WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratorios del Dr. Esteve, S.A. v. Grazyna Czarnecka
Case No. D2017-2314
1. The Parties
The Complainant is Laboratorios del Dr. Esteve, S.A., Barcelona, Spain, represented by Oficina Ponti, Spain.
The Respondent is Grazyna Czarnecka of Mittweida, Germany, self-represented.
2. The Domain Name and Registrar
The disputed domain name <adsalutem.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2017. The Response was filed with the Center on December 7, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on December 14, 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 pharmaceutical company located in Barcelona, Spain.
The Complainant is the owner of the following trademark registrations:
- Spanish trademark number M150388 for a combined device and word mark including a logo and the text AD SALUTEM, LABORATORIOS DEL DR. ESTEVE, S.A., registered on February 7, 1946, for goods and services including pharmaceutical and medical preparations in Class 5.
- Spanish trademark number M1094285 for a word mark ESTEVE, AD SALUTEM, registered on September 17, 1985, in Class 35 as an advertising slogan in connection with goods protected by other identified trademarks.
The disputed domain name was registered on August 25, 2014.
According to a printout exhibited by the Complainant, on November 20, 2017, the disputed domain name resolved to a website at "www.adsalutem.com" which was headed "Ad Salutem" and promoted "an individualized set of diets, called the AdSalutem Diets" directed to gout pain relief and to be administered during a three week stay at a location in Wolfsbrunn, Germany.
5. Parties' Contentions
The Complainant submits that it is a leading, research-centered group with an international approach. It states that it employs over 2,400 individuals and has annual net sales in excess of EUR 800 million. The Complainant exhibits pages from its website at "www.esteves.es" which provides details of its history, mission and values.
The Complainant submits that the disputed domain name is identical or confusingly similar to its trademarks referred to above. It states that the disputed domain name wholly incorporates the term "ad salutem" which forms part of each of its trademarks, and that the fact that those trademarks include additional elements does not eliminate the likelihood of confusion. The Complainant also points to the Respondent's website referred to above and submits that its offering of a treatment for gout increases the likelihood of confusion given the goods and services for which the Complainant's trademarks are registered.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no connection with the Respondent and has never authorized the Respondent to use the term "ad salutem". It argues that the Respondent has not commonly been known by the disputed domain name and that it has no trademark rights in connection with it. The Complainant also alleges (inconsistently with its submission referred to above) that the disputed domain name has not been used since 2015. The Complainant submits that it has in the circumstances established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant states that both its trademarks are "ancient" and have been used as advertising slogans (although it provides no evidence of this) and states that it is hard to believe that the Respondent was unaware of its trademarks. The Complainant argues that the size and importance of the Complainant in the field of pharmaceuticals must also be taken into account.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant's trademarks. It submits that the term "ad salutem" is a form of Latin greeting which means "good health to all" and that the term is in common usage. It refers to an encyclical letter by the name "Ad Salutem" sent by Pope Pius XI in 1930 and also points, for example, to a third-party website at "www.ad−salutem.at" which relates to physical and mental wellbeing. The Respondent also denies that its diet services are potentially confusing with the Complainant's business, because diets in Germany are non−medical by law.
The Respondent asserts that it has rights and legitimate interests in the disputed domain name by virtue of owning it. It contends that the disputed domain name was legally and rightfully registered and is being used in good faith, and that its website describes the way in which the Respondent's diet operates on the body. The Respondent states that the Complainant's Spanish trademark rights are ineffective in Germany and that the Complainant has failed to establish that the Respondent has acted in any way improperly.
The Respondent denies having registered and used the disputed domain name in bad faith. It argues on the contrary that the Complainant is acting in bad faith. The Respondent produces emails dated May 26 and June 21, 2017, from a Mr. Jaume Loyola, Advocat, offering to purchase the disputed domain name for EUR 400, and states that Mr. Loyola only later identified himself as the lawyer for the Complainant, in November 2017, in connection with the present Complaint. The Respondent submits that an individual on behalf of the Complainant applied for a United States of America trademark for AD SALUTEM on March 18, 2016, and purchased the domain names <adsalutem.health> and <adsalutem.healthcare> in 2017 (the Panel comments that the first of these domain names does not appear to be registered). It also submits evidence that on September 9, 2016, the Complainant registered a new business, the "Ad Salutem Institute for Healthy Sleep SA" and alleges that the Complainant is seeking the acquire the disputed domain name in connection with that business.
The Respondent contends in the circumstances that the Complaint should be dismissed and that a finding of "reverse domain name hijacking" should be made against the Complainant.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(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 proprietor of two Spanish trademarks which include the term "ad salutem", albeit in conjunction with a logo in one case and additional wording in both cases. The test under paragraph 4(a)(i) of the Policy is a threshold test which is designed principally to validate the standing of the Complainant to bring the claim, and which does not involve a qualitative assessment of the strength of the Complainant's trademark (although this may be relevant to other considerations under the Policy). With this in mind, the Panel finds that the disputed domain name, <adsalutem.com>, is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that the term "ad salutem" is a Latin term meaning "to health", that it is not an invented term coined by the Complainant and that it has been used in commerce otherwise than by the parties to this proceeding in connection with health and wellbeing services.
While the Respondent has provided virtually no evidence of its business activities under the name "Ad Salutem", it appears from the material available to the Panel that it operates a website promoting dieting services in Germany under that name. While the Complainant argues that these activities add to the likelihood of confusion between the disputed domain name and the Complainant's trademarks, it does not contend that the Respondent's business is merely a sham, nor does the Panel have evidence upon which to conclude that the business does not constitute a genuine offering of goods or services.
In these circumstances, in order to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Complainant must, in the view of the Panel, establish that the Respondent in fact registered the disputed domain name with the Complainant's trademark in mind and with the intention of taking unfair advantage of the goodwill that attaches to that trademark. In that regard, the Complainant, while providing evidence of its registered trademarks, has provided no evidence whatsoever of its use of the term "ad salutem" in business, including any such use of either of the trademarks in question. Indeed, even the pages which the Complainant produces from its own website at "www.esteves.es" include no reference whatsoever to the term "ad salutem". The Panel therefore finds no grounds on the evidence before it to conclude that the Respondent registered the disputed domain name with knowledge of the Complainant's trademarks or with any intention of taking unfair advantage of those trademarks.
In the circumstances, the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Complainant must therefore fail.
C. Registered and Used in Bad Faith
While it is unnecessary for the Panel to consider the element of bad faith in view of its finding under paragraph B above, the Panel comments that, for similar reasons to those set out in that paragraph, the Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith.
7. Reverse Domain Name Hijacking
Under paragraph 15(e) of the Rules:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above, including in particular the absence of any evidence of its own use of the term "ad salutem" in commerce. Further, the Panel notes the Complainant's prior attempt to purchase the disputed domain name from the Respondent, at which time no suggestion of any impropriety on the part of the Respondent was made. The Respondent has also adduced sufficient evidence for the Panel to conclude on balance that the Complainant's primary motivation in bringing this proceeding was to obtain the disputed domain name for commercial reasons of its own. The Panel finds in all the circumstances that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Steven A. Maier
Date: December 18, 2017