The Complainant is Boehringer Ingelheim International GMBH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Hector Milla of Lima, Peru. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2016, 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 January 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2016. Communications from the Respondent were received by the Center on January 28 and 30, 2016 and February 4, 6, 21, 22 and 25, 2016.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 25, 2016. 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.
The Respondent requested that the Complaint and these proceedings be translated into Spanish, arguing that he has no knowledge of the English language.
However, the Respondent has sent some communications to the Center in English as well as in Spanish, and this fact suggests that the Respondent has at least a minimal understanding of the English Language.
Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Administrative Panel. In this case the language of the Registration Agreement is English. Accordingly, the language of the proceeding is English.
Notwithstanding the above, this Panel has taken into account the communications sent by the Respondent in both English and Spanish, to allow both parties to be fully heard in this proceeding. 4. Factual Background
The Complainant is a German group of companies whose main business focuses on human pharmaceuticals and animal health.
The Complainant claims that, in 2013, it had an amount of net sales equal to EUR 14.1 billion.
The Complaint’s drug OFEV is approved to treat idiopathic pulmonary fibrosis.
The Complainant owns the following international trademark registration:
Trademark No.
Trademark
Designated Countries and Territories
Date of Registration
1120388
OFEV
Australia, Bahrain, European Union, Iceland, Japan, Republic of Korea, Norway, New Zealand, Oman, Singapore, Syrian Arab Republic, Turkey, United States of America, Albania, Bosnia and Herzegovina, Belarus, Switzerland, China, Cuba, Algeria, Egypt, The Islamic Republic of Iran, Kenya, Liechtenstein, Morocco, Montenegro, The former Yugoslav Republic of Macedonia, Montenegro, Serbia, Namibia, Russian Federation, Ukraine, Viet Nam.
April 10, 2012
The Complainant owns the following domain names:
Domain name
Registration Date
July 9, 2014
August 11, 2014
December 4, 2014
August 11, 2014
July 10, 2014
November 8, 2011
January 7, 2015
January 12, 2006
December 4, 2014
May 30, 2014
May 30, 2014
May 31, 2014
August 11, 2014
July 11, 2014
The disputed domain name was registered on June 17, 2015. 5. Parties’ Contentions A. Complainant
The Complainant argues: I. Identical or Confusingly Similar
That the disputed domain name is confusingly similar to the trademark OFEV, because said trademark is entirely included in the disputed domain name.
That the addition of the letters “ip” is certain to increase this confusion because said letters will be seen as the acronym for “idiopathic pulmonary” fibrosis, being that OFEV is prescribed for this illness.
That the addition of the the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark OFEV.
That, since the trademark OFEV has no meaning in English, French or any other language, it is only known in relation to the Complainant. II. Rights or Legitimate Interests
That the name of the Respondent is Hector Milla, and that therefore he is not known by the disputed domain name.
That the Respondent has no rights or legitimate interests in relation to the disputed domain name, and is not related in any way with the Complainant.
That the Complainant does not carry out any activity with the Respondent.
That the Complainant has never granted any license or authorization to the Respondent regarding the use of the Complainant’s trademarks.
That the website to which the disputed domain resolves consists of a “blank page” that only displays a Spanish sentence which, translated into English, reads “hello, everything is ready, now it is OK, everything is ready to work korea”, a fact that demonstrates a lack of rights or legitimate interests over the disputed domain name. III. Registered and Used in Bad Faith
That the Respondent was necessarily aware of the trademark OFEV when he registered the disputed domain name.
That by registering the disputed domain name, the Respondent is preventing the Complainant from reflecting its trademark in a domain name.
That the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use (and cites Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and CBS Broadcasting, Inc. v. Dennis Toeppen,WIPO Case No. D20000400). B. Respondent
The Respondent did not submit a formal Response to the Center. However, the Respondent did raise several arguments in his communications sent to the Center on January 28 and 30, 2016 and February 4, 6, 21, 22 and 25, 2016.
In essence the Respondent argues:
That the disputed domain name derives from the combination of the terms “ofertas” (translated into English as “offers”) and “vip”.
That the fact that the disputed domain name was registered under the gTLD “.com” proves that its acquisition by the Respondent does not entail a geographical association with the Complainant, which still has the option to purchase a domain name under the country code Top-Level Domain (“ccTLD”) that corresponds to its country.
That the disputed domain name was available at the time of acquisition, which is why the Complainant cannot be deemed as the rightful owner of said domain.
That if the Complainant considers that the disputed domain name is similar to its OFEV trademarks, it could purchase the disputed domain name from the Respondent. The Respondent states in his email of February 4, 2016 that he is willing to sell the disputed domain name to the Complainant, for a sum of USD 2,000.
That the Respondent is not making a commercial use of the disputed domain name, and that there is no bad faith use of said domain name in this case.
That he did not acquire the disputed domain name with an intent to prevent the Complainant from reflecting its trademark in .
That the website to which the disputed domain name resolves displays a message indicating that the Respondent is ready to start the commercialization of Korean products.
That the Complainant did not take any active steps to contact the Respondent in order to acquire the disputed domain name.
That this proceeding should be deemed invalid because the hyperlinks related to the Rules and the Policy, that were provided by the Center in its communication to the Respondent, are no longer available. 6. Discussion and Findings
As a preliminary matter, the Panel, noting the Respondent’s contention immediately above, has checked the links in the Center’s communications to the Respondent and has found them to be in working order. As such, it is unnecessary to consider what effect the alternative might have on this proceeding. A. Identical or Confusingly Similar
The Complainant is the owner of a trademark registration for OFEV.
The disputed domain name is confusingly similar to the Complainant’s trademark OFEV because it wholly incorporates said mark.
