WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Norgine BV v. Laksh Internet Solutions Private Limited

Case No. D2013-1283

1. The Parties

Complainant is Norgine BV of Amsterdam, Netherlands, represented by Selarl Marchais, France.

Respondent is Laksh Internet Solutions Private Limited of Mumbai, Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <movicol.com> is registered with Tirupati Domains and Hosting Private Limited (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 16, 2013. On July 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from that in the Complaint, as well as providing other details of the registration. The Center sent an email communication to Complainant on July 22, 2013 providing the registrant and contact information disclosed by the Registrar, advising Complainant that the Complaint did not conform to the word limit set out in paragraph 11 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”), and inviting Complainant to submit an amendment to the Complaint. Complainant first filed an amendment to the Complaint on July 23, 2013 and subsequently, on July 24, 2013, filed an amended Complaint.

The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint with the amendment to the Complaint and the amended Complaint, and the proceedings commenced on July 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2013.

The Center appointed Debra J. Stanek as the sole panelist in this matter on August 29, 2013. 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

Complainant is the exclusive licensee, through a license from a related company, Velinor AG, of the trademark MOVICOL for a laxative product. The MOVICOL mark has been registered in numerous jurisdictions throughout the world, including as early as 1955. Complainant also owns numerous country-specific domain names that include the MOVICOL mark.

The disputed domain name was registered in May, 2006. The disputed domain name is currently used for a website that displays links to other websites that offer competing products.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant has rights in the mark MOVICOL through its exclusive license arrangement with its affiliated company, Velinor AG, which owns the MOVICOL mark. Further, Complainant has been authorized by Velinor AG to act in its name and on its behalf to obtain the transfer of the disputed domain name.

The domain name is identical to Complainant’s highly distinctive MOVICOL mark.

A.2. Rights or Legitimate Interests

Respondent does not have any legitimate interest regarding the disputed domain name <movicol.com>.

Respondent’s name does not resemble Complainant’s mark. Complainant has not licensed or authorized Respondent to use its mark.

Respondent is not using the domain name in connection with a bona fide offering of goods or services. Instead, the website offers links to websites that offer products that compete with Complainant’s MOVICOL product or that are intended to resolve related health issues.

A.3. Registered and Used in Bad Faith

Respondent registered the disputed domain name in bad faith. The use of a domain name that corresponds exactly with Complainant’s well-known trademark cannot be a mere coincidence.

The domain name has been registered for the purpose of attracting Internet users to Respondent’s website and taking unfair advantage of Complainant’s reputation and goodwill, by creating a likelihood of confusion between Complainant’s MOVICOL trademarks and the <movicol.com>.domain name

Respondent must have been aware of the risk of deception and confusion that would arise from the registration of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Procedural Matters

The Rules define a “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. For example, paragraph 3(a) of the Rules¹ provides (emphasis added):

“Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN”.

Therefore, in the Panel’s view, the original Complaint correctly named PrivacyProtect.org, an identity shield service, as Respondent. It was only after this proceeding was initiated that the registrar identified “Laksh Internet Solutions Private Limited” as the registrant. Complainant thereafter amended its Complaint to substitute that entity as Respondent.

Notwithstanding the Panel’s conclusion that the Complaint as originally brought was proper, for purposes of this decision, the Panel treats only “Laksh Internet Solutions Private Limited” as Respondent.

B. Substantive Matters

In order to prevail, a complainant has the burden of showing, as to a disputed domain name, that:

(i) It is identical or confusingly similar to a mark in which the complainant has rights.

(ii) The respondent has no rights or legitimate interests in respect to it.

(iii) It has been registered and is being used in bad faith.

The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see paragraph 4(c) of the Policy, as well as circumstances that may evidence a respondent’s bad faith registration and use, see paragraph 4(b) if the Policy.

Although Respondent has not filed a response to the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. Rules, paragraph 14(b).

1. Identical or Confusingly Similar

Complainant has established its rights in the mark MOVICOL by virtue of the evidence of its exclusive license arrangement² and of the trademark registrations for the MOVICOL mark.

The disputed domain name is identical to Complainant’s mark (the presence or absence of spaces and the addition of the generic Top-Level Domain “.com” is not relevant for purposes of this comparison).

The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.

2. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent).

Paragraph 4(c) of the Policy sets out the following examples:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel concludes that Complainant has made a prima facie showing that none of the three examples set forth in Paragraph 4(c) of the Policy are applicable here.

There is no reason to believe, from the WhoIs record or otherwise, that Respondent is or could be known by the disputed domain name. Nor does it appear that Respondent is making a legitimate noncommercial or fair use of the domain name. Copies of the web page used with the domain name appear to be a generic page that presumably generates “click through” revenue for the Registrar or Respondent or both. The web page contains links that direct the visitor to other websites that offer products that compete with Complainant’s MOVICOL products.

The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.

3. Registered and Used in Bad Faith

A complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).

(3) Registering the domain name primarily to disrupt the business of competitor (see Policy, paragraph 4(b)(iii)).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [respondent’s] website or location, (see Policy, paragraph 4(b)(iv)).

Complainant’s rights in its mark long predate the registration of the disputed domain name.

Under these circumstances, including the adverse inferences drawn by Respondent’s failure to respond, and its use of an identity shield, the Panel finds that Complainant has established that Respondent registered and is using the disputed domain name in bad faith.

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 <movicol.com> be transferred to Complainant.

Debra J. Stanek
Sole Panelist
Date: September 12, 2013

¹ In contrast, paragraph 4(c) of the Rules, entitled “Notification” of Complaint refers instead to the “commencement” of the proceedings.

² Consistent with the consensus view, the Panel finds that Complainant’s status as exclusive licensee of the MOVICOL mark gives it rights in the mark for these purposes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8.