The Complainant is Dr. Reddy’s Laboratories Ltd., India, internally represented.
The Respondent is Ralph Cioffi, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 12, 2021. The Center verified that the Complaint together with the amended 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 May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021. The Center appointed Zoltán Takács as the sole panelist in this matter on June 25, 2021. 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. The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background Incorporated in 1984, the Complainant is one of the leading pharmaceutical companies in India. The Complainant’s principal markets are in Germany, India, Russian Federation, the United Kingdom, and the United States, but it is also doing business in Australia, Brazil, Canada, China, South Africa and other countries. The Complainant is owner of several trademarks containing the “Dr.Reddy’s” name, including the Indian Trademark Registration No. 2998881 for the mark DR. REDDY’S and design element registered on July 1, 2015 in class 10 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks. The Complainant has online presence at “www.drreddys.com”. The corresponding domain name was registered on June 27, 1997. The disputed domain name that was registered on April 19, 2021 and used in relation to a phishing scheme is currently inactive. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its trademark. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The Complainant submits that the disputed domain name was registered and is being used in bad faith in the context of a phishing scheme. The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (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 disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced proper evidence of having registered rights in the DR. REDDY’S trademark and for the purpose of this proceeding the Panel establishes that the Indian Trademark Registration No. 2998881 satisfies the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant’s trademark rights, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark. According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. According to section 1.10 of the WIPO Overview 3.0, unless the design element of a trademark comprises the dominant portion of the relevant mark such that it effectively overtakes the textual elements in prominence, trademark registrations with design elements prima facie satisfy the requirement that the complainant show “rights in a mark” for assessment as to confusing similarity. The Complainant’s trademark consists of the word element “Dr. Reddy’s” (which is also the main element of its company name Dr. Reddy’s Laboratories Limited) followed by a design element. The design element of the trademark does not convey any relevant information for the purposes of this proceeding. What stands out in the Complainant’s trademark is the word element “Dr. Reddy’s”. The disputed domain name differs from the Complainant’s DR. REDDY’S trademark by one letter (containing letter “a” instead of letter “e”) and in the Panel’s view it is visually and in particular phonetically sufficiently proximate to be confusingly similar to it. The use of the disputed domain name to fraudulently impersonate the Complainant affirms this finding. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”, or as in this case “.org”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the DR. REDDY’S trademark. The Complainant has never authorized the Respondent to use its trademark in any way, and its prior rights in the trademark precede the date of registration of the disputed domain name. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 the 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 Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: (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 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 your website or location or of a product or service on your website or location. The Complainant provided evidence showing that the Respondent has used the disputed domain name to send a fraudulent email impersonating the Complainant in an attempt to receive payment. The Respondent’s use of the Complainant’s logo in the fraudulent email supports a finding that the Respondent registered the disputed domain name in bad faith with actual knowledge of the Complainant’s trademark. Previous UDRP panels have held that the use of a domain name to send deceptive emails to solicit fraudulent payments may constitute bad faith (See section 3.4 of the WIPO Overview 3.0.). The Panel is convinced this is the case here. The Respondent used the disputed domain name in connection with a fraudulent scam designed to defraud the Complainant’s business partners into believing that they are being contacted by the Complainant, requesting payment. The Respondent’s failure to react and respond to the compelling evidence submitted by the Complainant, in view of the Panel, also supports an undisputed presumption of the Respondent’s evident targeting of the Complainant’s trademark rights within the meaning of paragraph 4(a)(iii) of the Policy. The fact that the disputed domain name currently resolves to a website displaying an error message does not alter the Panel’s conclusion. According to section 3.3 of the WIPO Overview 3.0, passive holding of a domain name does not prevent a finding of bad faith. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Zoltán Takács
Sole Panelist
Date: July 9, 2021
Full & Egal Universal Law Academy