The Complainant is Medac Gesellschaft für klinische Spezialpräparate mbH of Wedel, Germany, represented by Uexkull & Stolberg, Germany.
The Respondent is Cancero Pharma, Cancer Foundation & CanceroPharma of Coventry, the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 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. An amendment to the Complaint was filed with the Center on June 15, 2016.
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” 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 June 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2016. An email from the Cancer Foundation was received by the Center on June 27, 2016 (discussed infra), which was commented on by the Complainant in an unsolicited supplemental filing received by the Center on June 29, 2016. The Center notified the Parties of the Commencement of the Panel appointment process on July 8, 2016.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 14, 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 pharmaceutical company which offers niche products in the field of oncology, urology and autoimmune deceases. The Complainant’s portfolio includes a medicine to treat bladder cancer, named BCG-MEDAC. “BCG” stands for “Bacillus Calmette Guérin”, which is a vaccine that is primarily used against tuberculosis but has been used to treat bladder cancer since 1977. The Complainant is the owner of the following trademarks for goods in classes 3, 5 and 10, including pharmaceutical preparations:
- European Union trademark no. 3,106,135 MEDAC, registered on October 5, 2004; and
- International trademark no. 164,715 MEDAC, registered on January 5, 2005 and designating Switzerland, Japan, Kazakhstan, Norway, the Russian Federation, Turkey, Ukraine, the United States of America;
The trademarks are jointly referred to as the “MEDAC Trademarks”.
The disputed domain name was registered on January 2, 2015. In accordance with the evidence submitted with the Complaint, the disputed domain name resolved to a website where BCG preparations for the treatment of bladder cancer were advertised and offered, including the MEDAC-branded preparations and others manufactured by the Complainant’s competitors. The website is currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the MEDAC Trademarks, as MEDAC is included in the disputed domain name and the prefix “bcg” is purely descriptive for pharmaceutical products and is ignored by the relevant public. According to the Complainant the letters “bcg” even reinforces the association between the MEDAC Trademarks and the disputed domain name, as the Complainant sells pharmaceutical preparation under the same designation “bcg medac”.
The Complainant further alleges that the Respondent has no rights or legitimate interest in respect of the disputed domain name because the Respondent has no contractual or proprietary rights in respect of the disputed domain name, was not authorized or licensed by the Complainant to register and use the disputed domain name and the Respondent uses the disputed domain name to sell pharmaceutical preparations of the Complainant and the Complainant’s competitors, so that the use of the disputed domain name is not in connection with the bona fide offering of goods and services. According to the Complainant the Respondent failed the so-called Oki Data test (cf. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) as the website under the disputed domain name does not only sell products of the Complainant and does not disclose the Respondent’s relationship with the Complainant.
The Complainant further claims that the Respondent registered and used the disputed domain name in bad faith. As the MEDAC Trademarks were long known in Germany and other European countries at the time of registration of the disputed domain name, and the disputed domain name was intended to be used for selling MEDAC-branded preparations, which would clearly interfere with the Complainant’s business, the Respondent registered the disputed domain name in bad faith. The Complainant further alleges that the Respondent also used the disputed domain name is bad faith because he is using the disputed domain name to sell products from the Complainant and its competitors, and a test purchase showed that the Respondent, after having received payment, failed to deliver the order. The Complainant claims that the Respondent misused the website under the disputed domain name for illegitimate purposes as it did not require to see a prescription when products were ordered, as German law requires. Consequently the Complainant filed a criminal complaint against the Respondent in Germany. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent did not file a response. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith. Preliminary Matter: Respondent Identity
As stated in the Procedural History, an email from the Cancer Foundation was received by the Center on June 27, 2016. The Cancer Foundation expressed in said email its surprise with the fact that it received a letter from the Center concerning the Complaint as it has nothing to do with the company Cancero Pharma. In reply to this email, the Complainant filed a supplemental filing on June 29, 2016, in which it alleged that the Respondent in this case used the Cancer Foundation’s address as its own so that the Center likewise used that address to send the Respondent the notice communication regarding these proceedings. Consequently, the Complainant considered the registration of the disputed domain name to have been made fraudulently, which made the registration and use of the disputed domain name in bad faith.
In light of these communications (and the Respondent’s default), the Panel finds it more likely than not that the Respondent’s name is false, and the (unknown) registrant uses the name “Cancero Pharma, Cancer Foundation & CanceroPharma” to mask its true identity and create the false impression that the above-referenced third parties are the registrant of the Disputed Domain Name.
In any event, for the purposes of decision implementation, if a transfer is ordered in this case, and in light of the definition of “Respondent” in the Rules, the Panel finds it appropriate that “Cancero Pharma, Cancer Foundation & CanceroPharma” remain the name of the Respondent in this Decision. A. Identical or Confusingly Similar
It is well established that generic Top-Level Domains (“gTLDs”), such as “.com”, may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the disputed domain name is confusingly similar to the MEDAC Trademarks. The Respondent has taken the MEDAC Trademarks in their entirety and merely combined it with the abbreviation “bcg”. This abbreviation is insufficient to differentiate the disputed domain name and the MEDAC Trademarks as, in the field of pharmaceutics in which the Respondent uses the disputed domain name, “bcg” means the “Bacillus Calmette Guérin” vaccine which is used by the Complainant in a bladder tumor preparation which it sells under a name which is wholly or nearly identical to the disputed domain name.
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant showed that the Respondent operated a website under the disputed domain name, which offered pharmaceutical preparations from various manufacturers including the Complainant. When applying the so-called Oki Data principles pursuant to Oki Data Americas, Inc. v. ASD, Inc., supra, which determine if a reseller makes a bona fide offering of the goods under a domain name that include the trademark a complainant relies on, and, while not dispositive, considering that the Respondent is an unauthorized reseller of products under the Trademark, the Panel finds that the Respondent did not make bona fide offerings via the disputed domain name. The reason is that the Respondent used the disputed domain name to also offer products from the Complainant’s competitors, thereby using the MEDAC Trademarks to bait and switch Internet users. The Respondent also failed to disclose its relationship with the Complainant. Moreover, the Respondent has not answered the Complainant’s contentions.
The Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, so that the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service offered on the respondent’s website or location.
The Complaint states that the Respondent has registered and used the disputed domain name in bad faith. It is undisputed that the Respondent’s website under the disputed domain name not only offered the Complainant’s goods without prescription, but also offered products which compete with those manufactured by the Complainant under the MEDAC Trademarks. Thereby, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the MEDAC Trademarks. The Respondent must have been aware of the MEDAC Trademarks when it registered the disputed domain name, as the MEDAC Trademarks were undisputedly known at the time of registration of the disputed domain name, and the Respondent undisputedly offered the Complainant’s products under the MEDAC Trademarks. Although the disputed domain name in now inactive, UDRP panels may find bad faith registration and use of a domain name for purposes of the Policy despite such passive holding based on the totality of the circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Further, the Panel considers the Respondent’s use of the name and address of the Cancer Foundation when it registered the disputed domain name, without the Cancer Foundation being aware or having given its consent, as identity theft, making the registration and use of the disputed domain name deceptive and fraudulent.
For the reasons above the Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, and that also the third and last element of paragraph 4(a) of the Policy is 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
Alfred Meijboom
Sole Panelist
Date: July 28, 2016
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