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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Reddy’s Laboratories Ltd. v. Direct Privacy- d8d53, Savvy Investments, LLC Privacy ID# 13508974 / Vishnu Vardhan, medi-infotec

Case No. D2020-2929

1. The Parties

The Complainant is Dr. Reddy’s Laboratories Ltd., India, represented internally.

The Respondent is Direct Privacy- d8d53, Savvy Investments, LLC Privacy ID# 13508974, United States of America / Vishnu Vardhan, medi-infotec, India.

2. The Domain Name and Registrar

The disputed domain name <drlede.com> is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2020, 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 December 4, 2020 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 December 8, 2020.

The Center verified that the Complaint together with the amendment to the Complaint 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 January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2021.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on February 22, 2021. 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 leading Indian pharmaceutical company that owns the trademark DR. REDDY’S and its variants under class 5 for pharmaceutical preparations. Among its trademark registrations are European Union trademark No. 002906659 for DR. REDDY’S, registered on July 20, 2004; New Zealand trademark registration number No. 783525 for DR. REDDY’S, registered on July 31, 2008; Spanish trademark registration No. M2824373 for DR. REDDY’S, registered on October 10, 2008 and Spanish trademark registration No. M2824371 for DR. REDDY’S REDDY PHARMA IBERIA, S.A, registered on October 10, 2008.

The disputed domain name was registered on October 21, 2008. The disputed domain name resolves to a website where the Respondent has displayed the Complainant’s trademark and logo stating “Welcome to Dr.Reddy's” with a login.

5. Parties’ Contentions

A. Complainant

The Complainant states it was incorporated in 1984, and its business involves three areas which are, pharmaceutical services and active ingredients (API), global generics and proprietary products. The Complainant states that its portfolio of products and services include API, custom pharmaceuticals services “CPS”, generics, biosimilars and differentiated formulations. The Complainant claims it has a paid-up capital of 830 million, and its principal markets are in India, the Russian Federation, the United States of America, the United Kingdom and Germany. It also serves patients in countries such as Canada, South Africa, Brazil, and China. The Complainant states that it owns numerous trademark registrations for DR. REDDY’S and its variants and has also filed an application for registering the domain name <drreddy.com> as a trademark in India.

The Complainant argues that the disputed domain name <drlede.com> is visually, phonetically and structurally similar to its mark. The Complainant states that the disputed domain name resolved to a webpage that prominently displays its mark and logo and has filed a screenshot of the said webpage. The Complainant states that the trademark with the logo has been used since at least 2003 and has provided evidence of use of its mark and logo to establish its prior adoption and use. The Complainant alleges that in the year 2015 a new logo was adopted and the registration of the old logo was allowed to lapse. The Complainant contends that the trade and public associate the mark and logo with the Complainant.

The Complainant states that the Respondent lacks rights or legitimate interests in the disputed domain name as the Respondent is not known by the disputed domain name and there are no other facts or circumstances to show the Respondent has rights. The Complainant further states that it has extensively used the trademark since its adoption in 1984 and has not licensed or permitted the Respondent to use its trademark.

The Complainant argues that the disputed domain name was registered and is used in bad faith by the Respondent. Evidence that the Respondent has targeted its mark, the Complainant states, is the Respondent’s webpage which displays the Complainant’s mark and logo. The Complainant states the disputed domain name was registered in 2008 when the Complainant was actively using the said logo. The Complainant asserts that its mark is coined and derived from the family name of its founder, which is an arbitrary mark for the pharma sector. The Complainant requests for cancellation of the disputed domain name.

B. Respondent

The Panel notes from the material on record, that the Respondent has been served notices of these proceedings. The Respondent did not respond or take part in these proceedings.

6. Discussion and Findings

The Registration Agreement for the disputed domain name is between the Registrar and the Respondent. Under the Agreement, the Respondent has agreed to be bound by the UDRP. A third party can make a complaint under the Policy, claiming that its rights have been violated due the registration and the use of the disputed domain name.

Under paragraph 4(a) of the Policy, the Complainant has to establish three elements to obtain the remedy of transfer of the disputed domain name, these are:

(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 lacks rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has provided evidence of its registered trademarks, based on which the Panel finds the Complainant has established its rights in the DR. REDDY’S mark. Regarding the similarity of the disputed domain name with the DR. REDDY’S mark, the Panel finds that the disputed domain name is confusingly similar to the DR. REDDY’S trademark as the disputed domain name is phonetically similar to the Complainant’s mark. Confusing similarity can be determined by making aural or phonetic comparison of the trademark and disputed domain under the first element of the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0).

