The Complainant is Boehringer Ingelheim International GmbH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Anna German of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with AlpNames Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2016. On June 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 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 of the Respondent.
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 June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on August 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 leading global pharmaceutical company. Founded in 1885 and headquartered in Ingelheim, Germany, the Complainant and its 145 affiliates focus on research, development, manufacturing and marketing of various medications. The Complainant reported net sales in 2013 of EUR 14.1 billion.
The Complainant markets a nonsteroidal anti-inflammatory drug (NSAID) under the MOBIC brand. The Complainant is the owner of an international trademark for MOBIC registered on November 28, 1990, which has been afforded protection in numerous countries. The MOBIC mark also has been registered with the Trademark Clearinghouse (TMCH) since April 16, 2014.
The Respondent registered the disputed domain name on May 27, 2016, according to relevant WhoIs records maintained by the Registrar. There is no indication in the record that the disputed domain name resolves to an active website or is otherwise being used by the Respondent.1 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name incorporates the Complainant’s MOBIC mark in its entirety and is identical to the Complainant’s mark. The Complainant asserts that the generic Top-Level Domain (gTLD) “.red” should be disregarded in assessing whether the disputed domain name is identical or confusingly similar to the Complainant’s mark. According to the Complainant, “mobic” is a fanciful term known only in relation to the Complainant, with no meaning in English, French, or any other language, and the results of a Google search for “mobic” are related only to the Complainant’s product.
The Complainant maintains the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant explains that the Respondent has no relationship with the Complainant, and that the Respondent is not authorized or licensed to use the Complainant’s mark. According to the Complainant, the Respondent is not actively using the disputed domain name, and consequently has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent registered and is holding the disputed domain name in order to prevent the Complainant from registering a name reflecting the Complainant’s MOBIC mark in the “.red” gTLD space. As such, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, under the second element UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar and virtually identical to the Complainant’s MOBIC mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is confusingly similar to the Complainant’s mark, and may be considered as identical to the Complainant’s mark when the gTLD is disregarded.3
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent without the Complainant’s authorization or consent has registered the disputed domain name, which is identical to the Complainant’s MOBIC mark, when disregarding the gTLD. The Respondent’s registration of the disputed domain name prevents the Complainant from registering a domain name reflecting the MOBIC mark in the “.red” gTLD space. The Respondent further appears to be passively holding the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it most likely that the Respondent was aware of the Complainant and the Complainant’s MOBIC mark when registering the disputed domain name. The Complainant’s mark consists of a fanciful or “coined” term, which the record indicates is widely used by the Complainant. In the absence of any reply by the Respondent, the Panel is of the view that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. There is no indication in the record that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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 domain name; or
(ii) circumstances indicating that the respondent registered the 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted earlier, the Respondent appears to be acting in concert with the Respondent in Boehringer Ingelheim International GmbH v. Margarita Boyko,WIPO Case No. D2016-1266, together having registered multiple domain names misappropriating the Complainant’s MOBIC mark on May 27, 2016. There is further indication of the stockpiling of domain names, including the disputed domain names. The Panel thus finds that the Respondent registered the disputed domain name with the intention of capitalizing on, or otherwise taking advantage of, the Complainant’s trademark rights.
Given the foregoing, the Respondent’s arguable passive holding of the disputed domain name does not preclude a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. As noted earlier, the Complainant’s mark consists of a coined term. It is neither a dictionary word nor susceptible to descriptive use. The Respondent’s registration and holding of the disputed domain name in the circumstances reflected in the record is strongly evocative of opportunistic bad faith. Indeed, the Panel cannot envision any commercial use the Respondent could make of the disputed domain name that would not trade on the Complainant’s mark. Nor in the Panel’s opinion could the Respondent, being on notice of this dispute, now conceivably make any legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 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.
William R. Towns
Sole Panelist
Date: August 15, 2016
1 On May 27, 2016, the same day that the Respondent in this case registered the disputed domain name with the Registrar AlpNames Limited, the Respondent in Boehringer Ingelheim International GmbH v. Margarita Boyko,WIPO Case No. D2016-1266 registered the domain name with the same Registrar. The Registrar’s WhoIs records reflect that both of these Respondents provided Moscow addresses. Neither of the domain names is currently associated with an active website; however, both of the domain names are hosted by the same domain name server. The WhoIs report submitted by the Complainant in this case reflects that the Respondent is associated with over 300 domain names. It strikes the Panel as likely that the Respondents in these two UDPR proceedings are acting in concert, engaged in the bulk registration of domain names, and may even be the same person.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
3 Although gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may generally be disregarded, and are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
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