The Complainant is Rottapharm S.R.L of Monza, Italy, part of Meda Aktiebolag of Solna, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Programmi Sanitari Integrati Srl of Milan, Italy, represented by Giambrocono & C. S.p.A., Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2016. On September 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 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 October 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2016. The Response was filed with the Center on October 26, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 21, 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 company incorporated in Italy and is engaged in the development, manufacture and supply of healthcare products. It is the owner of trademark registrations including European Union (“EU”) Trade Mark number 011361516 for the word mark ARMOLIPID PLUS registered on April 23, 2013 for pharmaceutical and related products in Class 5.
The Respondent is a company registered in Italy and is engaged in the parallel import of pharmaceutical products. It registered the disputed domain name on July 24, 2016.
The Respondent has asserted to the Complainant that it registered the disputed domain name for the purpose of lawfully selling the Complainant’s original products that were first placed on the market within the EU by the Complainant or with its consent.
The disputed domain name has not been used for the purpose of any active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant states that the disputed domain name is effectively identical to its registered trademark ARMOLIPID PLUS, save for the generic Top-Level Domain (“gTLD”) “.com” which is irrelevant to the assessment of confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it did not authorize the Respondent to register the disputed domain name and that the Respondent’s parallel import of medicines does not provide it with any rights in the Complainant’s trademark. It contends that the Respondent’s use of the disputed domain name is not noncommercial, nor does it represent bona fide commercial use. On the contrary, the Complainant submits that the Respondent is misleadingly using the disputed domain name to misrepresent a commercial connection with the Complainant in order to attract Internet users to its website.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant submits that the Respondent was obviously aware of the Complainant’s trademark when it registered the disputed domain name and has admitted (in correspondence exhibited by the Complainant) that it intends to use the disputed domain name for the purpose of a website selling the Complainant’s products to the public. The Complainant submits that, by so using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product on its website (paragraph 4(b)(iv) of the Policy).
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent admits that it registered the disputed domain name with reference to the Complainant’s trademark. It states that the Respondent is a serious, esteemed and well-established company and a member of the European Association of Euro-Pharmaceutical companies whose members are engaged in the packaging and sale of manufacturers’ original drugs to consumers. It states that there is nothing unlawful about the parallel importation of pharmaceuticals, which is based on the free movement of goods within the EU. It refers to the relevant EU Directive, which states :
“The trade mark right shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in [the EU] under that trade mark by the proprietor or with his consent.”
The Respondent states that it has legitimately been selling the Complainant’s trademarked goods since January 2015 and that it has been open with the Complainant about its intentions concerning the disputed domain name. It states that it has not launched a website because this took time to do and was disrupted by this administrative proceeding. The Respondent submits that its activities will not infringe the Complainant’s trademark and that it has no intention of falsely disclosing any relationship with the Complainant. It specifically denies that there can be any confusion for the purposes of the Policy because it will be selling the Complainant’s own original goods.
In summary, the Respondent recognizes that the disputed domain name corresponds to the Complainant’s trademark, but submits:
“… these trademarks have no effect against the sellers of original products produced by the Complainant. [The Respondent] is not infringing any trademark right of the Complainant. This is the focal point of this case!!!” 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of trademark registrations including the EU Trade Mark ARMOLIPID PLUS referred to above. The disputed domain name is identical to the Complainant’s trademark, but for the gTLD “.com” which is typically to be disregarded for the purposes of assessing confusing similarity. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent claims that it has rights or legitimate interests in the disputed domain name because it is lawfully selling the Complainant’s trademarked goods by reference to the Complainant’s trademark. However the Panel rejects the Respondent’s analysis. While it is quite possible that the Respondent’s activities do not infringe the Complainant’s trademark (although the Panel makes no finding in that regard) this administrative proceeding is directed to rights under the Policy and not to the broader issue of trademark infringement. In particular, it does not follow from the fact that the Respondent may lawfully refer to the Complainant’s trademark in the course of trade that the Respondent may legitimately register a domain name incorporating that trademark, particularly in a case such as this where the disputed domain name is identical to the relevant mark.
Under certain conditions, a respondent who sells trademarked goods under a domain name reflecting a particular trademark may have rights or legitimate interests in that domain name, even where such sales may be unauthorized by the trademark owner (see e.g., paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0”)). However, those conditions have been understood to presuppose that the domain name in question includes a descriptive term in addition to the relevant complainant’s trademark. In this case, the disputed domain name does not meet those conditions; in particular, the disputed domain name comprises the Complainant’s trademark ARMOLIPID PLUS in an unadorned form. In the view of the Panel, the adoption of that name will inevitably misrepresent to Internet users that the disputed domain name is operated or authorized by the owner of the trademark comprising the disputed domain name. In the circumstances, the Panel finds that the disputed domain name itself misrepresents an affiliation between the Respondent and the Complainant. The effect of that misrepresentation could not be fully negated by any statement that the Respondent might include on the relevant website, because the Respondent will by that time have obtained the benefit of visitors to that website.
On the basis that the Panel finds the registration of the disputed domain name to be inherently misleading, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Similar considerations apply to the issue of bad faith. Owing to the inherently misleading nature of the disputed domain name, the Panel finds that the Respondent registered the disputed domain name in bad faith and has used it in bad faith by making preparations to use it unfairly to take advantage of the Complainant’s trademark rights. In particular, the Panel finds that the Respondent intends to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product on its website (paragraph 4(b)(iv) of the Policy).
The Panel does not consider it to be significant that the Respondent had not yet used the disputed domain name for the purpose of any active website. The Respondent’s intentions in this regard were clear and the passive holding of a domain name does not preclude a finding of bad faith when the overall circumstances of the case point to that conclusion (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In the circumstances, the Panel finds that the disputed domain name has been registered and is being used 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 name be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: November 22, 2016
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