WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GmbH & Co. KG v. Andreou Panayiotis
Case No. D2013-0458
1. The Parties
The Complainant is Boehringer Ingelheim Pharma of Ingelheim am Rhein, Germany, represented by Schiedermair Rechtsanwälte, Germany.
The Respondent is Andreou Panayiotis of Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <atrovent.net> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2013, the Registrar 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” 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 March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. On March 12, 2013, the Center received an informal communication from an individual named Panayiotis Andreou. No further communications were filed with the Center. On April 2, 2013, pursuant to Paragraph 6 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center informed the parties that it will proceed to appoint the panel.
The Center appointed Anders Janson as the sole panelist in this matter on April 18, 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.
4. Factual Background
The Complainant runs a global pharmaceutical business. One of the products offered by the Complainant is a bronchodilator designed for treatment of asthma and other similar diseases, which is marketed under the trade name Atrovent.
The Complainant is the owner of several trademark registrations containing the trademark ATROVENT. Notably ATROVENT was on November 15, 1972 registered as a word mark, and on February 20, 1991 as a word/design mark in the International Trademark System upheld by WIPO. Further registrations of ATROVENT as a word mark include the United States Patent and Trademarks Office on December 2, 1975 and January 27, 1998 and on November 29, 2001 the official European trademark register upheld by the Office for Harmonization in the Internal Market (“OHIM”).
The disputed domain name <atrovent.net> was created on February 9, 2007.
The Respondent Mr. Andreou has in his informal communication to the Center submitted that he has not been involved in any transaction, related to the disputed domain name, including the registration thereof. The Panel has further reviewed a statement from Mr. Andreou’s former employer, where it is concluded that Mr. Andreou’s name must have been illegally used without his consent. Besides from that, the Respondent did not provide any more information, documents or other tangible proof of the alleged identity theft. The Respondent advised in his email to the Center that he “reject all you [SIC] claims and do not expect to receive any communication from you”.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is present in the present case:
1. The disputed domain name is confusingly similar to inter alia the registered trademark ATROVENT in which the Complainant has rights. It is prima facie obvious that the disputed domain name is identical to the Complainant’s trademark ATROVENT. The addition of the generic Top-Level Domain (gTLD) “.net” in the disputed domain name does not diminish this finding of identity.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted the Respondent a license or otherwise permitted him to legally make use of the trademark ATROVENT. There is no business relationship between the parties. Oppositely, the disputed domain name has been used by the Respondent to redirect Internet users towards a website containing offers of generic pharmaceutical products – i.e. not produced by the Complainant – thus in direct competition with the Complainant’s products. This cannot be regarded as a bona fide use of the disputed domain name. The Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of it.
3. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with the intent to create confusion with the Complainant’s trademark ATROVENT for commercial gain. Before its disputed domain name was “freezed” by the Registrar, the website “www.atrovent.net” contained texts about the Complainant’s medicine products, a picture of the official ATROVENT bronchodilator and a hyperlink leading to another website where generic pharmaceutical products were offered for purchase. The disputed domain name was being used commercially by exploiting the Complainant’s trademark ATROVENT.
The Respondent has not actually filed any formal Response to the Complainant’s contentions in these proceedings. The Respondent’s only submission was in the form of emails which mentioned that he had nothing to do with the registration of the disputed domain name, described more under Section 4. above.
6. Discussion and Findings
Given the case file and the Respondent’s failure to file a formal Response, the Panel, where appropriate, accepts as true the contentions of the Complainant. The Respondent’s default does not however automatically lead to a ruling decision for the Complainant. To the contrary, the Complainant still must establish a showing that under the Policy, it is entitled to a transfer of the disputed domain name.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the 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
The Panel finds that the Complainant does have trademark rights in the mark ATROVENT by virtue of the trademark registrations mentioned under Section 4. above.
The disputed domain name is <atrovent.net>. Thus the disputed domain name contains the Complainant’s registered trademark ATROVENT in its entirety, together with the generic and functional gTLD “.net”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD can typically be disregarded. The Panel finds that the disputed domain name <atrovent.net> is confusingly similar to the Complainant’s registered trademark ATROVENT.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
On the existing record, the Respondent has failed to provide any evidence of a legitimate interest or right in the disputed domain name. The Panel adopts the reasoning in Banco Bradesco S/A v. Martha Dantas, WIPO Case No. D2010-0646:
“[…]In this case, Complainant has offered meaningful explanations and has provided enough evidence of its exclusive rights concerning the mark BRADESCO. Therefore the burden shifts to Respondent to bring forward evidence of its rights or legitimate interests, if such evidence exists.
[…] However, though Respondent has replied to communication from the Center, indicating that she has nothing to do with the registration of the disputed domain name <bradesco-net.org>, and that this event possibly occurred because she once had her personal documents and credit card stolen, Respondent has failed to counter Complainant’s arguments or to provide any evidence of rights or legitimate interests in the disputed domain name.
[…] Such failure by Respondent to file a Response leaves the Panel to decide the case on the basis of the available record and the evidence provided by Complainant, […]”
The same reasoning can be applied in this case. The Respondent replied in an email communication to the Center, indicating that he has nothing to do with the registration of the disputed domain name. However, neither the Respondent, whether or not he is the true registrant of the disputed domain name, nor any other, filed any formal Response countering the Complainant’s arguments and there is no evidence in the record of rights or legitimate interests of someone other than the Complainant in the disputed domain name. Accordingly, upon consideration of the evidence filed in the Complaint, the Panel is satisfied that the Respondent lacks any right or legitimate interest in the disputed domain name.
Therefore, the Panel finds, also in view of the Panel’s further findings below, that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is prepared to find that the Complainant’s trademark ATROVENT is well-known, and further that it is highly unlikely that the Respondent, by utter accident, would have registered the disputed domain name. Accordingly, the Panel finds that the Respondent, as the listed Registrant, must have chosen the disputed domain name <atrovent.net> deliberately to trade on the Complainant’s reputation. Indeed the website “www.atrovent.net” once contained texts about and pictures of the Complainant’s products. The Panel thus finds that the Respondent has intentionally attempted to attract Internet users to his website by using the confusingly similar domain name <atrovent.net>, which the Panel concludes is evidence of bad faith registration and use under the Policy. The fact that at one time the disputed domain name reverted to a website offering competing products also supports the conclusion of bad faith.
Finally, the fact that the disputed domain name has been subsequently deactivated does not preclude the Panel’s finding on the bad faith registration and use by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 <atrovent.net> be transferred to the Complainant.
Date: May 6, 2013