The Complainant is Boehringer Ingelheim Vetmedica GmbH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Alexander V Ruskin of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar R01 LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2017. On September 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 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 Complaint was submitted in the English language. The language of the registration agreement for the disputed domain name is Russian. On September 15, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Russian of the Complaint, and the proceedings commenced on September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2017.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 7, 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.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant has submitted its Complaint in the English language, and has requested the proceeding to be held in English. The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so, and has thus not objected to the Complainant’s request the proceedings to be held in English.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages. 4. Factual Background
The Complainant is a family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer in Ingelheim am Rhein, Germany. The Complainant has later become a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies worldwide with roughly 46,000 employees. The two main business areas of the Complainant are: Human Pharmaceuticals and Animal Health. In 2013 alone, net sales of the Boehringer group amounted to about EUR 14.1 billion.
Vetmedin is a prescription drug produced by the Complainant, and is used for the treatment of the canine congestive heart failure.
The Complainant owns a number of trademark registrations for VETMEDIN, including the following registrations (the “VETMEDIN trademark”):
- The International trademark VETMEDIN with registration No. 463307, registered on September 4, 1981, for a number of jurisdictions including the Russian Federation, for goods in International Class 5;
- The European Union trademark VETMEDIN with registration No. 003249547, registered on December 22, 2004, for goods in International Class 5;
- The International trademark ВЕТМЕДИН, with registration No. IR 1054249, registered on September 20, 2010, for a number of jurisdictions including the Russian Federation for goods in International Class 5.
The Complainant is also the owner of the domain name , registered on May 23, 2000.
The disputed domain name was registered on June 20, 2014. The disputed domain name points to a website in Russian that offers the Complainant’s products for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its VETMEDIN trademark. The disputed domain name includes this trademark in its entirety without the addition of any other letter or word. The only difference between the VETMEDIN trademark and the disputed domain name is the addition of two hyphens in the latter, which does not distinguish the disputed domain name from the trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any business with the Respondent and has not licensed or authorized the latter to use the VETMEDIN trademark or to register the disputed domain name. The disputed domain name resolves to a website that offers for sale the Vetmedin drug in competition with the Complainant, without requiring a medical prescription. Internet users may wrongly believe that they may buy the official Vetmedin medicine of the Complainant without prescription. This shows that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant VETMEDIN trademark, seeking to use the disputed domain name to divert the consumers to its website for commercial gain by offering them the Vetmedin drug for sale in competition with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad fad faith. It points to a website that offers Vetmedin drugs in competition with the Complainant and without any authorization from it, which may cause disruption to the Complainant’s business. The Complainant contends that the Respondent must have been aware of the VETMEDIN trademark at the time the Respondent registered the disputed domain name, which resolves to a website that makes direct reference to the Vetmedin products, and propose to sell them. Therefore, the Respondent has registered and used the disputed domain name intentionally to attract visitors for commercial gain by confusion with the Complainant’s VETMEDIN trademark.
The Complainant also submits that on July 12, 2017, it sent a cease-and-desist to the Respondent, to which the Respondent did not answer. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this proceeding, the Respondent has not submitted a Response and has not disputed the contentions of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar
The Complainant has provided evidence for its rights in the VETMEDIN trademark, which is also registered in the Russian Federation, where the Respondent is located.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain “gTLD” of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” part of the disputed domain name.
Therefore, the relevant part of the disputed domain name that has to be examined is “vet-med-in”, which reproduces all syllables of the VETMEDIN trademark, separated by hyphens, without the addition of any other elements. This makes the relevant part of the disputed domain name phonetically identical to the trademark, and confusingly similar to it in as visual appearance and meaning.
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the VETMEDIN trademark in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Complainant does not carry out any business with the Respondent and has not licensed or authorized the latter to use the VETMEDIN trademark or to register the disputed domain name. The disputed domain name resolves to a website that offers for sale the Vetmedin drug alongside third-party products in competition with the Complainant, without requiring the mandatory medical prescription for it. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not responded to the Complaint and has not alleged that is has rights or legitimate interests in the disputed domain name. Notably, the Respondent does not dispute the way in which the disputed domain name is being used.
The disputed domain name incorporates the VETMEDIN trademark entirely. This makes it likely that Internet users may regard the disputed domain name as being an official online location of the Complainant for its Vetmedin products. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that is not authorized by the Complainant and offers the Complainant’s Vetmedin product alongside third-party products in competition with the Complainant while not requiring the otherwise mandatory medical prescription for the drug.
On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the business of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the Complainant’s Vetmedin product and the VETMEDIN trademark, to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent official online location of the Complainant where its genuine products are legitimately offered to the public without prescription. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests of the Respondent.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the VETMEDIN trademark and is confusingly similar to it. The Respondent does not deny that the disputed domain name resolves to a website containing references to the Complainant and offering the Complainant’s Vetmedin product without requiring a prescription. The review of the Respondent’s website shows that it also offers a different product describing it as an alternative to the Complainant’s Vetmedin drug.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent is likely to have registered the disputed domain name targeting the VETMEDIN trademark in an attempt to attract traffic to the disputed domain name and to the associated website by confusing Internet users that they are reaching an official online location of the Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent represents a bad faith registration of the disputed domain name.
The Respondent has not denied that the disputed domain name is being used to refer to a website that refers to the Complainant and offers its product as well as competing products without prescription. Such use may confuse Internet users that they are legitimately offered these products and can use them without prescription, which may endanger the health of the animals to which the drugs are administered. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s VETMEDIN trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website and of the products offered at the Respondent’s website. Therefore, the Panel finds that the disputed domain name has been 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.
Assen Alexiev
Sole Panelist
Date: December 4, 2017
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