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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

STADA Arzneimittel AG, Britannia Pharmaceuticals Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Peter bronzer

Case No. D2021-3640

1. The Parties

The Complainants are STADA Arzneimittel AG (“STADA”), Germany, and Britannia Pharmaceuticals Limited (“Britannia”), United Kingdom, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Peter bronzer, United States of America.

2. The Domain Name and Registrar

The disputed domain name <britania-pharm.com> (“Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 November 3, 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 November 4, 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 November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 7, 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 STADA is a leading manufacturer of high quality pharmaceutical products that operates in approximately 120 countries. As of December 31, 2020, the Complainant STADA employed 12,301 people worldwide.

The Complainant Britannia is part of and was acquired by the Complainant STADA in 2007. Britannia was founded in 1982 and operates in more than 30 countries. It is engaged in the development of innovative, patient-centric technology that effectively delivers therapies to patients with Parkinson’s disease. Britannia is the owner of at least six trade mark registrations in the European Union and United Kingdom for the BRITANNIA mark, including, inter alia, the BRITANNIA trade mark (Reg. No. 005968268) registered on June 26, 2008, in the European Union and the BRITANNIA trade mark (Reg. No. 2043054) registered on September 13, 1996, in the United Kingdom. Britannia also operates and owns several domain names such as <britannia-pharm.co.uk> and <britannia-pharm.com> which contain the BRITANNIA mark.

The Disputed Domain Name was registered by the Respondent on September 29, 2021. The Disputed Domain Name currently resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainants’ primary contentions can be summarised as follows:

(a) The Disputed Domain Name is confusingly similar to the Complainants’ BRITANNIA trade mark. This is a clear case of typosquatting, as the Disputed Domain Name incorporates a slight variation of the Complainants’ BRITANNIA trade mark with the deletion of one of the letters “n” and the addition of the descriptive term “pharm”.

(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainants have never authorised or given permission to the Respondent, who is not associated with the Complainants in any way, to use their BRITANNIA trade mark. The Respondent is not commonly known by the Disputed Domain Name. The fact that the Disputed Domain Name contains a typo-squatted version of the Complainants’ trade mark and that the Disputed Domain Name has been used in an illegal phishing scheme further prove that the Respondent lacks the rights and legitimate interests in using the BRITANNIA trade mark, and that such use is neither a bona fide offering of goods or services nor a noncommercial or fair use.

(c) The Respondent must have been aware of the Complainants and their BRITANNIA trade mark at the time of registering the Disputed Domain Name. The typosquatted version of the Complainants’ BRITANNIA trade mark incorporated in the Disputed Domain Name was intentionally designed to cause confusion and mislead Internet users. The Disputed Domain Name was also used by the Respondent for phishing purposes. In particular, the Respondent had attempted to pass off as the Complainant Britannia by sending an email using the Disputed Domain Name in order to receive undue payment from third parties. Therefore, the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Consolidation of Complainants

This Complaint was filed by multiple complainants. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels typically look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. See section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In relation to the first criteria, the panel in HSIL Limited, Somany Home Innovation Limited / SHIL Ltd., Brilloca Limited v. GOTW Hostmaster, Get On The Web Limited, WIPO Case No. D2020-3416, held that a common grievance is established where the complainants have a common legal interest in the trade mark rights on which the complaint is based and/or are the target of a common conduct by the Respondent which has clearly affected their individual legal interests in a similar fashion.

In this case, the Panel notes that:

(i) both Complainants are members of the same corporate group, since Britannia is a part of and was acquired by STADA in 2007;

(iii) the arguments that would have been made by each Complainant if there were separate complaints are virtually identical; and

(iv) the Respondent’s acts have affected the rights and interests of both Complainants in a similar manner.

Therefore, based on the above, the Panel finds that this criteria are satisfied.

Moreover, as the Respondent neither objected to the consolidation of the Complainants nor indicated that it would suffer any prejudice from the consolidation, the Panel is of the view that such consolidation is fair and equitable to all Parties and it is therefore procedurally efficient to allow the Complainants to file a single Complaint.

Accordingly, the Panel considers that this Complaint, which was filed by multiple Complainants, should be permitted.

6.2 Substantive Elements of the Policy

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the BRITANNIA trade mark, based on its various trade mark registrations including, inter alia, the BRITANNIA trade mark (Reg. No. 005968268) registered on June 26, 2008, in the European Union and the BRITANNIA trade mark (Reg. No. 2043054) registered on September 13, 1996, in the United Kingdom.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview 3.0.

The Disputed Domain Name incorporates a version of the Complainants’ BRITANNIA trade mark with one of the two letters “n” deleted and the term “pharm” inserted. The Panel finds that the addition of the term “pharm” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainants’ BRITANNIA trade mark. See section 1.8 of the WIPO Overview 3.0. Similarly, the omitted “n” from the trade mark does not prevent a finding of confusing similarity and could be perceived as a form of typo-squatting, unlikely to be perceived by Internet users since the trade mark remains recognizable. See section 1.9 of the WIPO Overview 3.0.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ BRITANNIA trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainants have not authorised the Respondent to use the BRITANNIA trade mark, and there is no relationship between the Complainants and the Respondent, which would otherwise entitle the Respondent to use the BRITANNIA trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainants and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainants’ evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainants that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Disputed Domain Name was used by the Respondent for phishing purposes. In particular, the Respondent had attempted to pass off as the Complainant by sending an email using the Disputed Domain Name in an attempt to receive undue payment from third parties in place of the Complainants. Such use of the Disputed Domain Name can never confer rights or legitimate interests upon the Respondent. See section 2.15 of the WIPO Overview 3.0. Similarly, the construction of the Disputed Domain Name itself, namely the addition of the term “pharm” (descriptive of the Complainant’s services) to a typographical variation of the Complainant’s BRITANNIA trade mark is such to carry a risk of implied affiliation that cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.

In addition, no evidence has been provided to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Complainant’s BRITANNIA trade mark appears to be fairly well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “Britannia pharmaceuticals” are the Complainants’ websites and third party websites providing information relating to the Complainants’ pharmaceuticals business. Therefore, taking this into consideration, together with the fact that the Disputed Domain Name incorporates a deliberately misspelled version of the Complainant’s BRITANNIA trade mark and that the Respondent has been attempting to pass off as the Complainant using the Disputed Domain Name, the Respondent must have been aware of the Complainant and its rights in the BRITANNIA trade mark when registering the Disputed Domain Name.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;

(ii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193); and

(iii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains a typo-squatted version of the Complainant’s BRITANNIA mark and is being used by the Respondent for phishing purposes. Any use of the Disputed Domain Name would likely mislead third parties into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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, <britania-pharm.com>, be transferred to Britannia Pharmaceuticals Limited.

Gabriela Kennedy
Sole Panelist
Date: December 21, 2021

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