WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DexCom Inc. v. Privacy protection service - whoisproxy.ru / Aleksey A Bogachev
Case No. D2017-1664
1. The Parties
The Complainant is DexCom Inc. of San Diego, California, United States of America, represented by Bird & Bird LLP, Germany.
The Respondent is Privacy protection service - whoisproxy.ru of Moscow, Russian Federation, Aleksey A Bogachev of Permskiy Kray, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <dexcom.pro> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 28, 2017. On August 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 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 amendment to the Complaint on September 7, 2017.
The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On September 6, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant confirmed its requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center's communication regarding the language of the proceeding or the Complainant's submission.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 19, 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 an American company which develops, manufactures and distributes medical devices, in particular continuous glucose monitoring (CGM) systems for diabetes management. The Complainant provides its products in over 40 countries worldwide.
The Complainant has registered a number of national, international and European Union trademarks for the term "dexcom" which include:
US word mark registration no. 3895549 registered on December, 2010 with priority of February 3, 2004 for "Medical devices, namely, medical sensors that are implanted or inserted into the human body used to continuously monitor the concentration of glucose in the human body and accessories therefor, namely, receivers, sensor housings and sensor insertion devices."
-European word mark no. 3955531 registered on September 30, 2005 with priority of July 28, 2005, for "Medical devices, including sensors for monitoring glucose levels."
International word mark no. IR 1186618 registered on November 4, 2013, and enjoying protection in particular for the Russian Federation for "Medical devices, namely, medical sensors that are implanted or inserted into the human body used to continuously monitor the concentration of glucose in the human body and accessories therefor, namely, receivers, sensor housings and sensor insertion devices."
Furthermore, the Complainant and its subsidiaries have registered and are using multiple domain names such as: <dexcom.ch>, <dexcom.com> and <dexcom.org>.
The disputed domain name was first registered on April 8, 2015 by the Respondent. The website that the disputed domain name resolves to is in English and offers medical devices produced by the Complainant's competitors as well as accessories to the Complainant's products.
5. Parties' Contentions
Firstly, the Complainant asserts that the disputed domain name is identical to the DEXCOM mark and trade name. According to the Complainant, the fact that the DEXCOM mark is written in capital letters, whereas in the disputed domain name the word "dexcom" is written without capital initials and carries the Top-Level-Domain ("TLD") ".pro" does not undermine this finding.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant claims that it has not agreed to the Respondent's registration of the disputed domain name and has not given the Respondent any respective license or any other right to use or register DEXCOM as a domain name. The Complainant also emphasizes that there are no economical connections between the Parties that might authorize the Respondent to register the disputed domain name.
The Complainant asserts that the Respondent makes no use of the disputed domain name "in connection with a bona fide offering of goods or services" it is currently linked to a website offering various products including "stickers" for the Complainant's products as well as products of the Complainant's competitors. Moreover, according to the Complainant, the website copies various elements from the Complainant's own website including the Complainant's figurative trademark and the slogan from the Complainant's foundation that was established by the client to improve the lives of people with diabetes and grants awards to various organizations dedicated to the same goal. The Complainant points the Panel's attention to the fact that the website does not contain information on who is operating it. The Complainant believes that this gives the impression that the website serves fraudulent purposes as the offered products that are taken, inter alia from the Complainant's shops will most likely not be provided to their buyers. Furthermore, the Complainant notes that the website accepts credit cards only which – in the Complainant's opinion indicates that its further purpose is phishing for credit card data.
Thirdly, the Complainant states that the disputed domain name was registered and is being used in bad faith. The Complainant emphasizes that the Respondent was well aware of the popularity of the DEXCOM mark which was already well-known for medical devices for quite a while in 2015. Furthermore, according to the Complainant, the disputed domain name was linked to a website identical to the current website immediately after it was registered.
The Complainant asserts that bad faith registration and use is presumed by the fact of the identity of the disputed domain name to the DEXCOM mark. Moreover, the Complainant submits that the Respondent tries to impersonate the Complainant by not providing any contact information on the website under the disputed domain name or in the domain registration itself and even uses a privacy shield for the registration. According to the Complainant, the design of the website under the disputed domain name leads to the assumption that it is used for fraudulent or phishing purposes. In any event, the Complainant contends that the Respondent chose the domain to use it in the way of typosquatting to divert Internet traffic from the Complainant's websites to its own website and to sell products identical to those for which the DEXCOM mark is registered.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that "[u]nless 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."
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that "to the best of its knowledge" English is a language of the registration agreement. The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant's language request. Notification of the Complaint was also sent to the Respondent in English and in Russian, however, the Respondent has not participated in these proceedings in any way.
Taking into account the fact the content of the website linked to the disputed domain name is in English as well as the Respondent's failure to comment on the language of the administrative proceedings, the Panel finds that the Respondent is most likely familiar with English and that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
B. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's DEXCOM mark and is identical with it. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic TLD suffix ".pro" may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain name is identical the DEXCOM mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the DEXCOM mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain name to create a website mirroring the Complainant's mark and its own website as well as offering goods produced its competitors cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the disputed domain name was registered when the Complainant has already held trademark registrations for DEXCOM. In the Panel's opinion, the notoriety of use of the DEXCOM mark and "Dexcom" trade name in the medical devices industry and the similarity of the disputed domain name with the mark itself indicates that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Secondly, by mirroring the Complainant's mark and its own website, the website under the disputed domain creates the impression that it belongs to the Complainant. Creating such a website by the Respondent involves registration and use in bad faith (see The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388). Moreover, the Respondent offers under the disputed domain name accessories to the Complainant's products as well as medical devices produced by the Complainant's competitors which is another indicator of bad faith use of the disputed domain name.
In addition, the Respondent used a privacy shield for the registration of the disputed domain name. While the use of a privacy shield cannot be considered in itself as use of bad faith, once connected with additional elements, it clearly points towards a registration and use in bad faith (Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).
The Panel finds that the conditions of paragraph 4(b)(iv) of the Policy are present in this case.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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, <dexcom.pro> be transferred to the Complainant.
Date: November 2, 2017