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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mediq N.V. v. Liu Yifei, Yan Song, Kevin Sun

Case No. D2012-2418

1. The Parties

The Complainant is Mediq N.V. of Utrecht, Netherlands, represented by Novagraaf Nederland B.V., Netherlands.

The Respondents are Liu Yifei of Beijing, China, Yan Song of Beijing, China and Kevin Sun of Washington, United States of America.

2. The Domain Names and Registrars

The disputed domain names <mediqdirectdiabetes.com> (the “First Domain Name”) and <mediq.name> (the “Second Domain Name”) are registered with Dynadot, LLC (the “First Registrar”). The disputed domain names <mediqgroothandel.com> (the “Third Domain Name”) and <mediqtefa.com> (the “Fourth Domain Name”) are registered with 1API GmbH (the “Second Registrar”). Together the First, Second, Third and Fourth Domain Names are referred to as the “Domain Names”. Together the First and Second Registrars are referred to as the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2012. On December 11, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On December 12, 2012, the First Registrar transmitted by email to the Center its verification response confirming that the Respondent Kevin Sun is listed as the registrant for the First and Second Domain Names and providing the contact details. On the same day, the Second Registrar transmitted by email to the Center its verification response confirming that the Respondents, Liu Yifei and Yan Song, are listed as the registrants for the Third and Fourth Domain Names respectively 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(a) and 4(a), the Center formally notified the named Respondents of the Complaint, and the proceedings commenced on December 17, 2012. In the email of Notification of Complaint, the Center noted that the Complainant had argued all Domain Names are in fact controlled by one entity in the Complaint. In light of this, the Center found there was at least a prima facie case for consolidation warranting consideration by a Panel in this case. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2013. None of the named Respondents submitted any Response. Accordingly, the Center notified the Respondents’ default on January 7, 2013.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 14, 2013. 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.

Hereafter, for the reasons set out in section 6.A. below, all references to “the Respondent” are to the named Respondents and the individual (or other entity) exercising control over the Domain Names, whether it be Mr. Duan or someone else whom he represents.

4. Factual Background

The Complainant is a Dutch company engaged in the distribution of pharmaceutical and medical supplies. It is one of the largest pharmacy chains in the Netherlands. It is the proprietor of several trade mark registrations for its MEDIQ mark, one of which is Benelux word mark registration no. 0789918 dated November 17, 2005 for various goods and services in classes 5, 10, 36 and 41.

The Complainant operates online through a website connected to its principal domain name, <mediq.com>, which it registered on January 26, 2003.

The First Domain Name was registered on April 28, 2012 and the Second Domain Name was registered on April 27, 2012. The Third and Fourth Domain Names were registered on April 4, 2012.

At the time of the Complaint they were each connected to what appear to be pay-per-click parking pages of one kind or another. Currently, they are all connected to Sedo parking pages of very similar appearance featuring sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s MEDIQ registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant contends that the use that the Respondent is making of the Domain Names is bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy, but that the Respondent’s primary objective in registering the Domain Names was to induce the Complainant to purchase them at a profit (paragraph 4(b)(i) of the Policy).

B. Respondent

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

6. Discussion and Findings

A. Preliminary Issues: Consolidation

The Complaint names three different persons as respondents, each identified as the registrant of one or more of the Domain Names; yet paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” The Complainant seeks to overcome this apparent obstacle on the basis that they and/or the websites to which the Domain Names resolve are under the common control of a single entity. In relation to this latter point the Complainant refers to paragraph 10(e) of the Rules (“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules”). Here, paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) is of help. Generally, the approach of UDRP panels has been to permit consolidation of such disputes where “the domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties”.

The Panel has visited the websites to which the Domain Names have resolved. In both form and content they are very similar, being Sedo parking pages featuring sponsored links. The Domain Names were all registered during April 2012 and there is some overlap in the contact details. Additionally, this was all taking place at a time when the Complainant was in correspondence with a Mr. Duan over another domain name, <mediq.biz>, which the Complainant subsequently acquired for an agreed sum. On August 7, 2012 Mr. Duan offered for sale at the “right price” six further “mediq” domain names, four of which were the Domain Names. The named respondents have not challenged the Complainant’s contentions in this regard and the Panel finds on the preponderance of the evidence before him that the Domain Names and the websites to which they resolve are under common control. The Panel finds that the Complaint is appropriately formulated and will proceed to a decision in respect of all the Domain Names. The Panel finds the consolidation to be fair and equitable to all parties.

B. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names were registered and are being used in bad faith.

C. Identical or Confusingly Similar

The Domain Names each comprise the Complainant’s distinctive MEDIQ trade mark and a generic top level domain identifier. Three of them (all apart from the Second Domain Name) contain additional matter, namely “directdiabetes”, “groothandel” (meaning “wholesale” in Dutch) and “tefa”, none of which, in the view of the Panel, suffices to dilute the distinctiveness of the MEDIQ trade mark.

Given that it is permissible for the Panel to ignore the top level domain identifier when assessing identity and confusing similarity for the purpose of paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Names are all identical or confusingly similar to a trade mark in which the Complainant has rights.

D. Rights or Legitimate Interests

While it is for the Complainant to prove each element of paragraph 4(a) of the Policy, paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative in respect of matters, which will often only be known to the respondent. In recognition of this difficulty, UDRP panels will be satisfied if a complainant comes forward with a prima facie case. It is then incumbent upon the respondent to answer that case.

The unchallenged contention of the Complainant is that the Respondent’s purpose in registering the Domain Names was to extract money from the Complainant in return for their transfer. As indicated in section 3 above the Complainant asserts and has produced evidence to demonstrate that the Domain Names were registered in April, 2012 when the Complainant was in correspondence with Mr. Duan (the individual claiming to be able to transfer all the Domain Names) over another domain name in his hands, <mediq.biz>, which the Complainant subsequently acquired by way of a settlement agreement following the filing of a Complaint under the Policy.

In the view of this Panel, the Complainant has come forward with a prima facie case, which calls for an answer. What possible justification can the Respondent have had for adopting a series of domain names featuring prominent use of the Complainant’s trade mark, with which the Respondent has no known connection? In this Panel’s view, there is no answer to the question. The Respondent has not seen fit to come forward with any explanation to justify its selection of the Domain Names and the circumstances surrounding Mr. Duan’s communications with the Complainant make it transparently clear to this Panel that the Respondent’s sole purpose was to sell them to the Complainant at a profit.

In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

E. Registered and Used in Bad Faith

By the same reasoning, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(i) 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 Domain Names, <mediqdirectdiabetes.com>, <mediqgroothandel.com>, <mediq.name> and <mediqtefa.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: January 16, 2013

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