Several UDRP panels have recognized that phonetic similarity is decisive for the finding of confusing similarity under the first element of the UDRP. See for instance, WhatsApp Inc. v. Fransico Costa, WIPO Case No. D2015-1708, where the domain name <webwazzup.com> was found to be confusing similar to the trademark WHAT’S APP. The term “wazzup” was found to be confusingly similar to the phrase “What’s App” and a variation of the spelling of the WHAT’S APP mark. Similarly, in the present case, the disputed domain name <drlede.com> is found to be confusingly similar to the DR. REDDY’S trademark under the first element of the Policy.

Furthermore, in this specific limited instance the website content which displays the Complainant’s mark and logo shows that the Respondent targeted the Complainant’s DR. REDDY trademark and supports a finding of confusing similarity. See section 1.15 of the WIPO Overview 3.0.

The Complainant has established the first element under paragraph 4(a) of the Policy. The disputed domain name is found to be confusingly similar to a mark in which the Complainant has proven rights.

B. Rights or Legitimate Interests

Under the second element of paragraph 4(a) of the Policy, the Complainant is required to show that the Respondent lacks rights or legitimate interests in the disputed domain name. It is sufficient for the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has put forward its submissions under the second element, the burden then shifts to the Respondent to provide material to establish rights or legitimate interests. In the event that the Respondent fails to provide evidence of any rights or legitimate interests, the Complainant is deemed to have satisfied the second element under the Policy. See section 2.1 WIPO Overview 3.0

The Panel finds on the basis of the Complainant submissions that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not known to have any business reflecting the disputed domain name. The Respondent has apparently not used the disputed domain name in connection with a bona fide offering of goods or services, or for any legitimate noncommercial purpose or fair use. The Respondent is not affiliated with the Complainant or authorized to use the Complainant’s mark or logo.

The Respondent has not submitted a response or answered any allegations made by the Complainant. The Panel notes that the Respondent’s website uses the Complainant’s mark and logo. It is apparent from the circumstances described, that the Respondent has registered and uses the disputed domain name to create confusion in the minds of Internet users. Such use of the disputed domain name and the corresponding website that is designed to impersonate the Complainant, amounts to misleading people who are interested in the Complainant’s, products, service and business.

Given these circumstances, it cannot be said that the disputed domain name is used for bona fide purposes. On the contrary, the use of a phonetic variant of the Complainant’s mark in the disputed domain name, and the blatant use of the mark and logo displayed on the Respondent’s webpage is likely to mislead Internet users and such use is not legitimate or rightful use of the disputed domain name.

The Panel accordingly finds from the material on record, that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The second requirement under paragraph 4(a) of the Policy, has been fulfilled by the Complainant.

C. Registered and Used in Bad Faith

The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.

The Complainant has submitted that it is improbable that the Respondent has no knowledge of the Complainant’s DR. REDDY’S mark, and has also argued that the disputed domain name has been registered to target its mark. The Complainant has asserted that the disputed domain name has been registered and is being used in bad faith with an intention to derive unjust gains and to disrupt its business.

The Panel finds there is sufficient evidence that is consistent with the Complainant’s submission that the Respondent has targeted its mark by registering the disputed domain name. First, the Complainant has established with evidence that its rights in the mark predates the registration of the disputed domain name and the mark is widely known due to extensive use in commerce. Second, the disputed domain name is a misspelling of the Complainant’s mark and phonetically resembles the mark. Third, the disputed domain name resolves to a webpage that displays the mark and logo of the Complainant. These facts and circumstances taken together support a finding that that the Respondent has intentionally registered the disputed domain name as a phonetic misspelling of the mark to mislead web users and divert Internet users to a webpage that displays the Complainant’s mark and logo.

The Respondent has engaged in typo-squatting, which seeks to redirect Internet users who misspell the Complainant’s mark, with an intention to derive gains from such confusion. It is well established that typo-squatting of a famous mark is itself evidence of bad faith, particularly when such a domain name is registered by an unaffiliated entity, it can create a presumption of bad faith. See section 3.1.1 of the WIPO Overview 3.0 and also section 3.1.4 of the WIPO Overview 3.0.

Given the reputation associated with the DR. REDDY’S mark, and based on the evidence, the facts and circumstances discussed, on balance the Panel concludes that the disputed domain name was registered in bad faith as set out under paragraph 4(b)(iv) of the Policy. Namely, to attract Internet users to the Respondent’s online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement which is recognized as bad faith registration and use of the disputed domain name under the Policy.

The Panel accordingly finds that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy, that the disputed domain name has been registered and is being used in bad faith.

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 name <drlede.com> be cancelled.

Harini Narayanswamy
Sole Panelist
Date: March 5, 2021

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