WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emcur Gesundheitsmittel aus Bad Ems GmbH v. M.J. Roeleveld
Case No. DNL2017-0028
1. The Parties
Complainant is Emcur Gesundheitsmittel aus Bad Ems GmbH of Bad Ems, Germany, represented by Boehmert & Boehmert, Germany.
Respondent is M.J. Roeleveld of Ede, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <rhinicur.nl> (hereinafter: the "Domain Name") is registered with SIDN through RootNet NOC B.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2017. On May 17, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On May 18, 2017, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the "Regulations").
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 23, 2017. In accordance with the Regulations, article 7.1, the due date for Response was June 12, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 14, 2017.
The Center appointed Gregor Vos as the panelist in this matter on June 16, 2017. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant is a pharmaceutical company and the owner of the following European Union ("EU") trademark (hereinafter: the "Trademark"):
- EU trademark Registration No. 007373202 for RHINICUR, registered on June 9, 2009.
With this trademark, Complainant can claim seniority of April 2, 2003 in the Belgium, Denmark, Finland, Germany, Greece, Luxemburg, Netherlands, Spain, Sweden, United Kingdom of Great Britain and Northern Ireland and of February 14, 2003 in France.
In addition, Complainant owns the domain name <rhinicur.com>. .
The Domain Name was registered by Respondent on October 8, 2007. At the time of filing of the Complaint, the Domain Name resolved to a website offering Complainant's products and furthermore containing links to the Respondent's own website: "www.gezondheidaanhuis.nl", where it offers for sale pharmaceutical products.
5. Parties' Contentions
Complainant is a manufacturer of medical products. Complainant asserts that one of its most important product lines consists of what is called a "nose shower" and the complementary salt required to produce the saline solution for the proper application of the nose shower. This nose shower product line – along with a number of other throat and nose related products – is distributed under the trademark RHINICUR.
Complainant asserts that the Domain Name is identical to the Trademark as the Domain Name reproduces the Trademark in its entirety.
In addition, Complainant submits that Respondent does not hold any rights or legitimate interests with respect to the Domain Name. According to Complainant, Respondent is the owner and founder of Gezondheid aan huis B.V., an online pharmacy distributing pharmaceutical products on its website "www.gezondheidaanhuis.nl". Complainant states that it has no business relationship with Respondent and that it has never granted Respondent the right to use the Trademark and/or to register the Domain Name.
Complainant furthermore states that the website to which the Domain Name resolves (hereinafter: the "Website"), shows the Trademark and Complainant's official logo. The Website also shows the following statement, translated into English as: "Below products can be delivered directly from our storage". The Website does not clarify the (non-existing) relationship between Respondent and Complainant. Complainant submits that the prominent presentation of its logo, combined with the statement "Below products can be delivered directly from our storage" suggest that Complainant is responsible for the Website or at least commercially connected to the website provider.
When clicking on one of the products offered on the Website, the user is redirected to the respective product offered on the website "www.gezondaanhuis.nl". Complainant asserts that Respondent provides corresponding websites for other pharmaceutical products, which are listed at the bottom of the Website. Most of these websites have a domain name incorporating the respective third party trademark. Complainant states that the various websites operated by Respondent all falsely suggest a commercial relationship with the respective pharmaceutical manufacturer. According to Complainant, this clearly shows that Respondent intends to deceive Internet users with regard to the commercial origin of the Website and the products offered thereon.
Finally, Complainant states that Respondent has registered and uses the Domain Name in bad faith. According to Complainant, Respondent has used the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its website, by creating likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the Website.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or another name by means of article 2.1(a) under II of the Regulations; and
b. the respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
Only if all three elements are fulfilled, the Panel is able to grant the remedies requested by Complainant.
Article 10.3 of the Regulations provides that in the event a respondent fails to submit a response, the complaint shall be granted unless the panel considers it to be without basis in law or in fact. The Panel thereby notes that this does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether Complainant's prima facie case meets the requirements of article 2.1 of the Regulations.
A. Identical or Confusingly Similar
The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name to assess whether the trademark is recognizable within the domain name. It is well established that the country code Top-Level Domain ("ccTLD") ".nl" may be disregarded under this test, as it is a technical requirement of registration (e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
A comparison between the Trademark and the Domain Name shows that the Domain Name is identical to the Trademark. The Domain Name, <rhinicur.nl>, incorporates the RHINICUR trademark in its entirety. Many decisions under the Regulations have found that a domain name is confusingly similar to a complainant's trademark where the domain name incorporates the trademark in its entirety.
Consequently, the Panel finds that the Domain Name and the Trademarks are identical in the sense of article 2.1(a) of the Regulations.
B. Rights or Legitimate Interests
Under the Regulations, a complainant bears the burden of proof of showing that a respondent has no rights or legitimate interests in the Domain Name. If a complainant succeeds in making a prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Article 3.1 of the Regulations provides circumstances in which such rights or legitimate interests to the domain name may be demonstrated. These circumstances include (a) use of the domain name in connection with a bona fide offering of goods or services; (b) being commonly known by the domain name; and (c) making legitimate noncommercial or fair use of the domain name.
Complainant has asserted that Respondent has not met these circumstances. Complainant has stated that Respondent was not authorized or licensed to use the Trademark. Furthermore, Complainant has submitted evidence that the Domain Name resolves to a website that displays the Trademark and furthermore provides links to a different Respondent-owned website on which various pharmaceutical products including products from other brands are offered for sale. Complainant has also shown that Respondent is engaging in a pattern of registering domain names corresponding to marks held by third parties.
The Panel finds that these circumstances indicate that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the Domain Name, but instead indicate that Respondent is taking advantage of the Trademark for its own commercial purposes when it diverted traffic by creating confusion with the Trademark. In this regard, the Panel further notes that Respondent's use of the Domain Name fails to meet the applicable so-called Oki Data criteria (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).1
The Panel finds that Complainant's prima facie case is sufficiently established. The burden of production therefore shifts to Respondent.
Respondent has not refuted the assertions by Complainantand the Panel holds that Respondent has no rights or legitimate interests in the Domain Name in the sense of article 2.1(b) of the Regulations.
C. Registered or Used in Bad Faith
Complainant must establish that Respondent registered and is using the Domain Name in bad faith. Paragraph 3.2 of the Regulations provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that Respondent must have been aware of the Trademark given the fact that it is using the Trademark and Complainant's official logo on the Website and is selling pharmaceutical products. It is clear that Respondent's intention for registering the Domain Name has been to use it for commercial gain, both through direct sales of Complainant's products and through the sale of other pharmaceutical products linked to the Website.
The Panel finds that these circumstances show that Respondent registered and has used the Domain Name in order to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
Consequently, the Panel holds that the Domain Name was registered and used in bad faith in the sense of article 2.1(c) of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <rhinicur.nl> be transferred to Complainant.
Date: July 10, 2017
1 While the Complaint is brought under the Regulations and not the Uniform Domain Name Dispute Resolution ("UDRP"), given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings and will refer to it where applicable.