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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mundipharma AG v. Uros Kocevar / Domains By Proxy, LLC

Case No. D2012-1386

1. The Parties

The Complainant is Mundipharma AG of Basel, Switzerland, represented by Stevens and Bolton LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Uros Kocevar of New Jersey, United States of America / Domains By Proxy, LLC of Arizona, United States of America.

2. The Domain Names and Registrar

The disputed domain names <flutiform.biz> and <flutiform.org> are registered with GoDaddy.com, LLC .

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2012. On July 9, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On July 11, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2012, 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 July 17, 2012.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2012.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on August 17, 2012. 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

The Complainant is one of a number of privately held independent associated companies (the Mundipharma Independent Associated Companies) which are committed to improving the health and quality of life of people, and having presence in the oncology, rheumatoid arthritis and respiratory markets. The Complainant’s business includes the provision of intellectual property-related services, such as the registration and holding of trademarks and domain names on behalf of the other Mundipharma Independent Associated Companies.

Jagotec AG is the rights owner of the FLUTIFORM trademark registrations in the European Community, Switzerland, Iceland, Norway and Liechtenstein, all of which have been licensed to Mundipharma Laboratories GmbH. The Complainant provides services to Mundipharma Laboratories GmbH regarding the registration and holding of trademarks and domain names. The first trademark registration for FLUTIFORM was applied for in January 13, 2006.

The Complainant owns trademark registrations for FLUTIFORM in Australia, Bangladesh, Hong Kong, China, India, Indonesia, Malaysia, Nepal, New Zealand, Pakistan, Philippines, Singapore, Republic of Korea, Sri Lanka, Taiwan, Province of China, Thailand and Viet Nam.

Mundipharma Laboratories GmbH has expressly consented to the Complainant applying for and holding the disputed domain names and to the Complainant bringing domain name complaints against registrants of gTLDs or ccTLDs containing the trademark FLUTIFORM.

The Complainant owns several domain names containing the FLUTIFORM trademark registered from 2007 onwards.

The disputed domain names <flutiform.org> and <flutiform.biz> were registered by the Respondent on June 23, 2006.

As evidenced in the Complaint, the disputed domain names resolved to pay-per-click websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is one of a number of privately held independent associated companies called Mundipharma Independent Associated Companies, which are committed to improving the health and quality of life of people.

In that sense, the Complainant asserts that over the last 50 years, the mentioned associated companies have become leaders in pain management, developing new drugs and patented formulations to relieve chronic pain for patients.

The Complainant also contends that its business includes applying for and holding trademark and domain name registrations on behalf and for the benefit and use of the other Mundipharma Independent Associated Companies.

The Complainant contends that FLUTIFORM is the brand name for a new pharmaceutical product developed for the treatment of asthma.

Furthermore, the Complainant explains that the brand FLUTIFORM is a made-up word, with no other meaning, that has been coined by SkyePharma AG and Jagotec AG, which are the originating parties involved in the development of such new pharmaceutical product.

The Complainant also asserts that the development of the FLUTIFORM product had been publicized by SkyePharma AG since early 2004 while the corresponding trials were completed during 2005 and February 2006.

Moreover, the Complainant contends that Jagotec AG is the registered proprietor of a number of trademarks registrations for FLUTIFORM, particularly:

- European Community registration for FLUTIFORM, Reg. No. 4834479, in classes, 5, 10 and 42, registered on January 15, 2007;

- Switzerland registration for FLUTIFORM, Reg. No. 562208, in classes, 5, 10 and 42, registered on March 28, 2007;

- Iceland registration for FLUTIFORM, Reg. No. 759/2007, in classes, 5, 10 and 42, registered on July 4, 2007;

- Norway registration for FLUTIFORM, Reg. No. 241002, in classes, 5, 10 and 42, registered on September 24, 2007; and

- Liechtenstein registration for FLUTIFORM, Reg. No. 14655, in classes, 5, 10 and 42, registered on March 29, 2007.

In that connection, the Complainant contends that Jagotec AG has entered into a 2Development and Marketing Agreement” with Mundipharma International Corporation Limited, pursuant to which Jagotec AG granted the latter a license to use the FLUTIFORM trademarks. Moreover, the Complainant contends that Mundipharma International Corporation Limited has sub-licensed rights under such agreement to Mundipharma Laboratories GmbH.

The Complainant also asserts that it holds trademark applications and registrations for FLUTIFORM in many jurisdictions including Australia, Bangladesh, Hong Kong, China, India, Indonesia, Malaysia, Nepal, New Zealand, Pakistan, Philippines, Singapore, Republic of Korea, Sri Lanka, Taiwan, Province of China, Thailand and Viet Nam.

