WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merz Pharma GmbH & Co. KGaA v. Douglas Archanjo Sobrinho
Case No. D2018-1163
1. The Parties
The Complainant is Merz Pharma GmbH & Co. KGaA of Frankfurt, Germany, represented by Balder IP Law, S.L., Spain.
The Respondent is Douglas Archanjo Sobrinho of Rio de Janeiro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <pantogarbrasil.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 May 24, 2018. On May 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2018, 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 May 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2018.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 21, 2018. 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 facts relevant to the decision in this case are that:
(1) the Complainant manufactures and distributes medicinal creams and ointments and uses the trade mark PANTOGAR (the “Trade Mark”) in connection with a product for the treatment of diffuse hair loss (the “Goods”);
(2) the Trade Mark is the subject, inter alia, of International1 Reg. No. 347,741 registered on August 14, 1968;
(3) the disputed domain name was created on March 5, 2015 and resolves to a website showing the Trade Mark which promotes the Goods;
(4) the Respondent did not reply to pre-Complaint letters of demand; and
(5) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in PANTOGAR and submits that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name.
The Respondent did not submit a response.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.2 The Complainant provides evidence of its International registration of the Trade Mark and so the Panel finds that the Complainant has trade mark rights.
The disputed domain name takes the Trade Mark to which it adds the country name “Brasil” which is non-distinctive, plus the general Top-Level Domain (“gTLD”) “.com” which can be disregarded for the purposes of comparison.3 The Panel finds that the disputed domain name is confusingly similar to the Trade Mark and so finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.4
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs data for the disputed domain name registrant does not support any finding by the Panel that the Respondent might be commonly known by the disputed domain name.
There is no evidence that the Respondent has trade mark rights in the disputed domain name. There is no relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark. The Complainant states that its authorized distributor in Brazil is Biolab Sanus Farmacêutica Ltda.
The evidence accompanying the Complaint is that the disputed domain name resolves to a website promoting the Goods by reference to the Trade Mark. That website includes the misleading copyright notice, “Pantogar Brasil Copyright 2018”. Since there is no relationship between the parties there is no bona fide offering of goods or services by reference to the disputed domain name, nor is there a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the Respondent’s conduct falls squarely within paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to the Trade Mark which is a distinctive, invented word. The likelihood of confusion is compounded by the addition of a country name to the Trade Mark. The resolving website exists for commercial gain. In terms of the Policy the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of that website.
Accordingly, the Complainant has satisfied the third and final limb 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 <pantogarbrasil.com> be transferred to the Complainant.
Debrett G. Lyons
Date: June 30, 2018
1 Under the Madrid Agreement.
2 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).