WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ratiopharm GmbH v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Rainer Winkler
Case No. D2021-3780
1. The Parties
The Complainant is Ratiopharm GmbH, Germany, represented by SILKA AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Rainer Winkler, Germany.
2. The Domain Name and Registrar
The disputed domain name <ratiopharm988.xyz> 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 11, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 November 15, 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 15, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.
The Center appointed Theda König Horowicz as the sole panelist in this matter on December 23, 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 pharmaceutical company which has been founded and which has its headquarters in Ulm, Germany. It has affiliated companies in 25 countries around the world. The Complainant specializes in the manufacturing and commercialization of a large number of generic medicine products which are exclusively sold through pharmacies.
The Complainant was acquired in 2010 by Teva Pharmaceuticals Industries Ltd.
The Complainant bears the designation “Ratiopharm” in its business name and is also the owner of the registered trademark RATIOPHARM in several countries, including in Germany through the trademark registration No. 919895, in international class 5, of June 28, 1974.
The disputed domain name was registered on October 1, 2021, through a privacy service by the Respondent who is based in Germany. The disputed domain name is inactive.
5. Parties’ Contentions
The Complainant asserts to be the owner of registered trademark rights for RATIOPHARM in several countries. The said trademark is clearly recognizable in the disputed domain name which only differs by the addition of the numbers “988” which is not sufficient to remove the confusing similarity with the Complainant’s mark. The generic Top-Level Domain (“gTLD”) “.xyz” is not relevant in the analysis of confusing similarity.
The Complainant further asserts that the Respondent does not have rights or legitimate interests in the disputed domain name due to the following circumstances:
(i) The Respondent is not a licensee of the Complainant and was not authorized to use the RATIOPHARM trademark in association with the disputed domain name.
(ii) The Respondent does not hold any trademark rights on “ratiopharm988” or on the disputed domain name.
(iii) The Respondent is not commonly known by the disputed domain name.
(iv) The terms “ratiopharm988” and “ratiopharm” have no meaning in English language and “ratiopharm” is only known as being the Complainant’s mark.
(v) The disputed domain name is inactive and the Respondent is therefore not known by it.
(vi) The disputed domain name was registered with the intention of confusing Internet users into thinking that the Respondent’s services were those of the Complainant or were connected with them in some way, which is not a fair use.
The Complainant considers that the Respondent registered and is using the disputed domain name in bad faith. The registration of the disputed domain name is of bad faith as the Complainant’s mark has been in use for many decades and became well-known internationally well before the registration of the disputed domain name. A simple search in an online trademark registry or search engine would have informed the Respondent on the existence of the Complainant’s rights in RATIOPHARM. The disputed domain name is used in bad faith because it does not resolve to an active website, passive holding being considered as bad faith use according to the Policy. Furthermore, the Complainant raises that the Respondent used a privacy service to conceal its identity. In addition, the Complainant notes that MX servers are configured in the disputed domain name which indicates a risk that the Respondent potentially uses the disputed domain name to create an email address with the suffix “[…]@ratiopharm988.xyz”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant showed trademark rights in RATIOPHARM through several trademark registrations worldwide, including in Germany.
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 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 domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. […] In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The disputed domain name contains the RATIOPHARM trademark in its entirety. The mere addition of the numbers “998” does not prevent a finding of confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1, WIPO Overview 3.0.
The Complainant made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain name.
In particular, the Panel notes that the case file does not show that the Respondent would be known as “ratiopharm” respectively “ratiopharm988” or that a legitimate business would be run by the Respondent under the disputed domain name.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file which would show that the disputed domain name has been legitimately used by the Respondent or that the Respondent would have any rights or legitimate interests in the disputed domain name.
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has shown that its RATIOPHARM trademark has been registered and used since several years in many countries, before the registration of the disputed domain name.
Hence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name. See section 3.2.2, WIPO Overview 3.0.
The Panel further notes that the Respondent has registered the disputed domain name through a privacy service and has chosen to remain silent within these proceedings, which is further indication of bad faith in the present circumstances. In the present circumstances, passive holding of the disputed domain name is also an indication of bad faith. See section 3.3, WIPO Overview 3.0.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established their case under paragraph 4(a)(iii) 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, <ratiopharm988.xyz>, be transferred to the Complainant.
Theda König Horowicz
Date: January 18, 2022