registered the Disputed Domain Name.
The Complainant submits that this is confirmed by the content of the website at the Disputed Domain Name, which is titled “Buy brand & generic drugs online”, and provides a comparison table of online pharmacies. The website provides links to online pharmacies which sell the Complainant’s product, but also other branded and generic drugs.
The Complainant submits that the Respondent is in the business of selling pharmaceuticals, and therefore must have known of the Trade Mark at the time he registered the Disputed Domain Name. The Respondent deliberately sought to use the goodwill generated by the Trade Mark to attract Internet users seeking the Complainant’s product.
The Respondent has registered and used the Disputed Domain Name to deceive Internet users seeking the Complainant’s product so as to generate revenue from selling unrelated or competing drugs. The Complainant submits that this constitutes bad faith registration and use under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the Trade Mark in its entirety, and no additional words have been added.
The use of a new gTLD can, in some circumstances, play a role in determining identity or confusing similarity. However, in this case, the new gTLD “.space” does not serve such a purpose. It is a generic term which connotes a space or page on the Internet. As such, the Panel considers “.space” can be ignored for the purpose of testing confusing similarity, in the same way that “.com” is generally ignored (see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name features a table comparing the sale of the Complainant’s product at three online pharmacies. The Panel accepts the Complainant’s submissions that it has not authorized such use of the Trade Mark or the Disputed Domain Name. In the circumstances, this use is not bona fide.
- The Respondent is not the authorized distributor or dealer for the Complainant.
- The Respondent has not been commonly known by the Disputed Domain Name, and has no trade marks which incorporate the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Panel considers it likely that the Respondent is, at the very least, generating advertising or affiliate referral revenue from the links to online pharmacies provided on the website at the Disputed Domain Name.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant registered the Trade Mark on November 28, 1990. It is unclear from the record how long the Complainant has been selling its product under the Trade Mark, but based on the date of the Trade Mark registration, it was likely to be doing so long before the Respondent registered the Disputed Domain Name on July 24, 2015.
The website at the Disputed Domain Name contains links to online pharmacies. It also provides information about the benefits of the Complainant’s product. It is clear that the Respondent has some knowledge of the pharmaceutical industry, and was aware of the Trade Mark at the time he registered the Disputed Domain Name.
Further, in 2014, the Complainant registered the Trade Mark with the TMCH. The TMCH is a repository of verified trade mark information. If a party attempts to register a domain name in a new gTLD which exactly matches a trade mark registered in the TMCH, that party is alerted to the relevant trade mark rights and must acknowledge those rights before continuing with the registration. If the registration proceeds, the trade mark owner is alerted.
Here, the second level domain in the Disputed Domain Name is identical to the Trade Mark. It is highly likely that the Respondent would have been advised of the Complainant’s rights in the Trade Mark prior to registering the Disputed Domain Name. The Respondent would have been required to acknowledge those rights to proceed with the registration. It appears that the Respondent has registered the Disputed Domain Name despite being specifically made aware of the Trade Mark at the time of registration. The Panel considers that this is a further indicator of bad faith registration.
As previously discussed, the website at the Disputed Domain Name provides links to online pharmacies which sell products other than the Complainant’s product. Some of those are competing drugs. The Panel considers that the Respondent registered and is using the Disputed Domain Name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website or of the comparison service on the website.
While competitors’ products are not linked directly from the Disputed Domain Name, the Panel considers it sufficient for the purpose of establishing bad faith use that the Respondent is using the reputation of the Trade Mark to attract potential customers to online locations at which they are able to purchase competing products. As such, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on 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 be transferred to the Complainant.
John Swinson
Sole Panelist
Date: October 19, 2015
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