WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BELUPO Pharmaceuticals and Cosmetics, Incorporated v. Spine ICT j.d.o.o
Case No. D2021-0976
1. The Parties
The Complainant is BELUPO Pharmaceuticals and Cosmetics, Incorporated, Croatia, internally represented.
The Respondent is Spine ICT j.d.o.o, Croatia.
2. The Domain Name and Registrar
The disputed domain name <normabel.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 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 April 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on April 1, 2021. The Complainant filed an amendment to the Complaint on April 5, 2021.
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 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2021. The Center received various email communications from the Respondent on April 9, 17, 19, 20, 21, and 23, 2021. On April 23, 2021, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Zoltán Takács as the sole panelist in this matter on April 30, 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.
The language of the Registration Agreements for the disputed domain names is English, which the Panel establishes as the language of this administrative proceeding.
4. Factual Background
The Complainant is one of the most significant and well-known pharmaceutical companies in Croatia, present also in the markets of South-Eastern Europe and the Commonwealth of Independent States.
The Complainant owns a number of trademark registrations for the NORMABEL trademark, including:
- Croatian Trademark Registration No. Ž932164 for the word mark NORMABEL, with priority of August 1, 1989, registered for pharmaceutical products of class 5 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“The Nice Classification”), and
- International Trade Mark Registration (“IR”) No. 623095 for the word mark NORMABEL registered on August 4, 1994, for pharmaceutical products of class 5 of the Nice Classification.
The disputed domain name was registered on January 24, 2019, and at the time of filing of the Complaint redirected to a Croatian language news portal website named “Normabel.com – out of mainstream” that was posting private views and opinions relating to daily news.
At the time of rendering this decision, the disputed domain name redirects to a Croatian language news portal website named “Slobodno.com – out of mainstream” and is edited by the same team as that of the “Normabel.com – out of mainstream” news portal website. The content of the websites was and is unrelated and not authorized by the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its NORMABEL trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name solely comprising of its well-known NORMABEL trademark to attract newsreaders to its website, which is indication of the Respondent’s bad faith.
The Complainant requests that the disputed domain name be either transferred from the Respondent to the Complainant or cancelled.
The Respondent is Spine ICT j.d.o.o, a Croatian Internet service provider. The Respondent claims to have registered the disputed domain name on behalf of their client Deadline Productions, publisher of the news portal behind the disputed domain name <normabel.com>.
The Respondent contends that Mr. Valdec, who is a well-known independent journalist in Croatia and editor in chief of Deadline Productions contacted the Croatian Intellectual Property Office prior to registration of the disputed domain name and was advised the as long as his project “Normabel.com – out of mainstream” is not related to pharmaceutical products he can use the NORMABEL trademark without any other limits.
The Respondent further contends that their client, Mr. Valdec, afraid of being politically pressured by the Complainant that is closely connected to the governing political establishment in Croatia decided to move his project to a new domain name, but retain the disputed domain name until the Complainant or somebody else decides to buy it, or it expires.
6. Discussion and Findings
6.1 Respondent’s Identity
The Panel notes that paragraph 1 of the Rules defines Respondent as “the holder of a domain-name registration against which a complaint is initiated”. According to the Registrar, the registrant of the disputed domain name is Spine ICT j.d.o.o. However, Spine ICT j.d.o.o, in its communications claimed to have registered the disputed domain name for a client, and being in charge of administrating the disputed domain name in the name of Deadline Productions j.d.o.o (a company of Mr. Valdec).
The Panel notes that neither Mr. Valdec nor Deadline Productions j.d.o.o have submitted anything in this proceeding. There is no supporting evidence on the existence and nature of the relationship between the Respondent Spine ICT j.d.o.o and Mr. Valdec or Deadline Productions j.d.o.o. In addition, even if such relationship exists, here the listed registrant is the Respondent Spine ICT j.d.o.o, as confirmed by the Registrar, and the Panel considers appropriate to find that Spine ICT j.d.o.o is the Respondent. The existence of a beneficial holder should not serve generally to renege on the obligations and responsibilities that a registrant of a domain name has by virtue of its registration.
Therefore, in this instance the Panel will refer to Spine ICT j.d.o.o as the Respondent.
6.2 Substantive Issues
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The overriding objective of the Policy is to curb the abusive registration of domain names in cases where the registrant is seeking to profit from and exploit the trademark of another.
In order to succeed on the complaint a complainant must evidence each of the below three elements required by paragraph 4(a) of the Policy, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among previous UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence of having registered rights in the NORMABEL trademark.
For the purpose of this administrative proceeding the Panel finds that the Croatian Trade Mark Registration No. Ž932164 and the IR No. 623095 satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights in the NORMABEL trademark, the Panel next assesses whether the disputed domain name <normabel.com> is identical or confusingly similar to the Complainant’s trademark.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The disputed domain name is comprised solely of the Complainant’s NORMABEL trademark. The applicable “.com” TLD should be disregarded under the confusing similarity test and the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the NORMABEL trademark.
The Respondent has not provided any evidence or circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to rights or legitimate interests in the disputed domain name.
The Panel accepts the Complainant’s allegations that the Respondent has no authorization to use its prior NORMABEL trademark in the disputed domain name and that the Respondent is not commonly known by the disputed domain name.
In the Panel’s view, use of the disputed domain name (which is identical to the Complainant’s trademark) in an online news portal website’ name is not legitimate noncommercial or fair use of the disputed domain name. On the contrary, such use demonstrates that the Respondent is seeking to attract Internet users for commercial benefit (either is own, or that of its client) through the Complainant’s widely known trademark. The Respondent mentioned that when choosing the disputed domain name Mr. Valdec considered some Italian word combination like “alert for normal”. However, the Panel finds this unsupported statement insufficient to show rights or legitimate interests in the disputed domain name, and noting the composition of the disputed domain name, the Panel finds that it carries a high risk of implied affiliation with the Complainant’s trademark.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(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 inherently distinctive NORMABEL trademark of the Complainant has strong reputation and due to its substantial and continued use has become one the most recognized brands in Croatia, home to both the Complainant and the Respondent.
According to section 3.1.4 of the WIPO Overview 3.0, previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
The Respondent’s admission that prior to registration of the disputed domain name their client sought advice from the local intellectual property authority on their intent to use the Complainant’s trademark in the disputed domain name evidences that the Respondent’s client was clearly aware of the Complainant’s trademark at registration, and probably the Respondent as well. Even if Mr. Valdec would not have shared such information with the Respondent at the time of the registration of the disputed domain name, the Panel finds likely that the Respondent would have been aware on its own of the Complainant’s reputation and its trademark.
Absent any contrary evidence or circumstances, the only plausible explanation for the decision to fully incorporate the Complainant’s widely-known NORMABEL trademark into the disputed domain name is to capitalize on the goodwill of the trademark and use it in the disputed domain name to intentionally attract Internet users to its website (or website under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <normabel.com> be transferred to the Complainant.
Date: May 11, 2021