The argument of the Complainant indicating that the term “ip” stands for “idiopathic pulmonary” fibrosis, and the argument of the Respondent indicating that the term “ofevip” derives from combining the Spanish term “ofertas” on one side, and the term “vip” on the other, were not supported with any type of evidence (thus having a low probative force).
These arguments were poorly supported. However, this Panel determines that (due to the fact that the trademark OFEV is entirely incorporated in the disputed domain name) there is, at least, a possibility of users confusing the disputed domain name with the OFEV mark. The mark OFEV does cover a product for the treatment of idiopathic pulmonary fibrosis. Therefore, the addition of the term “ip” does not exclude the risk of confusion.
The addition of the gTLD “.com” in this case is immaterial for purposes of assessing confusing similarity. This Panel cannot take into account the gTLD “.com”, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where respondents may have rights or legitimate interests in a domain name:
(i) Before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant argued that it did not grant, assign, license, or sell the trademark OFEV to the Respondent, or in any way authorize the Respondent to register or use this trademark in any manner. This assertion was not contested by the Respondent (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The Respondent argues that he was the first to acquire the disputed domain name, and that the Complainant is only trying to steal the disputed domain name from him. The Respondent stated that the website to which the disputed domain name resolves clearly displays an indication that Korean products are to be sold by means of said website. From his perspective, this demonstrates rights or legitimate interests over the disputed domain name.
The Complainant indicates that the sentence posted on the website to which the disputed domain name resolves demonstrates the Respondent’s lack of rights or legitimate interests over the disputed domain name.
The arguments provided by the Respondent do not demonstrate that he has been commonly known by the disputed domain name.
Contrary to the allegations of the Respondent, the fact that the website to which the disputed domain name resolves displays the sentence “hello, everything is ready, now it is OK, everything is ready to work korea”, is not sufficient evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. If the Respondent was to prove to have been engaged in preparations to sell Korean products through the website to which the disputed domain name resolves, he would need to have filed evidence proving such demonstrable preparations to actually commercialize those products. The Respondent considers that the mere display of a sentence is convincing proof of demonstrable preparations to use the disputed domain name. It is not.
The Respondent did not prove to have any rights over the OFEV trademark, while the Complainant has shown that it is the owner of a registration for said trademark.
From the communications sent by the Respondent to the Center, the Panel notes that the Respondent has offered to sell the disputed domain name to the Complainant for USD 2,000. This shows that the Respondent is trying to profit from the disputed domain name. This conduct cannot be deemed as a legitimate, noncommercial use of the disputed domain name.
The Respondent’s attempt to obtain a commercial gain in excess of his documented out-of-pocket costs directly related to the domain name, by registering a domain name incorporating the trademark of the Complainant without any authorization or legitimate right to do so, and then attempting to sell that domain name to the Complainant, proves that the Respondent lacks rights or legitimate interests over the disputed domain name (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D20000113).
Therefore, the second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Complainant provided no evidence to demonstrate that the Respondent was aware of the trademark OFEV at the time of registration of the disputed domain name. The Complainant’s allegation is that, since the letters “ip” stand for “idiopathic pulmonary” fibrosis, it is evident that the Respondent knew about the OFEV trademark (but this was not supported with evidence).
Further, the Complainant did not submit evidence of registration of its trademark OFEV in the country where the Respondent has declared to have his domicile (Peru), nor did the Complainant show any type of evidence proving any presence of said mark in Peru.
The Complainant has not supported its allegations claiming that the Respondent is preventing the Complainant from reflecting its mark in the domain name space. The Complainant did not demonstrate that the Respondent had engaged in a pattern of such conduct and provided no evidence in connection with its allegations.
The Complainant indicated that the Respondent’s inactive use of the disputed domain name is evidence of the bad faith use that is being made by the Respondent, and cites Telstra Corporation Limited v. Nuclear Marshmallows, supra; and CBS Broadcasting, Inc. v. Dennis Toeppen, supra. The Complainant did not argue, or prove any of the Telstra factors regarding passive holding. The Panel finds that the two cases cited by the Complainant are materially different to the present case.
In Telstra, the Panel considered several circumstances before finding bad faith. Unlike in Telstra, the Complainant in this case has failed to prove, among other factors: a) that its OFEV mark has a strong reputation and is widely known in Peru (or in other countries); b) that the Respondent took active steps to conceal its true identity; and c) that the Respondent provided, and failed to correct, false contact details in breach of his registration agreement.
In CBS Broadcasting, the panel found bad faith use because the Respondent “…was in the business of registering domain names for the purpose of selling the domain name to the owners of the trademarks. He was engaged in that business at the time he registered the domain name in dispute. When he registered the domain name, he knew of Complainant’s prior use of its mark…”. In this case, the Complainant was unable to demonstrate that the Respondent is in the business of registering domain names for selling them to trademark owners, or that the Respondent knew about the Complainant´s prior use of its mark.
However, from the evidence found on the record, this Panel notes that the Respondent has offered, in its email copied to the Center of February 4, 2016, to sell the disputed domain name, which contains the Complainant’s trademark, to the Complainant for a sum of USD 2,000. From this Panel’s perspective, this shows an intention of the Respondent to sell the disputed domain name to the Complainant for a sum of money that likely far exceeds the out-of-pocket costs related with the registration of the disputed domain name. This conduct is considered to constitute evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy. The offer for sale to a complainant of a domain name that is confusingly similar to that complainant’s trademark for a high consideration is sufficient to find bad faith under the Policy (see Icar SPA v. ICAR,WIPO Case No. D2000-0563).
The third element of the Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: March 11, 2016
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