WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Globex International
Case No. D2007-0812
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany.
The Respondent is Globex International of Derawal Nagar, Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <levitrapower.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2007. On June 6, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 6, 2007, GoDaddy.com, Inc. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2007.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 24, 2007. 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
4.1 The Complainant is involved in the fields of health care, nutrition and high tech materials. Its products are distributed globally through a network of 350 companies and it employs 106,000 employees worldwide. The Complainant is listed on all German stock exchanges and is headquartered in Leverkusen, Germany.
4.2 Since March 2003, the Complainant has been marketing its product Levitra in numerous countries including United Kingdom, Ireland, United States of America, Austria, Norway, Spain, France, Brazil, Germany, Italy, New Zealand, Portugal, Australia, Mexico, Republic of Korea, Kuwait, Taiwan, Hong Kong SAR of China and Israel. Levitra is a prescription medicine that is used to treat erectile dysfunction.
4.3 The Complainant has obtained trademark registrations for the word LEVITRA in various jurisdictions including Germany and India, where the Respondent is located.
4.4 The Complainant has also registered several domain names incorporating the word LEVITRA including <levitra.de>, <levitra.ch>, <levitra.info>. The Complainant disseminates consumer information on the product Levitra through its website “www.levitra.de”.
4.5 The Respondent registered the disputed domain name on May 17, 2006 and uses it to maintain a website which offers for sale a product by the name of LEVITRA as well as various other pharmaceutical products such as Cialis and Viagra.
4.6 On September 5, 2006, the Complainant made a test purchase by placing an order for 4 x 20mg Levitra tablets through the Respondent’s website. The order was accepted on the same day without any need for a doctor’s prescription. The Complainant received the products on September 21, 2006 and proceeded to undertake an analysis of the same. The results confirmed that the goods sold by the Respondent under the name of Levitra were counterfeits of the Complainant’s products.
5. Parties’ Contentions
The Complainant contends as follows:
5.1 The Respondent’s <levitrapower.com> domain name is confusingly similar to the Complainant’s LEVITRA mark notwithstanding the addition of the superlative term “power” or the generic top-level domain name “.com”.
5.1.1 The Respondent has no rights or legitimate interests in respect of the domain name. In support thereof, the Complainant relies on the following factors:
(a) The Complainant has prior rights to the trademark LEVITRA, which precede the Respondent’s registration of the disputed domain name.
(b) There exists no relationship between the Complainant and the Respondent by which the Respondent would have been entitled to register or use the Complainant’s LEVITRA trademark, in conjunction with the generic word “power”, as a domain name.
(c) The only reason for the registration and use of the domain name is for the purposes of redirecting Internet users to the Respondent’s website which offers counterfeit products.
5.1.2 The domain name was registered and is being used in bad faith. In this regard, the Complainant relies on the following circumstances:
(a) By using the Complainant’s long established and well-known LEVITRA trademark, the Respondent is able to create a false and misleading impression that its counterfeit goods are authentic products or otherwise authorized for sale by the Complainant.
(b) The activities of the Respondent violate applicable trademark and unfair competition laws. Its use attempts to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
(c) There is evidence that the Respondent has also engaged in a pattern of registering domain names that correspond with trademarks of third parties, namely, <buyonlinetamiflu.net> and <xenicalcure.com>. In both cases, the respective Panels found that the domain names were registered and used in bad faith (see F. Hoffman-La Roche AG v Globex International, WIPO Case No. D2006-1008 and F. Hoffman-La Roche AG v. Globex International, WIPO Case No. D2006-0692).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interest in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the trademark LEVITRA. The evidence adduced by the Complainant including the evidence of various worldwide trademark registrations fortifies the Complainant’s rights to the same.
The fact that the domain name in issue also comprises the superlative term “power” does not remove the similarities between the Complainant’s LEVITRA trademark and the domain name as a whole. There have been numerous panel decisions that have dealt with this same issue. In most such cases, panels have held that a domain name which wholly incorporates a registered mark may be sufficient to establish confusing similarity for the purposes of the Policy despite the addition of descriptive words to such marks (see Telstra Corporation Limited v Ozurls, WIPO Case No. 2001-0046). In this instance, the Panel finds that the domain name at issue is confusingly similar to the Complainant’s “LEVITRA” trademark as the domain name wholly incorporates the mark and does not nothing more than to add a mere descriptive term in an attempt to distinguish the domain name from the Complainant’s trademark.
Based on the fact that the Respondent’s domain name is confusingly similar to the Complainant’s trademarks, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
B. Rights or Legitimate Interests
In the absence of any evidence to the contrary, the Panel accepts the contention by the Complainant that the Respondent’s only reason for registering the domain name was to redirect Internet users to its website to offer for sale its counterfeit products.
The fact that the Complainant’s LEVITRA product is sold globally lends credence to the Complainant’s contention that its trademark is recognized worldwide. The burden of displacing this contention or otherwise establishing its rights or legitimate interests then lies with the Respondent, and this Respondent has completely failed to do.
The Respondent has also failed to adduce any evidence to negate the contention by the Complainant that there does not exist any relationship between them which would have otherwise authorized the Respondent’s use of the LEVITRA trademark.
Under the circumstances, the fact that the Complainant’s trademark rights precede the registration of the domain name, combined with the failure of the Respondent to respond to the Complainant’s contentions and the supporting evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name.
Based on the above, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
Relying on the evidence adduced by the Complainant, there are sufficient grounds for the Panel to conclude that the main reason for the registration and use of the domain name in issue is to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
The print-out evidence of the Respondent’s website clearly evinces this intent on the part of the Respondent whereby the supposed Complainant’s Levitra products are marketed alongside other widely known pharmaceutical products such as Viagra and Cialis. Based on the set-up of the Respondent’s website and the confusing similarities between the domain name in issue and the Complainant’s trademark, there is a reasonable likelihood that an Internet user would form an impression that the Respondent is supplying genuine Levitra products (i.e. those manufactured by or with the consent of the Complainant), when in fact it is not.
The Panel finds that the authorized sale of what may very well be counterfeit pharmaceutical products under a complainant’s trademark constitutes evidence of registration and use in bad faith of a domain name, especially in circumstances where the Respondent fails to adduce evidence of rights or legitimate interests to the trademark in question. The repercussion of applying false trade descriptions (which includes unauthorized application of trademarks) onto consumable pharmaceutical products is a serious offence in many jurisdictions. The Panel notes that the consumption of unsanctioned or counterfeit products may have serious health implications for consumers.
On the evidence adduced by the Complainant, this Panel refuses to sanction the continued use of the domain name by the Respondent for its conduct, whose primary aim is commercial gain derived from confusion with the Complainant’s mark and products.
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <levitrapower.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: August 7, 2007