On the other hand, the Complainant contends that Mundipharma Laboratories GmbH has consented to the Complainant applying for and holding the disputed domain names and to the Complainant bringing domain name complaints against registrants of gTLDs or ccTLDs containing the trademark FLUTIFORM and to recover them.

Moreover, the Complainant affirms that it owns a number of domain names incorporating the FLUTIFORM trademark, such as:

- <flutiform.net>, registered on May 18, 2007;

- <flutiform.at>, registered on March 2, 2007;

- <flutiform.be>, registered on March 30, 2007;

- <flutiform.cz>, registered on April 3, 2007;

- <flutiform.dk>, registered on March 30, 2007;

- <flutiform.de>, registered on March 30, 2007;

- <flutiform.gr>, registered on March 30, 2007;

- <flutiform.es>, registered on March 30, 2007; and

- <flutiform.co.uk>, registered on January 9, 2007, among others.

The Complainant contends that the disputed domain names contained a list of links that presumably redirected the users to other websites of a commercial nature.

Morever, the Complainant contends that the relevant part of both of the disputed domain names is “flutiform” and that it is self-evidently identical to the Complainant’s trademarks. Moreover, the Complainant asserts that in the present case “.org” and “.biz” are not elements of distinctiveness.

On the other hand, the Complainant contends that the Respondent has not made any bona fide or legitimate commercial use of the disputed domain names.

In that sense, the Complainant asserts that neither the Complainant nor Jagotec AG or any of the other Mundipharma Independent Associated Companies has consented to the Respondent’s use or registration of a domain name comprising the well-known FLUTIFORM trademark.

Moreover, the Complainant contends that the misuse of the FLUTIFORM trademark could have dangerous consequences for human health.

The Complainant contends that the Respondent appears to be taking advantage of the Complainant’s trademarks to attract Internet users to what are presumably pay-per-click links which are predominantly of a health related nature and include references to asthma.

Finally, the Complainant asserts that the disputed domain names were registered and are being used in bad faith. In this sense, the Complainant contends that the trademark FLUTIFORM was extensively used by SkyePharma prior to June, 2006, that the European Community trademark was field prior to June 2006, and that this word must have been adopted by the Respondent with knowledge of the Complainant’s goods and trademarks.

Furthermore, the Complainant affirms that the fact that the Respondent has chosen to hide his or her true identity through the privacy service offered by DomainsByProxy.com, suggests that the Respondent is seeking to evade enforcement of the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

For the Complainant to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for FLUTIFORM, as noted under Section 4, “Factual Background” above.

The disputed domain names <flutiform.org> and <flutiform.biz> incorporate the trademark FLUTIFORM in its entirety. The mere addition to the disputed domain names of the gTLDs “.org” and “.biz” is not sufficient to avoid the confusing similarity.

In view of the foregoing, the Panel finds that the disputed domain names <flutiform.org> and <flutiform.biz> are confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.

In that connection, there is no evidence that the Respondent is commonly known as or identified by “flutiform”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain names.

For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant has identified itself as one of a number of privately held independent associated companies called Mundipharma Independent Associated Companies, which are committed to improving the health and quality of life of people.

The Complainant has proved to the Panel’s satisfaction that it provides services to Mundipharma Laboratories GmbH regarding the registration and holding of trademarks and domain names.

In that sense, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns and/ or has rights in trademark registrations for FLUTIFORM as well as various domain names containing “flutiform”. The relevant evidence includes European Community registration for FLUTIFORM, Reg. No. 4834479, in classes, 5, 10 and 42, filed on January 13, 2006. Accordingly, the Panel finds unregistered trademark rights in FLUTIFORM at the time the disputed domain names were registered for the purpose of these proceedings.

Moreover, the Complainant has proved to the Panel’s satisfaction that the trademark FLUTIFORM has been used in connection with a metered-dose aerosol inhaler since 2004. The relevant evidence includes press releases dated April 22, 2004, July 18, 2005, September 2, 2005, September 28, 2005, February 6, 2006, February 13, 2006 and May 8, 2006.

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark FLUTIFORM before registering the disputed domain names, which evidences bad faith registration.

In the light of the foregoing, particularly the undisputed and evidenced extensive use of the trademark FLUTIFORM by the Complainant since at least early 2004, the registrant's concealment of its identity and the undisputed use of the disputed domain names as parking pages which presumably redirected users to other websites of a commercial nature, the Panel finds that the Respondent is using the disputed domain names in bad faith.

On the other hand, and as remarked by the Complainant, the disputed domain names <flutiform.org> and <flutiform.biz> currently resolve to an inactive website. This fact does not change the Panel’s findings.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain names in bad faith and that the Complainant has therefore made out the third element of its case.

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 names <flutiform.org> and <flutiform.biz> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Dated: August 31, 2012

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