The Complainant is Hexal AG of Holzkirchen, Germany, represented by Boehmert & Boehmert, Germany.
The Respondent is Protected Protected, Shield Whois of Västra Frölunda, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with AB NameISP (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 23, 2017. On August 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2017, 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 September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 25, 2017.
The Center appointed Martin Schwimmer as the sole panelist in this matter on October 13, 2017. 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 Hexal AG produces generic pharmaceuticals. It owns the trademark SILDEHEXAL, under which it sells an erectile dysfunction drug containing Sildenafil.
The disputed domain name was registered on March 29, 2017, and links to a website offering various erectile dysfunction drugs for sale, including those sold by the Complainant's competitors. The website displays the Complainant's SILDEHEXAL mark as well as the HEXAL house logo. 5. Parties' Contentions A. Complainant
The Complainant owns a German trademark registration for the mark SILDEHEXAL (German Trademark Registration No. 302012041000, registered on September 6, 2012), which it uses in connection with an erectile dysfunction medication.
The Respondent is not licensed or otherwise permitted by the Complainant to use either the SILDEHEXAL trademark, or the Complainant's HEXAL house logo. The deceptiveness of the depiction of the Complainant's product, as well as the deceptiveness use of the HEXAL house logo, is exacerbated by the Respondent's omission of any information on its website as to its own identity. The Respondent exceeds any fair use right it might have had, by selling products other than those of the Complainant and by reproducing the Complainant's house logo.
As the Respondent must be aware of the Complainant as it depicts the Complainant's product, its unauthorized use of the Complainant's trademarks suggests a bad faith intent to trade off their reputation. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the SILDEHEXAL trademark, which mark is reflected in its entirety in the disputed domain name. B. Rights or Legitimate Interests
The Panel notes that the Respondent's website bears information about the Complainant's SILDEHEXAL product, a depiction of the Complainant's HEXAL house logo, and a link to a site that purports to sell various brands of erectile dysfunction medications, including the Complainant's SILDEHEXAL product, but also those of its competitors.
The Complainant states that the Respondent's website is not authorized in any manner. As the Respondent did not respond, the Panel may assume that the Respondent is not in fact authorized by the Complainant.
Once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made by the Complainant. It is undisputed that the Respondent has not been authorized to use the Complainant's marks.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating, inter alia, that "(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."
As stated above, the record reflects that the Respondent's website under the disputed domain name purports to sell SILDEHEXAL branded product. While a reseller of a complainant's trademarked products, could, in theory, be making a "bona fide offering of goods or services" (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter "Oki Data")), here, the Respondent does not satisfy the conditions identified in Oki Data.
The panel in Oki Data set out a four part test. Two factors potentially come into play here: (1) "the respondent must actually be offering the goods or services at issue"; and (2) "the site itself must accurately disclose the respondent's relationship with the trademark owner".
Here, the Respondent is offering third party products in addition to the Complainant's SILDEHEXAL product (if this SILDEHEXAL product is in fact authentic). Furthermore, by utilizing the Complainant's HEXAL house logo, the Respondent falsely implies some sort of affiliation with the Complainant, and thus has not accurately described its relationship with the trademark owner. The Respondent has exceeded the nominative fair use defense in this regard.
As the Respondent has not been authorized to use the Complainant's SILDEHEXAL mark, has not been commonly known by the disputed domain name, and has not otherwise demonstrated rights or legitimate interests in the disputed domain name, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant owns the SILDEHEXAL trademark and the HEXAL house logo. By offering the Complainant's product and by utilizing the Complainant's house logo, the Respondent clearly has targeted the Complainant. By using a domain name reflecting the Complainant's trademark without distinguishing elements, and through use of the house logo, the Respondent exceeds any possible concept of nominative fair use.
As the Respondent is likely acting for commercial gain with obvious knowledge of the Complainant's rights in its SILDEHEXAL trademark, the Panel finds that the evidence establishes bad faith registration and use under paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has satisfied the requirement 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.
Martin Schwimmer
Sole Panelist
Date: November 6, 2017
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