Complainant is Roche Diabetes Care GmbH of Mannheim, Germany, internally represented.
Respondent is Sharma Kupta of Calangute, Goa, India. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC
(the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 22, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 14, 2018.
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
Complainant states that it, “together with its affiliated companies is one of the leading manufacturers of diabetes care products (in this business area).”
Complainant states, and provides evidence to support, that it is the owner of multiple trademark registrations for the mark ACCU-CHEK (the “ACCU-CHEK Trademark”), including the following:
- International registration No. 730,653 for ACCU-CHEK (registered on February 2, 2000) for use in connection with, inter alia, “in vitro diagnostic agents for medical use”.
- European Union registration No. 1,279,546 for ACCU-CHEK (registered on January 18, 2001) for use in connection with, inter alia, “in vitro diagnostic agents for medical use”.
- European Union registration No. 3,426,632 for ACCU-CHEK (registered on March 7, 2005) for use in connection with, inter alia, “test strips for calibrating and monitoring the functioning of medical devices; monitoring solutions for calibrating and inspecti[n]g medical apparatus”.
The Disputed Domain Name was registered on April 13, 2017. The Disputed Domain Name resolves to a website with an online shop offering blood glucose meters among other products. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the ACCU-CHEK Trademark because the Disputed Domain Name contains the ACCU-CHEK Trademark in its entirety and “[l]eaving out a hyphen [and] respectively the addition of the generic term ‘lancets’ does not sufficiently distinguish the disputed domain name from ACCU-CHEK.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s ACCU-CHEK”; by “falsely implying that its diagnostic products are related or similar to those of the Complainant, the Respondent is using the disputed domain name with the purpose of trading on the Complainant’s goodwill”; “Respondent operates an online pharmacy/shop which promotes and sells ACCU-CHEK” which “does not represent a legitimate noncommercial or fair use under the Policy”; and “Respondent did not reply to the Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent “had knowledge of the Complainant’s product ACCU-CHEK and its trademark” when it registered the Disputed Domain Name; “[r]egistration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use”; “Respondent promotes in his website competitor products such as glucose meters in connection with diabetes… refer[ring] explicitly to the Complainant’s ACCU-CHEK products.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ACCU-CHEK Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the ACCU-CHEK Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “accucheklancets”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Here, the Disputed Domain Name contains the ACCU-CHEK Trademark in its entirety. The only differences between the ACCU-CHEK and the Disputed Domain Name are that the Disputed Domain Name adds a hyphen and the word “lancets”.
As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The addition of a hyphen to the Disputed Domain Name is irrelevant here because “punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity”. Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656. And the addition of the word “lancets” (which is defined as “a sharp-pointed and commonly 2-edged surgical instrument used to make small incisions”) also does nothing to avoid confusing similarity because, “when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity.” Yellow Corporation v. MIC,WIPO Case No. D2003-0748.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s ACCU-CHEK”; by “falsely implying that its diagnostic products are related or similar to those of the Complainant, the Respondent is using the disputed domain name with the purpose of trading on the Complainant’s goodwill”; “Respondent operates an online pharmacy/shop which promotes and sells ACCU-CHEK” which “does not represent a legitimate noncommercial or fair use under the Policy”; and “Respondent did not reply to the Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have.”
WIPO Overview 3.0, section 2.1, states: “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.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, it appears that Complainant is arguing that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy given that screenshots provided by Complainant associated with the Disputed Domain Name show that Respondent is, as Complainant states, “promot[ing] in his website competitor products such as glucose meters in connection with diabetes… refer[ring] explicitly to the Complainant’s ACCU-CHEK products.”
The Panel does agree with Complainant that Respondent’s website creates confusion in a manner that constitutes bad faith.
Further, Respondent’s failure to respond to Complainant’s demand letter is additional evidence of bad faith. Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242.
Accordingly, the Panel finds that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: January 28, 2018
Full & Egal Universal Law Academy