WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Abbott Diabetes Care Inc. v. 1&1 Internet Limited / Mehmet Turgay

Case No. D2017-1560

1. The Parties

The Complainant is Abbott Diabetes Care Inc. of Alameda, California, United States of America (“United States”), represented by Steven M. Levy, United States.

The Respondent is 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland / Mehmet Turgay of Gundelfingen an der Donau, Germany, self-represented.

2. The Domain Name and Registrar

The disputed domain names <freestylelibretr.com> and <freestylelibre.asia> are registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2017 in connection with the disputed domain name <freestylelibretr.com>. On August 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the Registration Agreement is German and disclosing registrant and contact information for the disputed domain name <freestylelibretr.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2017, 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 August 21, 2017, in which the disputed domain name <freestylelibre.asia> was added. On August 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <freestylelibre.asia>. On August 23, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the Registration Agreement is German, confirming that the Respondent is listed as the registrant, and providing the Respondent’s contact details.

The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain names is German. On August 18, 2017, the Center sent a language of proceeding communication in both German and English to the Parties. On August 21, 2017, the Complainant submitted a request for English to be the language of proceeding. On August 25, 2017, the Respondent submitted a request for German to be the language of proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint in English and German, and the proceedings commenced on September 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2017. At the Respondent’s request, the due date for Response was extended to September 28, 2017.

The Respondent sent email communications to the Center on August 25, 2017, as well as on September 1 and 20, 2017. The Respondent did not submit any formal response. On September 20, 2017, the Complainant submitted a Supplemental Filing. The Center notified the Parties of the commencement of the Panel appointment process on September 29, 2017.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 3, 2017. 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 a healthcare company based in California, United States, which develops, manufactures and markets glucose monitoring systems and related software to help patients manage their diabetes. Its products are marketed worldwide and have been featured in several international medical and business investment publications.

The Complainant is the registered proprietor of a number of trademark registrations in respect of the word mark FREESTYLE LIBRE, including Turkey trademark number 201369897, registered on August 11, 2014, European Union trademark number 012071833, registered on January 8, 2014, and Russian Federation trademark number 526789, registered on November 14, 2014.

The first disputed domain name, <freestylelibretr.com>, was registered on April 24, 2017. It resolves to a website from which the Respondent is offering for sale and selling what appear to be the Complainant’s products. However, since these products are sold by the Respondent outside of the Complainant’s authorized distribution channels, the Complainant contends that they are either counterfeit or at least “grey market”/“parallel import” goods.

The second disputed domain name, <freestylelibre.asia>, was registered on May 2, 2017. Printouts furnished with the Complaint show that this disputed domain name led to a directory website with links to third-party vendors, including competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends the following:

The disputed domain names are confusingly similar to the Complainant’s registered FREESTYLE LIBRE trademark, because they use an identical copy of the Complainant’s trademark, merely adding either the geographic indicator “tr” (Turkey) or the “.asia” generic Top-Level Domain (“gTLD”). Visitors of the respective websites might thereby be led to believe that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant and the goods and services offered by the Respondent. With respect to the disputed domain name <freestylelibretr.com>, the confusion is further increased by the fact that the FREESTYLE LIBRE trademark is extensively used in the title and body of the website and the website also displays graphics of the Complainant’s products. Furthermore, the addition of the “.com” and “.asia” gTLDs does nothing to avoid the confusing similarity between the disputed domain names and the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorized by the Complainant to use the disputed domain names. Neither is the Respondent commonly known by either of the disputed domain names or by the name “freestyle libre”.

The Complainant extensively argues that the Respondent’s use of the disputed domain name <freestylelibretr.com> does not constitute a bona fide offering of goods or services. In particular, the Respondent cannot avail itself of the defense that it is merely a legitimate reseller of the Complainant’s products and thus making a nominative fair use of the FREESTYLE LIBRE trademark. Not only is the Respondent selling counterfeit or “grey market” products through an unauthorized channel, but it is also seeking to impersonate the Complainant and its legitimate distributor, first, by using the Complainant’s trademark in the disputed domain name and second, by copying certain of the Complainant’s copyrighted graphics. Moreover, the Respondent’s website does not disclose that the Respondent has no relationship with the Complainant. In this context, the Complainant refers to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and the so-called “Oki Data test” developed in this decision.

The second disputed domain name, <freestylelibre.asia>, is a classic pay-per-click page, which diverts users, potential customers of the Complainant, to other websites, owned in part by its competitors in the glucose monitoring systems industry. The Complainant concludes that this is not a fair commercial use of the disputed domain name.

The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain names, such as comment, criticism, news reporting, education, etc.

By using the FREESTYLE LIBRE trademark in association with the sale of counterfeit or “grey market” products, the Respondent has tarnished the Complainant’s brand and diminished consumers’ capacity to associate the trademark with the quality products offered by the Complainant.

Lastly, the disputed domain names were both registered and used in bad faith by the Respondent to either offer “grey market” or counterfeit goods which were never intended for the Turkish market (<freestylelibretr.com>) or to gain click-through revenue (<freestylelibre.asia>). The Complainant argues that the Respondent had knowledge of the Complainant’s registered trademark and that it intentionally sought to enrich itself at its expense.

B. Respondent

The Respondent did not file a formal response to the Complaint, instead limiting its answer to short emails sent to the Center. The Respondent did not reply to the Complainant’s contentions on the merits.

6. Discussion and Findings

6.1. Procedural Issues

A. The Complainant’s Supplemental Filing

Before reaching the merits, the Panel must decide whether to consider the Complainant’s September 20, 2017 Supplemental Filing, and what weight to accord to it.

