WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
STADA Arzneimittel AG v. Ireneusz Bachurski
Case No. D2021-4185
1. The Parties
Complainant is STADA Arzneimittel AG, Germany, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondent is Ireneusz Bachurski, Poland.
2. The Domain Name and Registrar
The disputed domain name <stada.online> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 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 Complainant on December 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 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 Respondent of the Complaint, and the proceedings commenced on December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Response was filed with the Center on December 29, 2021. Complainant filed a Supplemental Filling on December 31, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 7, 2022. 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.
On January 26, 2022, the Panel Issued Administrative Panel Procedural Order No. 1 (“Panel Order No. 1”), requesting Respondent to provide information about any domain names that correspondent to its claimed business of registering dictionary terms, and to provide evidence of any measures it undertakes to screen its prospective domain name registrations from being identical with, or confusingly similar to, third-party brands. Respondent responded on January 28, 2022. Pursuant to Panel Order No.1, Complainant provided comments to Respondent’s response on February 1, 2022.
4. Factual Background
Complainant is a pharmaceuticals manufacturer based in Germany. It is the proprietor of over 100 trademark registrations in numerous jurisdictions for its STADA mark, including the following:
- German Trademark No. 656708 for STADA (word mark), registered on April 27, 1954 for goods in class 5;
- International Trademark No. 562225 for STADA (word mark), registered on December 7, 1990 for goods in class 5; and
- European Union Trademark No. 013236691 for STADA (word mark), registered on September 5, 2015 for goods in class 3, 5, 10, and 16, and for services in class 35, 41, and 44.
Complainant is the registrant of numerous domain names containing its STADA mark, including <stada.com> and <stada.de>.
The disputed domain name was registered on November 27, 2021. It does not resolve to an active website but is being offered for sale on a third-party site.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it has been in operation for 125 years. It sells its products in approximately 120 countries under a number of consumer brands. In 2020, Complainant had sales of about EUR 3 billion and employed over 12,000 people worldwide. It is the registrant of many domain names containing its mark STADA. Complainant owns at least 107 trademark registrations worldwide that consist of the word STADA. The disputed domain name is identical to the STADA mark.
Under the second element, Complainant states that it has never assigned, granted, licensed, sold, transferred, or in any way authorized anyone to register or use the disputed domain name or to use the STADA mark in the manner in which it has been used by Respondent. Respondent is using the disputed domain name in connection with a website offering it for sale, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent has never been known by the disputed domain name and has never acquired any rights in it.
Under the third element, Complainant states that the STADA mark is famous and/or widely known, given that it is protected by at least 107 trademark registrations in 59 jurisdictions. The registration of the STADA mark predates the registration of the disputed domain name many years. It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Respondent’s actions suggest opportunistic bad faith. The disputed domain name is being used in bad faith in connection with a website offering it for sale. Respondent appears to be a repeat cybersquatter who has registered numerous other domain names, including some that are identical or confusingly similar to well-known third-party trademarks.
Complainant requests transfer of the disputed domain name.
Respondent’s contentions may be summarized as follows:
Respondent states that it is engaged in the purchase and sale of domain names and has many registered domain names. The domain names are selected through websites that show expiring domains that are available for registration. The disputed domain name appeared on such a site and was registered along with 63 other domains names on the same date.
Respondent states that occasionally, when registering multiple domain names, among them may be those that are identical or similar to brands or trademarks. Respondent lists several of those, which are clearly well-known brands. In such cases, Respondent says it will, at the request of the right-holder or if UDRP proceedings are initiated, transfer the domain name to the right-holder. Otherwise, if Respondent notices that the domain name is identical or similar to a brand or trademark and is not contacted by the right holder, the domain name is allowed to expire and is not renewed. Respondent asserts its respect for trademark rights.
Respondent disagrees with Complainant’s characterization that he is a “repeat cybersquatter”. The “Stada” brand was not known to him. In Polish, Respondent’s native language, the word “stada” is the plural form of the word “stado” for herd or flock. The website to which the disputed domain name resolves does not contain any advertising materials, there is no page assigned to the domain, and it does not offer or advertise any goods, including competitive ones.
Respondent did not wish to act to the detriment of Complainant. The disputed domain name was registered with the intention of selling it on the Polish market to a user interested in the dictionary meaning of the word “stada”. Respondent typically places domain names for sale on four domain exchanges, but after the initiation of these proceedings, Respondent has removed the offers from foreign websites, leaving only the offer on a Polish website.
