World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer Schering Pharma AG v. New World Express LLC / udrp D2010-1387

Case No. D2010-1387

1. The Parties

The Complainant is Bayer Schering Pharma AG of Berlin, Germany, represented by Rechtsanwälte Bettinger Schneider Schramm, Germany.

The Respondent is New World Express LLC / udrp D2010-1387 of London, United Kingdom of Great Britain and Northern Ireland and Toronto, Canada, respectively.

2. The Domain Names and Registrar

The disputed domain names <buynebidodirect.com>, <buynebidonow.com>, <nebidoexpress.com>, and <nebidoexpressrx.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2010. On August 17, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On August 17, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <nebidoexpress.com> and providing the contact details. Tucows Inc. indicated that the remaining three disputed domain names had expired. On August 18, 2010 the Center requested Tucows Inc. to indicate in accordance with to paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy the actions required of the Parties to renew the disputed domain names so that the administrative procedure could continue as required under the Policy. On September 9, 2010, Tucows Inc. indicated in an email to the Center that the disputed domain names <buynebidodirect.com>, <buynebidonow.com>, and <nebidoexpressrx.com> may be redeemed. Subsequently, the Complainant renewed the disputed domain names <buynebidodirect.com>, <buynebidonow.com>, and <nebidoexpressrx.com>.

On September 13, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On September 13, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <nebidoexpress.com> and providing the contact details, and indicated the registrant of the disputed domain names <buynebidodirect.com>, <buynebidonow.com>, and <nebidoexpressrx.com> is “udrp D2010-1387”, and that the disputed domain names were subject to the UDRP and had been renewed pursuant to paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2010.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 27, 2010. 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

It is open to the Panel to infer from the Respondent’s failure to file a Response that the Respondent does not dispute the Complainant’s contentions and to otherwise make such inferences from the Respondent’s default as the Panel may see fit.

The Complainant, Bayer Schering Pharma AG, is a part of Bayer AG, a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials (hereinafter: “the Complainant”). The Complainant markets its products in more than 100 countries and employs 36,300 employees worldwide, with annual sales of over EUR 10.4 billion in the year 2009.

The Complainant, along with the Bayer AG enterprise, is one of the ten largest pharmaceutical companies in the world focusing on the research and development of drugs and therapeutic approaches.

The Complainant registered the trademark NEBIDO in various jurisdictions, including:

- NEBIDO, class 5, filed on April 7, 2009, Registration No.TMA771562, Canada.

- NEBIDO, class 5, filed on Febraury 6, 2003, Registration No. 003039385, Community Trademark.

- NEBIDO and design, class 5, filed on December 16, 2009, Registration No. 008761256, Community Trademark.

- NEBIDO, class 5, filed on April 15, 2003, Registration No. 802136, International Registration.

- NEBIDO, class 5, filed on April 29, 2008, Registration No. 77460634, United States.

The Complainant started to market its product NEBIDO, a long-acting depot preparation of testosterone undecanoate, developed for the treatment of male hypogonadism, in the years 2004/2005. NEBIDO is available in many countries, including the United Kingdom, where the Respondent is located, the United States, Europe and the Asia-Pacific region.

The Complainant and its associated companies own numerous domain name registrations containing the

NEBIDO trademarks including <nebido.com>.

The Respondent registered the disputed domain names on July 3, 2009.

The disputed domain names <buynebidodirect.com>, <buynebidonow.com> and <nebidoexpressrx.com> at the time of filing did not resolve to active websites. The disputed domain name <nebidoexpress.com> was used at the time of filing in connection with a website providing information on and offering the Complainant’s product NEBIDO. This website includes the Complainant’s logo in the header section of every section available at the disputed domain name <nebidoexpress.com>.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s NEBIDO trademarks. The Complainant argues that the test for confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors.

The Complainant asserts that it is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s mark.

The fact that the words “buy”, “direct”, “now”, “express” and/or “rx” are added to the Complainant’s trademarks does not eliminate the similarity between the Complainant’s trademarks and the disputed domain names, as all of these words are descriptive components within the disputed domain names.

The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the trademark NEBIDO. The Complainant adds that these circumstances themselves are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain names on the part of the Respondent.

The Complainant says that the disputed domain names <buynebidodirect.com>, <buynebidonow.com> and <nebidoexpressrx.com> are only registered, but not actively used. Therefore, the Complainant concludes that it cannot rely on any use of these disputed domain names in connection with a bona fide offering of goods and services and also the use of the disputed domain name <nebidoexpress.com> in connection with the Complainant’s products does not constitute a bona fide offering of goods or services under the Policy.

