WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Intellectual Property GmbH v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd.
Case No. D2018-2530
1. The Parties
The Complainant is Bayer Intellectual Property GmbH of Monheim am Rhein, Germany, represented by BPM Legal, Germany.
The Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd. of Chitre, Panama.
2. The Domain Name and Registrar
The disputed domain name <xarellto.com> (the “Disputed Domain Name”) 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 5, 2018. On November 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 7, 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 and contact information for the Disputed Domain Name.
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 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 10, 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 Complainant is a German multi-national pharmaceutical and life sciences company that has existed since the early 1800s. With over 300 affiliates and more than 115,000 employees worldwide, the Complainant is one of the largest pharmaceutical companies in the world. The Complainant operates in all five continents, manufacturing and selling numerous products, including human and veterinary pharmaceuticals, consumer healthcare products, and agricultural chemicals. This proceeding involves Xarelto, one of the Complainant’s most well-known pharmaceutical brands. Xarelto is a prescription coagulant, or blood-thinner medication, which had billions of dollars of sales in 2016.
The Complainant is the owner of the trademark XARELTO in numerous countries worldwide, including Latin America, where the Respondent is located (hereinafter referred to as the “XARELTO Mark”).
The Respondent registered the Disputed Domain Name on May 24, 2018. The Disputed Domain Name resolves to a parking page used in connection with third party pay-per-click advertising links.
The Respondent is the owner of numerous other domain names that incorporate registered trademarks of well-known brands.
5. Parties’ Contentions
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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 respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the XARELTO Mark.
First, it is uncontroverted that the Complainant has established rights in the XARELTO Mark based on its longstanding use as well as its numerous trademark registrations for the XARELTO Mark worldwide. The Disputed Domain Name <xarellto.com> consists of a misspelling of the XARELTO Mark followed by the generic Top-Level Domain (“gTLD “) “.com”. The word “xarellto” is a misspelling of “xarelto”, the name of the Complainant’s well-known blood-thinning medication, with two “l”s instead of one in the correctly spelled medication. This is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark. Here, the use of two “l”s does not operate to prevent a finding of confusing similarity between the XARELTO Mark and the Disputed Domain Name. See Sanofi v. Domains By Proxy, LLC / domain admin, WIPO Case No. D2013-0368; Amegy Bank National Association v. Contact Privacy Inc. Customer 0136596179 / Banks Joseph, WIPO Case No. D2014-0983.
Second, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its XARELTO Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relationship to that mark may be evidence depending on the circumstances. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Moreover, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s XARELTO Mark and to drive Internet traffic seeking the Complainant’s medication to the Respondent’s website for commercial gain. See paragraph 4(b)(iv) of the Policy.
Second, the Panel finds that the Respondent knew or should have known of the Complainant’s rights in its XARELTO Mark when registering the Disputed Domain Name. As noted above, the Complainant’s XARELTO Mark is widely known and used and the Respondent registered the Disputed Domain Name many years after the Complainant first used and obtained its numerous trademark registrations worldwide for the XARELTO Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its XARELTO Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.
Third, the parking page to which the Disputed Domain Name resolves contains hyperlinks that are pay-per-click sponsored ads that have information about junking used cars. As such, the Respondent is not only trading on consumer interest in the Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the website, but the Respondent also derives commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Further, when the links on pay-per-click pages are based on the trademark value of a domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).
Moreover, the fact that the Respondent is known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties, many of which are misspellings, is a further indication that the Respondent registered and used the Disputed Domain Name in bad faith.
Finally, when clicking on the website at the Disputed Domain Name, there is a message stating that the website is for sale. In addition, there is evidence that an auction was held for sale of the Disputed Domain Name. The amounts listed for the Disputed Domain Name are far in excess of the out-of-pocket expenses related to the name, another indication of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <xarellto.com>, be transferred to the Complainant.
Lynda M. Braun
Date: December 11, 2018