C. Complainant’s Supplemental Filing
Complainant’s supplemental filing is directed to Respondent’s claim that Complainant was unknown to it at the time of registration of the disputed domain name. The filing contains evidence that Complainant operates in Poland and maintains a website using the domain name <stadapoland.pl>. The filing notes that Respondent is a professional engaged in the business of registering domain names. Complainant states that this filing is directed at matters raised in the Response which could not reasonably have been anticipated.
D. Respondent’s Response to Panel Order No. 1
Respondent provides a list of active domain registrations which it asserts to be dictionary terms. Due to the large number of such registrations, it has selected those beginning with the letter “s”.
Respondent states that it employs the following screening measures: it verifies the meaning of domains using dictionaries and online company databases. After registering a new domain name, it verifies it with a leading domain name market, which employs an automatic screen program to suspend domain names that violate its use policies. The disputed domain name was duly verified with the domain name market, which permitted it to be listed for sale along with other domain names with the second-level domain “stada”.
E. Complainant’s Comments to Respondent’s Response
Complainant states that Respondent has not specified which, if any, of the generic domain names listed by Respondent are actually registered by Respondent. The publicly available information for the domain names provided identifies the registrant as a privacy service. Therefore, the list provided by Respondent should be disregarded. Even if Registrant is actually the registrant of some or all of the listed domain names, this does not excuse Respondent’s actions with respect to the disputed domain name.
Respondent’s procedure for verifying domain names does not constitute a screening measure, since Respondent used this program only after registering the domain names. Respondent has failed to conduct basic searches that would have disclosed Complainant’s STADA mark prior to the registration of the disputed domain name.
The Panel will consider the Parties’ submissions in connection with Panel Order No. 1 under the relevant headings in section 6.2 below.
6. Discussion and Findings
6.1 Supplemental Filing
The Panel has a duty to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”, Rules, paragraph 10(b). To this end, pursuant to paragraph 12 of the Rules, “the Panel may request, at its sole discretion, further statements or documents from either of the Parties”.
At the same time, however, pursuant to paragraph 10(c) of the Rules, “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Accordingly, unsolicited supplemental filings are generally discouraged. Exceptionally, they may be accepted to consider material new evidence or to provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.6, and cases cited thereunder.
The Panel notes that, by the time of filing of the Amendment to the Complaint, Complainant was aware that Respondent was located in Poland and that Respondent has registered numerous domains. Therefore, in the Panel’s view, the information and arguments set forth in the Supplemental Filing do not meet the standard of an “exceptional” circumstance as set forth in Section 4.6 of the WIPO Overview 3.0 and cases cited thereunder. Therefore, the Panel shall not consider it in this Decision.
6.2 Substantive Issues
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(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) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence, not contested by Respondent, establishing that it has trademark rights in the STADA mark through registrations in numerous jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.
In comparing Complainant’s STADA mark with the disputed domain name, the Panel finds that the disputed domain name is identical to it. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. See WIPO Overview 3.0, section 1.7.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”), in this case, “.online”, to a disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no rights in the STADA mark. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a risk of implied affiliation. The disputed domain name reflects Complainant’s mark in its entirety, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
The Parties are in agreement that there is no connection between them. They also agree that Respondent is not commonly known by the disputed domain name. The Panel notes Respondent’s statements that the term “stada” has a dictionary meaning in the Polish language, and Respondent’s assertion that he was unaware of Complainant’s mark.
Panels have recognized that “a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark”. Harvard Lampoon, Inc. v. Reflex Publishing Inc., WIPO Case No. D2011-0716. See also Javier Narvaez Segura, Grupo Loading Systems S.L. v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2016-1199.
According to UDRP panel precedent, it could be possible to refer such rights or legitimate interests if indeed Respondent’s business consisted of registering randomly selected dictionary terms, even if some of those terms happened to be identical to national trademarks in other countries. See, for example, Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, a case decided when national trademark registries were not widely available online.
The issue before this Panel is whether evidence before it establishes that Respondent has proved rights or legitimate interests in the disputed domain name based on its claimed dictionary meaning.
At the time of registration of the disputed domain name, the STADA mark has been registered for over 60 years, including in many jurisdictions. Complainant has been in operation for over a century, with operations and employees in many countries. The Panel has verified the prominent visibility of Complainant in Internet searches for “stada”. The Panel is not persuaded that Respondent selected “stada” simply for its attractiveness as a dictionary word. Respondent has not provided any evidence of any use of the disputed domain name based on its dictionary meaning of “flocks/herds”, such as a website providing information on same. See, for example, WIPO Overview 3.0, Section 2.10. The additional list of domain names provided by Respondent (all beginning with the letter “s” so possibly from a broader portfolio) in response to the Panel Order No.1 – which the Panel accepts as being registered by the Respondent for purposes of reaching a decision, but for which registration “ownership” status no evidence is provided – does not do much to assist the Panel in finding for Respondent on this point, since – in a list of a few hundred domain names, only a handful of which are obvious dictionary terms – there is no information available regarding the terms to which the domain names are identical.