The Complainant affirms that NEBIDO has a strong reputation and is widely known, therefore, it is inconceivable that the Respondent registered the disputed domain names unaware of the Complainant’s trademarks.

According to the website formerly at the disputed domain name <nebidoexpress.com>, the Complainant alleges that the Respondent’s purpose is to divert traffic intended for the Complainant’s website to its own with the intent to earn revenues from the diverted traffic.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown that it owns trademark registrations of the mark NEBIDO in different countries.

The disputed domain names <buynebidodirect.com>, <buynebidonow.com>, <nebidoexpress.com>, and <nebidoexpressrx.com> combine the registered trademark NEBIDO in its entirety with the addition of the terms “express” and “buy”, “direct”, “now” and “rx”. The term NEBIDO is clearly the dominant element of the disputed domain names. The Panel has had little difficulty in finding that the disputed domain names are confusingly similar to the trademark NEBIDO, as the additional elements are merely descriptive, dictionary terms related to the Complainant’s business.

There is plenty of authority under the Policy to conclude that confusing similarity may be found where the disputed domain names embody the complainant’s mark in its entirety despite the addition of descriptive terms.

In sum, the disputed domain names are confusingly similar to the Complainant’s marks. Therefore, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant says that the Respondent holds no trademark registration or trade name corresponding to the disputed domain names, has not been commonly known by the domain names, and also that the Respondent is not authorized in any way to use the Complainant’s mark.

The Complainant has registered the mark NEBIDO, and has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark NEBIDO in the disputed domain names.

The Respondent has not submitted a Response to deny the Complainant’s assertions concerning the inappropriate nature of such use of the Complainant’s trademark or to explain why the disputed domain names were used for leading potential customers of the Complainant to the website at “www.nebidoexpress.com”, when there is no connection between the Respondent and the Complainant. In addition, the disputed domain names <buynebidodirect.com>, <buynebidonow.com> and <nebidoexpressrx.com> are not actively used and thus do not appear to provide evidence of a possible legitimate interest of the Respondent.

Under the circumstances, the Panel finds that the Respondent is not in any way engaged in, or preparing for, a bona fide offering of goods or services using the disputed domain names (see F. Hoffmann-La Roche AG v. Alexandr Ulyanov, Private Person, WIPO Case No. D2009-1590). Further, the Panel finds no evidence of use of the domain names in connection with any noncommercial or fair use activities.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove both that the disputed domain names were registered in bad faith and that they are being used in bad faith.

The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain names in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default.

In consequence, the Respondent has provided no explanation as to why the trademark NEBIDO was used in the disputed domain names. It is clear to this Panel that the disputed domain names can only refer to the Complainant’s trademark, registered several years before Respondent’s registration of the domain names. Moreover the word “Nebido” used in the disputed domain names is so obviously connected with the Complainant’s trademark that its very use by someone with no connection with the Complainant’s product suggests opportunistic bad faith (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

In addition, the Panel concludes that the Respondent has registered at the same time four domain names which can be considered similar to the Complainant’s trademark. In the view of the Panel, such conduct constitutes a pattern of conduct preventing a trade or service mark owner from reflecting the mark in a corresponding domain name. The consensus view of prior WIPO UDRP panels under the Policy considers that a pattern of conduct may involve multiple cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.3).

Consequently, it is reasonable to infer that the Respondent did not ignore the existence of the Complainant’s trademark when the Respondent registered the disputed domain names. These findings lead the Panel to conclude that the disputed domain names have been registered and are used in bad faith by the Respondent.

As to the disputed domain names <buynebidodirect.com>, <buynebidonow.com>, and <nebidoexpressrx.com>, the Panel finds, having regard to all of the facts and circumstances of this case, that they are being passively held, which in this matter amounts to bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Finally, the disputed domain name <nebidoexpress.com> is being used in bad faith because the associated website contained the Complainant’s logo and provided information and offers about the Complainant’s product Nebido. Therefore, the disputed domain name <nebidoexpress.com> is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademark.

Therefore, the Panel finds that the Complainant has satisfied the third requirement.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <buynebidodirect.com>, <buynebidonow.com>, <nebidoexpress.com>, and <nebidoexpressrx.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Dated: November 10, 2010

 

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