The Complainant is Boehringer Ingelheim Vetmedica GmbH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Denis Ryskin of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 6, 2016.
The Center verified that the Complaint together with the amended 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 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2016.
The Center appointed Anna Carabelli 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 Complainant is a family-owned pharmaceutical group of companies based in Germany. Founded in 1885, it is now one of the 20 largest drugmakers in the world.
It operates in several countries, including the United States of America and the Russian Federation, and in two main business areas: human pharmaceuticals and animal health.
The Complainant owns several trademarks including VETMEDIN, a veterinary drug for the treatment of congestive heart failure in dogs.
This trademark is registered in many countries including the United States of America and the Russian Federation; annexed to the Complaint are several international trademark registrations filed by the Complainant.
The Complainant also owns several domain names which incorporate the trademark VETMEDIN, such as , , , and .
The disputed domain name was registered on December 12, 2014. The original registration was in the name of Perfect Privacy, LLC, a company based in Jacksonville, Florida, United States of America, which provides privacy protection services. After the filing of the Complaint, the WhoIs database has been updated to show Denis Ryskin (Moscow, Russian Federation) as the Registrant and the Complaint has been amended to reflect this.
According to the evidence submitted by the Complainant, the disputed domain name does not resolve to an active website but it directs users to a Wix page, a cloud-based web development platform that allows users to create HTML5 web sites and mobile sites.
On March 3, 2016, the Complainant sent a cease and desist letter to the Respondent and requested a voluntary transfer of the disputed domain name, but the Respondent failed to reply. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- the Complainant's trademark VETMEDIN is registered since 1981;
- the disputed domain name is identical to the Complainant's trademark VETMEDIN since it incorporates the trademark in its entirety, without adding any letter or word; moreover, the addition of the new generic Top-Level Domain ("gTLD") ".company" does not prevent the disputed domain name from being identical to the Complainant's trademark;
- the Respondent has no rights or legitimate interests in the disputed domain name since: a) it is not commonly known by the disputed domain name; b) the Complainant has no relationship with the Respondent and has not authorized it to use the trademark VETMEDIN or to apply for the registration of the disputed domain name;
- the disputed domain name has been registered and it is being used in bad faith since it directs users to a blank page. According to the Complainant, the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark; 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for the mark VETMEDIN in several countries, including the United States of America and the Russian Federation.
The disputed domain name is identical to the Complainant's trademark as it reproduces the trademark in its entirety: according to several panel decisions the fact that a domain name wholly incorporates a complainant's registered trademark is sufficient to establish identity or confusing similarity (see F. Hoffmann-La Roche AG v. Whois Privacy Protection Service by / Fukutaro Kojima,WIPO Case No. D2015-1281; Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249).
Moreover, it is well-established in decisions under the UDRP that gTLD indicators may be considered irrelevant in assessing confusing similarity between a trademark and a domain name (see Philip Morris USA Inc. v. Sakaria Mohamoud mussafah,WIPO Case No. D2014-1667; AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Deborah Jordan / Domains By Proxy, LLC,WIPO Case No. D2012-2078). This issue is also addressed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which contains the following statement: "The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration)".
The Panel finds that the present case does not give reason to digress from this principle.
Even if this Panel were to take the gTLD ".company" into account, this would not prevent a finding of confusing similarity. Moreover, in the Panel's opinion, this gTLD would more likely increase the confusing similarity rather than diminish it, owing to the fact that the Complainant is a group of companies (see Compagnie Générale des Etablissements Michelin v. Online Admin, DotBadger Domains,WIPO Case No. D2016-0426; HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Tiagra Investments, Christopher Murphy,WIPO Case No. D2014-2022).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark VETMEDIN and there is no evidence that the Respondent has been or is commonly known by the disputed domain name.
Furthermore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services and it is not making a legitimate noncommercial use of the disputed domain name.
In the light of the above, the Complainant has established prima facie evidence that none of the three circumstances of paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the respondent to rebut the evidence (see among others Arla Foods Amba v. Joan P Evans,WIPO Case No. D2016-0473; Barry Callebaut AG, Barry Callebaut Belgium NV v. VistaPrint Technologies Ltd,WIPO Case No. D2015-0819; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the international reputation of the VETMEDIN mark, the Panel finds that in all likelihood the Respondent should have been aware of the Complainant's well known trademark at the time it registered the disputed domain name (see Vertu Corporation Limited v. David Szn and Jun Luo,WIPO Case No. D2015-0185; Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan,WIPO Case No. D2010-0936; Hermes International SCA v. cui zhenhua,WIPO Case No. D2010-1743).
The lack of active use of a domain name does not as such prevent a finding of bad faith (see Arla Foods Amba v. Joan P Evans, supra; Vertu Corporation Limited v. David Szn and Jun Luo, supra; Accor, So Luxury HMC v. Youness Itsmail,WIPO Case No. D2015-0287; McGrigors LLP v. Fraser Coutts,WIPO Case No. DCO2011-0022).
According to paragraph 3.2 of the WIPO Overview 2.0, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith and in the Panel's view the circumstances of the present case (namely: strong reputation of the Complainant's trademarks, no response to the Complaint, impossibility of conceiving a good faith use of the disputed domain name) clearly show the Respondent's bad faith.
Finally, according to several UDRP panel decisions, the failure of the Respondent to reply to a cease and desist letter may be further evidence of bad faith (see e.g. Coutts & Co. v. Sande Skalnik, Patrick Harding,WIPO Case No. D2015-1590; Citrix Systems, Inc. v. Domains by Proxy, LLC / Sirishareddy Idamakanti - Sirisha Idamaknti,WIPO Case No. D2015-0017; E. & J. Gallo Winery v. Oak Investment Group,WIPO Case No. D2000-1213; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330)
Accordingly, the Panel finds that the Complainant has established element 4(a)(iii) 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.
Anna Carabelli
Sole Panelist
Date: May 17, 2016
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