Moreover, Respondent admits to having registered a number of other domain names identical to indisputably well-known marks – going so far as to list them in its Response even including in the material provided in response to the Panel Order No.1 and claiming that a typo of the world famous Google mark (googie) was intended as a reference to a type of architecture. This latter example, and in particular the rather incredible apparent assertion that this domain name bore no relation to the Google mark, underscores a suspicion on the part of the Panel that Respondent’s business model, which to be fair does include a number of dictionary terms, also knowingly targets domain names that correspond to third party marks – seemingly in an effort to “hide” these domain names. On balance, the Panel is not persuaded that Respondent’s domain-name registration business in general, and the registration of the disputed domain name in particular, is based solely on the dictionary value of the domain names. While the Panel is perfectly aware of and accepts the potentially/circumstantially legitimate business of buying and selling domain names, it seems difficult for the Panel to accept that some of the domain names the Respondent lists in its Response could be registered coincidentally (unless perhaps – for the sake of argument – they would be registered on such an exponential scale that some level of screening is not possible), and the fact that they are given to the brand owner (the above example notwithstanding) or allowed to expire when Respondent is questioned by the brand owner affirms this view. Therefore, the Panel does not find that Respondent’s registration of the disputed domain name for the purpose of selling it establishes rights or legitimate interests therein.
Therefore, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, Complainant must prove both registration and use in bad faith. Complainant asserts that Respondent was aware of Complainant’s registered mark due to its long and extensive use and numerous registrations. Respondent asserts that it had no such knowledge and selected the disputed domain name simply as a dictionary word and was offering it for sale on that basis.
Consistent with the approach of previous panels summarized in Section 3.2.3 of the WIPO Overview 3.0, the Panel finds that Respondent, as a professional engaged in the purchase and sale of domain names, has an affirmative duty to avoid the registration of trademark-abusive domain names. See also Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
Even inferring the record in a light most favorable to Respondent, the Panel is unable to conclude that Respondent engaged in good-faith efforts to screen its registrations. Releasing domain names to complaining right-holders, or allowing domain names identical to third-party marks to lapse, does not, in the view of the Panel, fulfill this duty; instead, it seems to show a degree of carelessness or willful blindness. The Panel finds that, while the evidence shows that the word “stada” is a dictionary term in Polish, it is also identical to Complainant’s registered mark, and Respondent provides no evidence that Complainant (headquartered in Germany and operating worldwide) and the longstanding STADA mark are obscure. Especially it is noted that Complainant has registered STADA mark in the European Union (including in Poland, where the Respondent domiciled) before the registration of disputed domain name. Respondent has not credibly shown that Complainant’s mark has a limited reputation and is not known or accessible in Respondent’s location. See WIPO Overview 3.2.2.
In considering the additional evidence provided by Respondent, the Panel does not find any real evidence of measures to prevent the registration of infringing domain names (noting too that as far as the Panel can see, and despite Respondent’s claim to “verify the names of domains, the meaning of which I do not know the details, in dictionaries and company databases available on the Internet”, they were deployed only after, not before, the registrations). Moreover, Respondent attempted to circumvent such measures. For example, Respondent provides correspondence in connection with its registration of a domain name that in the Panel’s view is clearly a deliberate misspelling of a well-known third-party mark. After the domain name was screened as a possible infringement by the online marketplace (which marketplace somewhat surprisingly disabled ads on such basis, but still allowed the domain name to be listed for sale), Respondent attempted to argue that the domain name was identical to an obscure architecture term (which, the Panel notes, Respondent misspells). Such evidence strengthens the impression that Respondent has not attempted in any meaningful way to avoid (versus curing) infringing third-party rights.
Regarding use of the disputed domain name, the Panel finds that the circumstances indicate that Respondent registered the disputed domain name and is offering it for sale for the purpose of (at least potentially) hoping to profit from Complainant’s mark. In this regard, the Panel again notes Respondent’s other dealings with domain names identical to third-party marks.
While the Panel accepts that the disputed domain name is also identical to a dictionary term, the balance of probabilities in this case indicates that Respondent invested in the disputed domain name not for its dictionary value, but for its identity to Complainant’s mark.
Accordingly, offering it for sale (without an independent right to or legitimate interest in the domain name) is probative. See WIPO Overview 3.0, Section 3.1.1.
Therefore, the Panel finds that Complainant has established the third element under paragraph 4(a) 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 <stada.online> be transferred to Complainant.
Date: February 8, 2022