The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG. of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Gulevskaya Eleonora of Moscow, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names and are registered with AlpNames Limited AlpNames Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 30, 2016. On March 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 4, 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 April 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 27, 2016.
The Center appointed Jane Lambert as the sole panelist in this matter on May 9, 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. 4. Factual Background
The word mark MOBIC is registered with European Union Intellectual Property Office as a EU trade mark for pharmaceutical preparations in class 5 with effect from August 29, 2001 under registration number EU002355998 the registered proprietor of which is the Complainant. There are corresponding registrations in many other countries around the world and the mark has been registered with the Trademark Clearinghouse since April 16, 2014.
The mark is used in relation to meloxicam, a nonsteroidal anti-inflammatory drug (NSAID) which works by reducing hormones that cause inflammation and pain in the body. It is used to treat pain or inflammation caused by osteoarthritis or rheumatoid arthritis in adults and children. Meloxicam is one of the products of the Complainant which is a global research-driven pharmaceutical enterprise with some 140 subsidiary or associate companies with a group turnover of EUR14.1 billion employing about 46,000 individuals around the world.
The disputed domain name was registered on March 2, 2016. 5. Parties' Contentions A. Complainant
The Complainant claims the transfer of the disputed domain names on the following grounds:
(1) The disputed domain names are identical to a trade mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) The disputed domain names were registered and are being used in bad faith.
In support of the first ground the Complainant relies on its portfolio of trade mark registrations around the world and contends that the generic Top-Level Domain ("gTLD") extensions ".click" and ".link" should be disregarded.
As for the second ground, the Complainant has asserted that the Complainant does not carry out any activity for, nor has any business with the Respondent. It has neither licensed nor authorized the Respondent to make any use of the Complainant's trade mark MOBIC. In particular, it has not authorized the Respondent to apply for registration of the disputed domain names.
In respect of the third ground, the Complainant says that the Respondent was or should have been aware that the second level domain names were identical to the Complainant's trade mark because the mark was registered with the Trademark Clearinghouse and the Complainant is one of the largest pharmaceutical companies in the world. It notes that the disputed domain names resolve to blank pages and refers to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400.
The Complainant also contends that the Respondent has registered the disputed domain names in order to prevent it from reflecting the mark in corresponding domain names but it does not give any reasons for its contention. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainants to prove that:
(i) The disputed domain name(s) is/are 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 domain name(s); and
(iii) The disputed domain name(s) has/have been registered and are being used in bad faith.
A Complainant has to prove that each of those three elements is present. A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The second level domain of each of the disputed domain names is identical to the EU registered trade mark number EU 002355998 mentioned above and the corresponding registrations in other countries. The Panel agrees with the Complainant that the gTLD extensions ".click" and ".link" should be disregarded. B. Rights or Legitimate Interests
The Panel finds that the second element is present.
Paragraph 4(c) of the Policy lists a number of circumstances in which a respondent can show that it has a right or legitimate interest in a disputed domain name. There is nothing in the Complaint or its annexes to suggest that any of those circumstances applies here. On the contrary the Complainant has asserted that it has neither licensed nor authorized the Respondent to register the disputed domain names.
If the Respondent has any right or legitimate interest it had an opportunity to say so but has chosen to remain silent. C. Registered and Used in Bad Faith
The Panel holds that the third element is present.
Paragraph 4(b) lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is provided by paragraph 4(b) (ii), namely where the respondent has registered the disputed domain name(s) in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. It is on that ground that the Complainant appears to rely.
In order to fall within that provision a complainant has to show that:
- The registration of the disputed domain names has prevented the Complainant from registering the mark MOBIC as a domain name; and
- The Respondent must have engaged in a pattern of such conduct.
As there has always been a choice (and now there is an abundance) of gTLD names the first requirement would be pointless if it were to be interpreted literally. In order to make sense the words "in the same domain" have to be understood. It follows that the first requirement is satisfied if the registration of the disputed domain names prevents the Complainant from registering its word mark as a domain name in the ".click" or "link" gTLDs. Clearly that requirement has been satisfied.
The proviso suggests that the Respondent must have registered a domain name to prevent the Complainant from registering a corresponding domain name at least once before. The Panel has considered whether the words "pattern of such conduct" requires proof of more than one instance and has decided that it does not. The purpose of the requirement is to disregard isolated incidents where a name that corresponds to a trade mark has been registered inadvertently.
In Oscar Wilde's play The Importance of Being Ernest, Lady Bracknell remarked:
"To lose one parent, Mr. Worthing, may be regarded as a misfortune; to lose both looks like carelessness."
Very much the same thing can be said about cybersquatting. To register one domain name that corresponds to a trade mark may result from inadvertence. To register more than one looks like "a pattern".
In H. Lundbeck A/S v Eleonora Gulevskaya CAC Case No. 101194 the respondent Eleonora Gulevskaya who is also the Respondent in this case registered the complainant's pharmaceutical trade mark "LEXAPRO" as domain names in the ".click" and ".link" top level domains. The Panel (Mr. Matthew Harris) found for the complainant on the ground that there was no obvious legitimate use of the disputed domain names and the most likely explanation as to why they were registered and held is to take unfair advantage in one way or another of the reputation of the Complainant's marks. He continued:
"this is one of those cases where it is difficult to see how the Domain Names might be used in a manner that did not take unfair advantage of the Complainant's mark and which would not involve bad faith (as to which see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 as elaborated upon by the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/ Fayalobi Interaction Management,WIPO Case No. D2008-0455)."
The Panel in this case would prefer to rely on Mr. Harris's decision as evidence of a pattern of conduct but if she is wrong on that point she would find for the Complainant for the same reason as Mr. Harris did in Lundbeck's case.
In any event the circumstances listed in paragraph 4(b) are not exhaustive and the Panel is entitled to say that the circumstances in this case are eiusdem generis those listed in that paragraph and constitute evidence of registration and use in bad faith. The Panel reminds herself that evidence of bad faith is not the same as a presumption of bad faith but in the absence of any evidence or explanation from the Respondent she is bound to infer registration and use in bad faith. 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 names, and be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: May 11, 2016
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