WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RatioPharm GmbH v. Park HyungJin
Case No. D2021-1324
1. The Parties
Complainant is RatioPharm GmbH, Germany, represented by SILKA AB, Sweden.
Respondent is Park HyungJin, Republic of Korea (“South Korea”).
2. The Domain Name and Registrar
The Disputed Domain Name <ratiopharm.net> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 25, 2021.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on June 2, 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
Complainant is the owner of numerous trademark registrations for RATIOPHARM and combinations thereof in over 30 jurisdictions. It registered its first trademark in Germany on June 28, 1974, registered for an International Registration before WIPO on December 17, 1986 and a European Union Trade Mark on August 31, 1998 before European Union Intellectual Property Office. Coverage of Complainant’s International Registration has been extended to, among others, Albania, Armenia, Austria, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Belarus, Switzerland, Cuba, Czech Republic, Germany, Algeria, Spain, France, Croatia, Hungary, Italy, Kyrgyzstan, Democratic People’s Republic of Korea, Kazakhstan, Liechtenstein, Liberia, Latvia, Morocco, Monaco, Republic of Moldova, Montenegro, North Macedonia, Mongolia, Poland, Portugal, Romania, Serbia, Russian Federation, Sudan, Slovenia, Slovakia, San Marino, Tajikistan, Ukraine and Viet Nam.
The Disputed Domain Name <ratiopharm.net> was registered on November 6, 2011, after Complainant’s trademark registrations were issued. The Disputed Domain Name resolves to a parked page comprising Pay‑Per‑Click (“PPC”) links.
5. Parties’ Contentions
Complainant asserts that it was founded in 1973, and has been providing high-quality pharmaceuticals at affordable prices in Germany for over 40 years. Complainant asserts that it is the most widely used and best-known drug brand in Germany and a leader in the generic market. Complainant asserts that it consistently names all of its drugs with its trademark RATIOPHARM and the name of the active ingredient. Complainant’s range of preparations covers almost all areas of application and is one of the largest and most extensive on the German market. Complainant asserts that the immense popularity and goodwill enjoyed by its trademark globally by virtue of its open, continuous and extensive use and Complainant’s impeccable market reputation make clear that Complainant’s trademark is well-known.
Complainant asserts that the Disputed Domain Name was registered on November 6, 2011 and incorporates Complainant’s registered mark RATIOPHARM in its entirety. Complainant asserts that the Disputed Domain Name resolves to a parking page with infringing links appearing thereon, making it obvious that the Disputed Domain Name was registered in bad faith to divert traffic from Complainant’s website.
Complainant asserts that Respondent has copied the entirety of Complainant’s registered and well-known trademark, and that the use by any concern other than Complainant of a name that is identical to Complainant’s mark RATIOPHARM is bound to lead to confusion and deception and amounts to passing off as well as trademark infringement. Complainant asserts that any person or entity using the name RATIOPHARM in any manner is bound to lead customers and users to infer that its product or service has an association or nexus with Complainant.
Complainant asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Name because Respondent is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services. Complainant asserts that Respondent has no active business in the name RATIOPHARM, and that Respondent is not making a fair use of the Disputed Domain Name, as Respondent has used the Disputed Domain Name to make unauthorized use of Complainant’s mark for Respondent’s own profit.
Complainant further asserts that Respondent lacks rights and legitimate interests in the Disputed Domain Name because Respondent has parked the linked webpage with PPC links and additionally has put up the Disputed Domain Name for sale, and thus no legitimate use of the Disputed Domain Name is being made. Further, Complainant asserts that Respondent is a serial cybersquatter, and thus Respondent knew of Complainant’s mark and its business activities as the mark has been in use in relation to pharmaceutical products for the last five decades.
Further, Complainant asserts that its registered mark is a distinctive term, used for the first time in the health industry by Complainant, that no one would legitimately choose as a domain name without having specific rights to use it. Complainant asserts that its trademark is not a descriptive term serving to indicate specific characteristics of any goods or services. Therefore, Complainant asserts that Respondent’s registration of the Disputed Domain Name is clearly intended to pass off Respondent’s website as Complainant’s and have a free ride on Complainant’s reputation and goodwill.
