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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Reddy’s Laboratories Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / rajarshi gangully, dr reddys labs

Case No. D2021-0850

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / rajarshi gangully, dr reddys labs, India.

2. The Domain Name and Registrar

The disputed domain name <drreddyslabs.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2021, 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 March 29, 2021 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 April 5, 2021, and another amended Complaint on May 10, 2021, requesting for a change of remedy in the amended Complaint (the “Supplemental Filing”).

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 April 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2021.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on May 3, 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 trademarks DR. REDDY’S and DR. REDDY’S LABORATORIES LTD. The Complainant has provided copies of its trademark registrations that include, Indian trademark registration 2572388 for DR. REDDY’S LABORATORIES LTD. under class 5, registered on July 30, 2013, Indian trademark registration 2998881 for DR. REDDY’S device mark with the text “Dr. Reddy’s” under class 10, registered on July 1, 2015, Indian trademark registration 2998883 for DR. REDDY’S device mark with the words “Dr. Reddy’s” under class 44, registered on July 1, 2015 and Indian trademark registration 1020542 for DR. REDDY’S device mark with the text “Dr. Reddy’s” under class 14, registered on June 27, 2001.

The Respondent registered the disputed domain name <drreddyslabs.com> on March 9, 2021. The Respondent availed privacy services to mask the name of the owner of the disputed domain name. The disputed domain name does not resolve to an active website.

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, Russian Federation (the), the United States of America, the United Kingdom, and Germany. It also serves patients in countries such as Canada, South Africa, Australia, Brazil, and China. The Complainant states that it owns numerous trademark registrations for DR. REDDY’S and its variants, and also has a registered trademark for DR. REDDY’S LABORATORIES LTD.

The Complainant argues that the disputed domain name <drreddyslabs.com> is visually, phonetically and structurally similar to its trademark and its corporate name “Dr. Reddy’s Laboratories”. The Complainant states that it has been using its name since the year 1984 and has provided evidence of use of its name and mark to establish its prior adoption and use. The Complainant contends that the trade and public associate the trademark and the name with the Complainant.

The Complainant states that the Respondent lacks rights or legitimate interests in the disputed domain name as the Respondent is not commonly known by the disputed domain name and there are no other facts, circumstances or even evidence under paragraph 4(c) of the Policy, that demonstrate the Respondent is likely to have any rights or legitimate interests in the disputed domain name. The Complainant further states that it has not licensed or permitted the Respondent to use its trademark or register any domain name containing its trademarks.

The Complainant argues that the disputed domain name was registered and is used in bad faith by the Respondent, who ought to have known of the Complainant’s prior rights in its trademarks. The Complainant asserts that its marks are coined and derived from the family name of its founder and is arbitrary for the pharma sector and that it has acquired secondary meaning due to extensive use. The Complainant states the disputed domain name was registered to target the Complainant’s mark and to confuse Internet users looking for the Complainant online. The Complainant requests for transfer of the disputed domain name.

B. Respondent

The Respondent has been served notice of these proceedings but did not reply to the Complaint or the Complainant’s contentions.

6. Discussion and Findings

6.1 Procedural issues: Supplemental Filing

The Complainant submitted an unsolicited Supplemental Filing in this proceeding on May 10, 2021, requesting that the disputed domain name be transferred to the Complainant (instead of being cancelled).

The Panel notes that the Respondent was copied in the Complainant’s submission, that the Respondent did not submit any comments on it, and that the Complainant’s request does not affect the Panel’s substantive analysis in this decision. Accordingly, the Complainant’s Supplemental filing requesting a change of the remedy is accepted. See also BforBank SA v. Dipika Sharma, WIPO Case No. D2016-0378.

6.2 Substantive analysis

The Registration Agreement for the disputed domain name is between the Registrar and the Respondent. Under the Registration Agreement, the Respondent has agreed to be bound by the Uniform Dispute Resolution Policy. The Complainant, who is a third party to this agreement, can make a complaint under the Policy, claiming that its rights have been violated due to 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 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 copies of its registered trademarks that are mention in Section 4. On the basis of the evidence provided, the Panel finds the Complainant has established its rights in the trademarks DR. REDDY’S and DR. REDDY’S LABORATORIES LTD.

