WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RatioPharm GmbH v. Khatuna Lomitashvili
Case No. D2021-1326
1. The Parties
The Complainant is RatioPharm GmbH, Germany, represented by SILKA AB, Sweden.
The Respondent is Khatuna Lomitashvili, Georgia.
2. The Domain Name and Registrar
The Disputed Domain Name <ratiopharma.com> is registered with Rebel Ltd (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 May 4, 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 May 4, 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 May 6, 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 May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2021.
The Center appointed Peter Wild as the sole panelist in this matter on June 14, 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 producer of a wide range of pharmaceutical products, going back to 1973. It is well established and known in Germany as a major provider of generic pharmaceuticals. The Complainant is the owner of a wide portfolio of trademarks, amongst others, of the trademark RATIOPHARM registered under German Trademark DE919895 on June 28, 1974, European Union Trademark 000189548 of August 31, 1998 and the International trademark 508764 registered on December 17, 1986 (claiming protection in a number of countries including Georgia, Respondent’s registered country). The Complainant is also the owner of a number of domain names with the element RATIOPHARM, including <ratiopharm.com>
The Disputed Domain Name was registered on July 16, 2015, and at the time of filing, the Disputed Domain Name was being used in connection with an active webpage, offering information on pharmaceutical products, most of them competing with Complainant’s products, and providing links to an online pharmacy to buy such products.
5. Parties’ Contentions
The Complainant asserts to be part of TEVA Group, one of the world’s leading providers of a wide range of pharmaceuticals and actively promoting and using its RATIOPHARM trademark.
The Disputed Domain Name is, according to the Complainant, confusingly similar to the Complainant’s trademark, creating a likelihood of confusion given the reproduction of its trademark, not adding any distinctiveness thereto by the addition of the single letter “a” and the generic top-level domain (“gTLD”) “.com”.
Moreover, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the RATIOPHARM trademark.
There is clear evidence that the Disputed Domain Name is used to attract Internet users to buy products which directly compete with Complainant’s products, allegedly using non regulated or illegal sales channels for prescription drugs.
According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy given that the there is evidence that the Disputed Domain Name is used to attract and mislead Internet users by creating a danger of confusion with the well known RATIOPHARM brand of the Complainant.
As to the registration of the Disputed Domain Name in bad faith, the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the Disputed Domain Name considering that it has acquired considerable goodwill and renown and that with a simple Internet search, the trademark would have been shown. Further, the Respondent’s intent to target the Complainant can easily be inferred from the contents of the website at the Disputed Domain Name, which directly refers to competing products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established its rights in the RATIOPHARM trademark.
The Panel sees that the Disputed Domain Name reproduces the Complainant’s trademark in its entirety. The addition of the letter “a” does not avoid a finding of confusing similarity under the Policy as the RATIOPHARM mark remains clearly recognizable in the Disputed Domain Name. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s established trademark.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
There is no reason to believe that the Respondent’s name somehow corresponds with the Disputed Domain Name and the Respondent does not appear to have any trademark rights associated with the term “RATIOPHARMA”. See VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1596.
The Respondent is not identified in the WhoIs database as “RATIOPHARMA”. Previous UDRP panels have held that a respondent was not commonly known by a Disputed Domain Name, for example, if not even the WhoIs information was similar to the Disputed Domain Name. There is no evidence in the case file showing that the Respondent may be commonly known as “RATIOPHARMA”. The Panel therefore finds under paragraph 4(a)(ii) of the Policy that the Respondent is not commonly known by the Disputed Domain Name.
According to the Complainant, the Respondent is not affiliated with nor authorized by the Complainant in any way to use the trademark and there is no other plausible reason for registration of the Disputed Domain Name than to take advantage of the goodwill and reputation associated with the trademark RATIOPHARM. Furthermore, the Disputed Domain Name points to an active page providing information to competitor’s products, which indicates that the Respondent is aware of the Complainant’s business and the Respondent’s use of the Disputed Domain Name clearly cannot be considered a bona fide offering of goods or services.
The Respondent did not file any claims or evidence which would support his/her rights.
Based on these facts, the Panel holds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Therefore, the Panel decides that the second condition of the Policy is met.
C. Registered and Used in Bad Faith
The Complainant’s trademark RATIOPHARM is widely used and well known in the pharmaceutical business. It is inconceivable that the Respondent didn’t know Complainant’s trademark or, even if he didn’t know, it is obvious that a simple Internet search would have revealed Complainant’s trademark, website and prior rights. In spite of this, the Respondent registered the Disputed Domain Name. In light of the content which is displayed on the website to which the Disputed Domain Name directs, it is hard to find any other explanation why the Respondent registered the Disputed Domain Name than to benefit from the well know status of Complainant’s business and brand. See Ferrari S.p.A. v. American Entertainment Group, Inc. WIPO Case No. D2004-0673 and Revlon Consumer Products Corporation v. Terry Baumer, WIPO Case No. D2011-1051.
The Respondent has not shown to own any trademark or any similar marks or names. The Respondent’s lack of rights or legitimates interests in the Disputed Domain Name at issue is a further indication of bad faith in registering and using it. Where a domain name is so obviously connected to a particular product or service and the registrant is found to have “no connection” to that product or service, “opportunistic bad faith” is established. See LACER, S.A. v. Constanti Gomez Marzo, WIPO Case No. D2001-0177.
Under these facts, the Panel finds that the Disputed Domain Name was registered in bad faith.
The Disputed Domain Name resolves to a website which links further to an illegal on line pharmacy ”www.europe-pharm.com”. This shows bad faith use under two aspects. First of all, the Respondent creates commercial gain by use of the Disputed Domain Name. Secondly, the Respondent tarnishes Complainant’s reputation as the Internet user who lands on the website under the Disputed Domain Name may wrongly infers that there is a connection of this nonofficial pharmaceutical business with Complainant’s business. This may cause significant harm to Complainant’s reputation and standing. See also Sanofi v. Privacy Protect, LLC (PrivacyProtect.org) / Alper Tunka, SteroidTr WIPO Case No. D2019-1869.
The Panel therefore sees bad faith use of the Disputed Domain Name.
For these reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
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 <ratiopharma.com> be transferred to the Complainant.
Date: June 28, 2021