WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Actavis Group ehf (formerly Actavis Group PTC ehf) and Actavis Group PTC ehf, Plc v. Dr koray Gurbuz, Assos Ilac Kimya Gida Urunleri Uretim Tic Ve san Ltd Sti
Case No. D2014-0574
1. The Parties
The Complainant is Actavis Group ehf (formerly Actavis Group PTC ehf) and Actavis Group PTC ehf, Plc of Hafnarfjördur, Iceland, represented by Arnason Faktor, Iceland.
The Respondent is Dr koray Gurbuz, Assos Ilac Kimya Gida Urunleri Uretim Tic Ve san Ltd Sti of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <decubal.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2014, 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 April 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2014.
The Center appointed Petter Rindforth as the sole panelist in this matter on May 9, 2014. 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.
On May 14, 2014, the Respondent submitted an email communication to the Center.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in English, which is the language of the Registration Agreement for the disputed domain name as confirmed by the Registrar.
4. Factual Background
The Complainant is the owner of the trademark DECUBAL, registered in a number of countries around the word, including but not limited to:
Danish national trademark registration No. VR1983 93242 for DECUBAL (word), registered on September 16, 1983;
Hungarian national trademark registration No. 133755 for DECUBAL (word), registered on June 26, 1991;
Swedish national trademark registration No. 156128 for DECUBAL (word), registered on July 16, 1976;
Swedish national trademark registration No. 187120 for DECUBAL (word), registered on June 23, 1983;
Thai national trademark registration No. Kor3359 for DECUBAL (word), registered on April 7, 1983;
Thai national trademark registration No. Kor109333 for DECUBAL (word), registered on January 16, 1980; and
Turkish national trademark registration No. 149831 for DECUBAL (word), registered on May 29, 1992.
The disputed domain name <decubal.com> was registered on December 31, 2004. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant.
5. Parties' Contentions
The Complainant informs that the Complainant is a global, integrated specialty pharmaceutical company focused on developing, manufacturing and distributing generic, brand and bio similar products. The Complainant and its subsidiaries own multiple registrations worldwide for the trademark DECUBAL. The trademark has been registered and used by the Complainant for over 30 years, and is widely known and used both by general consumers and healthcare professionals. The Complainant further owns multiple domain names registered under country code Top-Level Domains ("ccTLD") such as <decubal.is>, <decubal.ee>, <decubal.ge>, <decubal.ro>, <decubal.ua>, <decubal.se>, <decubal.dk>, <decubal.hu>, <decubal.pt>, <decubal.es>, <decubal.fi>, <decubal.it> and <decubal.nl>, and operates those websites.
The Complainant states that the disputed domain name is identical to the Complainant's trademark, and that the Respondent has no rights or legitimate interests in respect of <decubal.com>. There is no evidence that the Respondent has used or has made preparations of use of the disputed domain name for personal use or commercial use in connection with a bona fide offering of goods or services, and the Respondent is not commonly known as "decubal.com". A search of archived web pages does not reveal any evidence of the disputed domain name ever being used for a live website.
Finally, the Complainant states that <decubal.com> was registered and is being used in bad faith. The disputed domain name was registered in 2004, when the Complainant already had filed and obtained multiple trademark registrations for the trademark DECUBAL worldwide including a registration in the Respondent's home country of Turkey. The Respondent must therefore have known or should have known of the Complainant's prior rights at the time of registering the disputed domain name.
The fact that there is no evidence that <decubal.com> has ever been used for a live website and the fact that it has been owned by the Respondent for almost 10 years indicates that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring <decubal.com> to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.
According to the Complainant, the Complainant has on two different occasions approached the Respondent in an attempt to purchase <decubal.com> but the Respondent's charges have been in the opinion of the Complainant excessive and much higher that the Respondent's out-of-pocket costs related to the obtaining and maintaining of the disputed domain name.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant Actavis Group ehf.
The Respondent did not reply to the Complainant's contentions. The Center received an email on May 14, 2014 from the Respondent. Having regard to the late submission of this email, without any explanation or purported justification, the Panel declines to take such email into account. In any event, had the email been admitted, it would not change the substantive outcome of this proceeding.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark DECUBAL.
The relevant part of the disputed domain name is "decubal", as it is a well-established practice that the generic Top-Level Domain ("gTLD") suffix (i.e., ".com") may be disregarded for this purpose. See Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 ("the relevant comparison to be made is with the second-level portion of each of the Domain Names only […], as it is well-established that the top-level domain names […] should be disregarded for this purpose").
The Panel therefore concludes that the disputed domain name <decubal.com> is identical to the Complainant's trademark DECUBAL.
B. Rights or Legitimate Interests
Once the complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
This Panel is satisfied that the Complainant has established a prima facie case. By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the prima facie case that the Complainant has established under this paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant's goods and has no other permission to apply for any domain name incorporating the trademark DECUBAL. See Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 ("There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.")
There is nothing in the Respondent's name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. In fact, <decubal.com> has been registered for almost 10 years, with no evidence of active use at all. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the Respondent was not commonly known by the mark and never applied for a license or permission from the Complainant to use the trademarked name).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As shown by the Complainant, the trademark DECUBAL is registered in a number of countries around the world, including Turkey – the home country of the Respondent. The Panel agrees with the Complainant that the trademark DECUBAL is distinctive, with no obvious second descriptive meaning.
Thus, it is clear to this Panel that the Respondent had the Complainants trademark in mind when the Respondent registered the disputed domain name.
However, in order to fulfill this third requirement, the disputed domain name must both be considered as registered andused in bad faith.
The Complainant claims that the Complainant has approached the Respondent in an attempt to purchase the disputed domain name, but that the Respondents charges have been in the opinion of the Complainant excessive and much higher that the Respondent's out-of-pocket costs. There is however no documents proving the said communication between the parties, and the Panel can therefore not take this statement into consideration.
The question remains: Can passive holding of a disputed domain name be seen as bad faith use?
As shown by prior UDRP panel decisions, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Each panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. See Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 ("There is no active use of the domain names in the sense that they resolve to an active web site. Nevertheless the circumstances of the registration of the domain names and Respondent's US trade mark application are indicative of his intention to hold the trade mark and the domain names for some future active use in a way which would be competitive with or otherwise detrimental to Complainant.") See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, the Panel takes into account the following circumstances:
- The Complainant's trademark DECUBAL is considered by the Panel as highly distinctive;
- The Complainant's trademark was registered in Turkey, the home country of the Respondent, over 22 years before the Respondent registered the disputed domain name;
- The disputed domain name is identical to the Complainant's trademark;
- The Respondent is Dr. koray Gurbuz, which suggests to this Panel that "Dr" means that the Respondent has knowledge of the pharmaceutical industry and their related trademarks, and may even be in the same business as the Complainant;
- Registration of <decubal.com>, using a well-known Top-Level Domain, and then not using the domain name for nearly 10 years further indicates that the Respondent registered the disputed domain name to disturb the online marketing possibilities for the Complainant, forcing the Complainant to offer a high amount of money to have the <decubal.com> domain name transferred to the Complainant from the Respondent.
- The Respondent has not timely responded to the Complaint and has therefore not provided evidence of any actual or contemplated good faith use by it of the disputed domain name.
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 <decubal.com> be transferred to the Complainant Actavis Group ehf.
Date: May 23, 2014