In essence, paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings by the parties. For reasons of procedural efficiency, UDRP panels are usually reluctant to accept unsolicited filings. Whether such submissions should be permitted will generally depend on their relevance to the case, whether the Panel considers their content essential to reaching a fair decision on the merits, and whether they present new facts or arguments not reasonably available at the time of the party’s first submission. See, inter alia, NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984.

Here, the Complainant has submitted its email correspondence with the Respondent that occurred after the commencement of this proceeding, whereby the Respondent has offered to sell the disputed domain names to the Complainant for “100 K” (which the Complainant understands to mean USD 100,000). The Complainant argues that the Respondent’s offer to sell the disputed domain names for a price far exceeding the registration cost indicates the Respondent’s bad faith. In reply, the Respondent sent two emails to the Complainant (copied to the Center) and to the Center. Therein, it stated that the requested price had been in Turkish liras and that the amount was actually TRY 100 for both disputed domain names, but that it was withdrawing its offer.

The Panel finds that this is an appropriate case in which to consider the Supplemental Filing, as it addresses new facts which arose after submission of the Complaint. Furthermore, the Panel considers the discussions between the Parties regarding the sale of the disputed domain names as relevant to assessing their respective motivations. See, in this context, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.10, and cases cited therein.

Therefore, the Panel admits the Complainant’s Supplemental Filing.

B. Language of the Proceeding

The Registration Agreement for the disputed domain names is in German, but the Complainant filed its Complaint in English and requested that English be the language of the proceeding for the reason that the Respondent can be presumed to have knowledge of the English language (the word “freestyle” in the composition of the disputed domain names is an English word and the Respondent’s website contains links to websites and apps in the English language). The Complainant, which is headquartered in the United States and operates its international business in English, further argues that it would neither be necessary nor fair or equitable to require the Complainant to translate its pleadings into another language.

In its second email communication of August 25, 2017, the Respondent stated that it wished for the proceeding to be administered in German.

Paragraph 11(a) of the Rules stipulates that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

Paragraph 10(c) of the Rules provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”.

Taking into account the circumstances of this case, the Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding. The composition of the disputed domain names as well as the Parties’ email correspondence (submitted by the Complainant with its Supplemental Filing) show that the Respondent is able to understand and communicate in English. Furthermore, the Panel finds that substantial additional expense and delay would likely be incurred if the Complaint and annexes thereto had to be translated into German. In view of the Policy aim of facilitating a time and cost-efficient procedure for the resolution of domain name disputes, the Panel finds it appropriate to exercise its discretion according to paragraph 11(a) of the Rules and allow the proceeding to be conducted in English. The Panel accepts the Complaint as filed in English and the Respondent’s email communications as submitted in German, and will proceed in its discretion to render its decision in English.

6.2. Analysis of the Complaint

A. Identical or Confusingly Similar

The Complainant has uncontested rights in its FREESTYLE LIBRE trademark by virtue of its trademark registrations and as a result of the reputation acquired through its use of the mark. Ignoring the gTLDs “.com” and “.asia”, the disputed domain name <freestylelibretr.com> differs from the trademark only by the addition of the geographical term “tr” (Turkey), whereas the disputed domain name <freestylelibre.asia> is identical with the trademark. It is the view of UDRP panels that the addition of a geographical term to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the Policy, where the relevant trademark is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.8. Such is the case here. Accordingly, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

Thus, the Complainant has fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has chosen not to respond to the merits of the Complaint or to take any steps to rebut the Complainant’s contentions.

The Respondent has used the first disputed domain name, <freestylelibretr.com>, to sell goods which appear to be counterfeit or “grey market” products of the Complainant without the Complainant’s authorization.

The Panel notes that, in certain cases, a reseller may legitimately register and use a manufacturer’s trademark in its domain name. See, in this context, WIPO Overview 3.0, section 2.8. It is the view among UDRP panels, derived from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, that such conduct is permissible only if the following criteria are fulfilled: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent’s relationship with the trademark owner; and (4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. However, as the Complainant rightly argues, the Respondent does not satisfy the criteria of the Oki Data test, especially since the Respondent’s website does not make clear that it has no relationship to the trademark owner. Therefore, the Panel holds that the Respondent is not using the first disputed domain name in relation with a bona fide offering of goods and services.

The same is true for the second disputed domain name, <freestylelibre.asia>, which is used by the Respondent to direct Internet traffic to other websites, some belonging to the Complainant’s competitors.

Under these circumstances, the Panel is satisfied that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given that the Complainant’s trademark registrations predate the registration of the disputed domain names and that the Respondent appears to be selling the Complainant’s products or counterfeit versions thereof, it is evident that the Respondent had knowledge of the Complainant’s trademark when registering the disputed domain names. The Panel considers that the registration and use of the disputed domain names to sell goods or to redirect Internet users to competing third party websites with a view to commercial gain constitutes bad faith registration and use in the sense of paragraph 4(b)(iv) of the Policy.

Furthermore, the Respondent’s attempt to sell the disputed domain names to the Complainant for an excessive price is another indication of its bad faith. This is the case regardless of whether the Respondent’s initial offer of “100 K” is construed to mean USD 100,000 or TRY 100,000 (i.e., approximately USD 28,000).

The Panel thus finds that the requirement of bad faith use and registration under paragraph 4(a)(iii) of the Policy is fulfilled.

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 <freestylelibretr.com> and <freestylelibre.asia> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: October 17, 2017