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith, because the currently parked page to which it resolves includes keywords related to Complainant and its competitors. As a result, Respondent has attempted for commercial gain to misleadingly divert Internet users to Complainant’s competitor. Complainant asserts that the parking page linked to the Disputed Domain Name uses keywords like “Nasal (Nasen) Spray Ratio Pharm”, “Pfizer” and “Humira” along with other related medical terms, which reinforce the (false) association between Complainant’s RATIOPHARM trademark and the Disputed Domain Name. Therefore, Complainant asserts that the Disputed Domain Name attempts to induce Complainant’s customers to believe that Respondent is associated in some manner with Complainant. Complainant asserts that Respondent’s choice of the Disputed Domain Name was a clear attempt to capitalize unfairly on or otherwise take advantage of Complainant’s trademark and resulting goodwill.
Complainant asserts that it is inconceivable that the registration of the Disputed Domain Name was made without full knowledge of the existence of Complainant and its well-known trademark. Complainant asserts that Respondent knowingly chose to register and use the Disputed Domain Name with an intention to deceive Internet users into visiting the website linked to the Disputed Domain Name and drawing damaging conclusions as to Complainant’s global presence, thus adversely affecting Complainant’s goodwill and reputation.
Complainant asserts that by providing PPC links under the guise of diverting consumers, Respondent generates income through “click-through” revenue, which constitutes evidence of registration and use of the Disputed Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [respondent has] registered the disputed 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 [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
According to paragraph 4(c) of the Policy, a respondent may demonstrate rights to or legitimate interests in a domain name by any of the following, without limitation:
“(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 customers or to tarnish the trademark or service mark at issue.”
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b).
The Panel notes that the Disputed Domain Name was registered in 2011, and this Proceeding was instituted nearly ten years later, in 2021. The Panel finds that this delay is not fatal to Complainant’s case, however, as the equitable defense of laches does not typically apply to this Policy proceeding. The Policy’s remedies are injunctive rather than compensatory, with the focus on avoiding future confusion as to source. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.17; Tax Analysts v. eCorp, WIPO Case No. D2007-0040.
2. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name <ratiopharm.net> is identical to Complainant’s RATIOPHARM trademark. The Disputed Domain Name reproduces Complainant’s RATIOPHARM mark in its entirety, adding only the generic Top-Level Domain (“gTLD”) “.net”, which does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.11.1. The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.
3. Rights or Legitimate Interests
Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services; that Respondent has no active business in the name of RATIOPHARM; and that Respondent is not making a fair use of the Disputed Domain Name, as Respondent has used the Disputed Domain Name, which is based on Complainant’s RATIOPHARM mark, to make unauthorized use of Complainant’s mark for Respondent’s own profit. Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name.
Furthermore, Respondent’s parking page includes PPC links, an indicator of bad faith where the Disputed Domain Name is identical to Complainant’s trademark. See WIPO Overview 3.0, section 2.9 (“the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”).
As a result, the Panel finds that Complainant has established paragraph 4(a)(ii) of the Policy.
4. Registered and Used in Bad Faith
A case could have been made that Complainant’s reputation does not extend to Respondent’s domicile in South Korea, in that Complainant holds no trademark registrations in South Korea and provided no evidence of its reputation in South Korea. However, Complainant did establish that there is no descriptive or other meaning for its registered trademark RATIOPHARM, and that Respondent is no stranger to UDRP proceedings or to the abusive registration of domain names. Furthermore, Respondent failed to answer the Complaint, and from these circumstances the Panel may therefore draw an inference that Respondent was aware of Complainant’s reputation and chose the Disputed Domain Name in an effort to capitalize on that reputation.
From these circumstances, the Panel finds that Respondent registered and used the Disputed Domain Name in bad faith, both because Respondent registered the Disputed Domain Name in order to prevent Complainant from reflecting its registered mark in a corresponding domain name, and because Respondent intentionally attempted to attract for commercial gain Internet users to its website featuring PPC links, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
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, <ratiopharm.net>, be transferred to Complainant.
Jordan S. Weinstein
Date: June 16, 2021