The Panel finds the disputed domain name is confusingly similar to the trademark DR. REDDY’S as the disputed domain name incorporates the Complainant’s mark DR. REDDY’S in its entirety except for the apostrophe sign preceding the letter “s”. Merely omitting the apostrophe does not interfere with finding confusing similarity. See Athena’s Home Novelties, Inc. v. Midnight Madness and I Leased My Site.Com, WIPO Case No. D2003-0904 (<athenashomenovelties.com>) or see John Dewar & Sons Limited v. Roni Abou Jaoude and CRM Consulting, WIPO Case No. D2003-0175 (<williamlawsons.com>), where it was observed that apostrophe is not permitted in domain names and a disputed domain name that replicates the mark without the apostrophe, would still be found similar to the mark in question.

The term “labs” is widely known as the popular short form for the word “laboratories”. The disputed domain name <drreddyslabs.com> contains the DR. REDDY’S mark with the term “labs” and is found confusingly similar to the Complainant’s trademarks DR. REDDY’S and DR. REDDY’S LABORATORIES LTD.

The Complainant has therefore established the first element under paragraph 4 (a) of the Policy. The disputed domain name is found to be identical or confusingly similar to the Complainant’s marks in which it 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.

Under paragraph 4 (c) of the Policy, the Respondent can establish rights or legitimate interests in the disputed domain name by demonstrating:

(i) Before notice of the present dispute, the Respondent has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent as an individual, business, or other organization, has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; or
(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Based on the material placed before the Panel, the Respondent is not known to have any business reflecting the disputed domain name and does not appear to be commonly known by the disputed domain name. There is no apparent use of the disputed domain name by the Respondent in connection with a bona fide offering of goods or services, or for any legitimate noncommercial purpose or fair use. The Complainant has asserted that the Respondent is not licensed or authorized to use its trademarks.

The Respondent has not submitted a response or answered any allegations made by the Complainant. Under the described circumstances and taking into account the entirety of the evidence, the Panel is of the view that there is no basis to find that the Respondent has any rights or legitimate interests in the disputed domain name.

The Complainant is found to have 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’s arguments alleging bad faith registration and use of the disputed domain name are:

The trademark DR. REDDY’S has been used continuously and extensively since the year 1984 by the Complainant. Furthermore, it has made significant use of its domain name <drreddys.com> and the corresponding website since the year 1998. The DR. REDDY’S mark, the Complainant has asserted, is a coined mark that is derived from the family name of its founder. The Complainant has also submitted that the mark is an arbitrary one for the pharma sector and due to its extensive use since its adoption in 1984 the mark has acquired secondary meaning. The Complainant has argued that the Respondent has used the Complainant’s mark in the disputed domain name to create a false impression of association with the Complainant in an attempt to trade off the goodwill that the Complainant has built in its trademarks over several years.

The Panel finds the evidence filed by the Complainant establishes its prior adoption and extensive use of its mark. Its rights in the DR. REDDY’S mark and the DR. REDDY’S LABORATORIES LTD. mark are undisputed.

The reputation associated with the DR. REDDY’S mark has been noted in a previous decision by this Panel, where the international registrations for the DR. REDDY’S mark include, but are not limited to: European Union trademark number 002906659 for DR. REDDY’S, registered on July 20, 2004; and New Zealand trademark registration number 783525 for DR. REDDY’S registered on July 31, 2008; Spanish trademark registration M2824373 for DR. REDDY’S registered on October 10,2008 and Spanish trademark registration M2824371 for DR. REDDY’S REDDY PHARMA IBERIA, S.A, registered on October 10, 2008. See Dr. Reddy’s Laboratories Ltd. v. Direct Privacy- d8d53, Savvy Investments, LLC Privacy ID # 13508974 / Vishnu Vardhan, medi-infotec, WIPO Case No. D2020-2929. This establishes that the DR. REDDY’S trademarks are well-known, and distinctive of the Complainant and its pharmaceutical business, not merely in India, but in many other jurisdictions where the Complainant’s products are being used.

It is widely accepted among UDRP panels that the registration of a domain name which includes a complainant’s famous mark, is itself indicative of bad faith. In the present case, there appears to be no plausible reason for the Respondent’s use of the of the Complainant’s mark in the disputed domain name but to create confusion in the minds of Internet users who are looking for the Complainant online.

The Panel agrees with the Complainant’s submission that the Respondent ought to have registered the disputed domain name to derive advantage from its mark. The Panel therefore concludes that the balance of probabilities weighs towards finding bad faith registration and use of the disputed domain name on the basis of the discussed facts and circumstances.

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 <drreddyslabs.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: May 14, 2021

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