Case number | CAC-UDRP-101293 |
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Time of filing | 2016-09-16 14:58:36 |
Domain names | mobic.website, mobic.press, mobic.club, mobic.tech, mobic.host |
Case administrator
Name | Aneta Jelenová (Case admin) |
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Complainant
Organization | BOEHRINGER INGELHEIM INTERNATIONAL GMBH |
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Complainant representative
Organization | Nameshield (Maxime Benoist) |
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Respondent
Name | Albert Sadykov |
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Other Legal Proceedings
None of which the Panel is aware.
Identification Of Rights
The Complainant has submitted, and supported by evidence that the Panel accepts, that it is the owner of the international trademark MOBIC n°563599 registered on November 28th, 1990 and that the trademark MOBIC has also been registered in the TradeMark Clearing House (TMCH) since April 16th, 2014.
Factual Background
The Complainant ("Boehringer") is a family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein. Ever since, Boehringer has become a global research-driven pharmaceutical enterprise which today has about 140 affiliated companies world-wide with roughly 46,000 employees. The two main business areas of Boehringer are: Human Pharmaceuticals and Animal Health. In 2013 alone, net sales of the Boehringer group amounted to about EUR 14.1 billion.
The Complainant is the owner of the international trademark MOBIC n°563599 registered on November 28th, 1990. The trademark MOBIC has also been registered in the TradeMark ClearingHouse (TMCH) since April 16th, 2014.
MOBIC (generic name: meloxicam) is a prescribed nonsteroidal anti-inflammatory drug (NSAID). It works by reducing hormones that cause inflammation and pain in the body. It is used to treat pain or inflammation caused by osteoarthritis or rheumatoid arthritis in adults and children.
The disputed domain names <mobic.website>, <mobic.press>, <mobic.club>, <mobic.tech>, <mobic.host> (hereinafter the “Disputed Domain Names”) were registered on August 21st, 2016. According to the WHOIS data base of the concerned registrar, NameCheap, Inc., the Respondent Albert Sadykov is the registrant and the administrative contact of each of the Disputed Domain Names.
The Disputed Domain Names <mobic.website>, <mobic.press> and <mobic.club> have pointed to inactive website since their registration and the two other disputed domain names, <mobic.tech> and <mobic.host>, resolve to websites linking online drugstores of MOBIC’s pharmaceutical drugs, which offer them without prescription or authorization. These sponsored web links redirect to online drugstores and offer drugs of Complainant’s competitors for sale.
On August 30th, 2016, a cease-and-desist letter was sent by the Complainant’s agent to the Respondent inviting it to justify the registration of the Disputed Domain Names. The Respondent did not reply to this cease-and-desist letter.
The Complainant is the owner of the international trademark MOBIC n°563599 registered on November 28th, 1990. The trademark MOBIC has also been registered in the TradeMark ClearingHouse (TMCH) since April 16th, 2014.
MOBIC (generic name: meloxicam) is a prescribed nonsteroidal anti-inflammatory drug (NSAID). It works by reducing hormones that cause inflammation and pain in the body. It is used to treat pain or inflammation caused by osteoarthritis or rheumatoid arthritis in adults and children.
The disputed domain names <mobic.website>, <mobic.press>, <mobic.club>, <mobic.tech>, <mobic.host> (hereinafter the “Disputed Domain Names”) were registered on August 21st, 2016. According to the WHOIS data base of the concerned registrar, NameCheap, Inc., the Respondent Albert Sadykov is the registrant and the administrative contact of each of the Disputed Domain Names.
The Disputed Domain Names <mobic.website>, <mobic.press> and <mobic.club> have pointed to inactive website since their registration and the two other disputed domain names, <mobic.tech> and <mobic.host>, resolve to websites linking online drugstores of MOBIC’s pharmaceutical drugs, which offer them without prescription or authorization. These sponsored web links redirect to online drugstores and offer drugs of Complainant’s competitors for sale.
On August 30th, 2016, a cease-and-desist letter was sent by the Complainant’s agent to the Respondent inviting it to justify the registration of the Disputed Domain Names. The Respondent did not reply to this cease-and-desist letter.
Parties Contentions
PARTIES' CONTENTIONS:
A. COMPLAINANT:
The Complainant is a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies world-wide.
The Complainant is the owner of the international trademark MOBIC n°563599 registered on November 28th, 1990. The trademark MOBIC® has also been registered in the TradeMark Clearing House (TMCH) since April 16th, 2014.
The MOBIC trademark designates the Complainant’s drug Mobic (generic name: meloxicam) which is a prescribed nonsteroidal anti-inflammatory drug (NSAID). It works by reducing hormones that cause inflammation and pain in the body. It is used to treat pain or inflammation caused by osteoarthritis or rheumatoid arthritis in adults and children.
The disputed domain names <mobic.website>, <mobic.press> <mobic.club>, <mobic.tech>, <mobic.host> (hereinafter the “Disputed Domain Names”) were registered on August 21st, 2016, by the Respondent, who is the current domain name holder of each of the Disputed Domain Names.
On August 30th of 2016, a cease-and-desist letter was sent to the Respondent by the Complainant’s agent inviting the Respondent to justify the registration of the Disputed Domain Names. The Respondent did not provide any response to this cease-and-desist letter.
Each of the Disputed Domain Names is identical to the MOBIC trademark, because each domain name contains the entirety of the trademark and a gTLD.
The Complainant submits that a domain name that wholly incorporates a Complainant’s registered trademark is sufficient to establish confusing similarity for purposes of the UDRP.
The Complainant also submits that the addition of the new gTLD suffixes “.website”, “.press”, “.club”, “.tech”, “.host” is not sufficient to avoid a finding that the Disputed Domain Names are identical to the Complainant's trademarks and does not change the overall impression of the designation as being connected to its trademark.
Accordingly, the inclusion of the TLD in each of the Disputed Domain Names is not relevant when determining if the domain name is identical or confusingly similar to a Complainant’s trademark.
Moreover, the term MOBIC is a fanciful term, only known in relation to the Complainant. It has no meaning whatsoever in English, French or in any other language.
Thus, each of the Disputed Domain Names is identical to the Complainant’s trademark.
The Respondent does not have any rights or legitimate interests in the domain names.
The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made out, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain names. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.
In support of making its prima facie case, the Complainant contends that the Respondent is not commonly known by the domain names as, according to the WHOIS information of the concerned registrar, the registrant and administrative contact of each of the Disputed Domain Names is Albert Sadykov.
Nor does the Complainant carry out any activity for, or have any business with, the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant's trademark, or apply for registration of the Disputed Domain Names by the Respondent.
The disputed domain names <mobic.website>, <mobic.press> and <mobic.club> have pointed to inactive websites since their registration and the two other disputed domain names, <mobic.tech> and <mobic.host> resolve to websites linking online drugstores of MOBIC’s pharmaceutical drugs, which offer them without prescription or authorization. These sponsored web links redirect to online drugstores and offer drugs of Complainant’s competitors for sale.
The Complainant contends that these considerations demonstrate a lack of rights or legitimate interests in respect of the domain names.
The Complainant also contends that the Respondent has not developed a legitimate use in respect of the domain names.
The Respondent’s websites also offer for sale MOBIC products and other pharmaceutical products, and so are attracting Internet users by taking advantage of the fame of the Complainant’s trademark in order to offer a wide range of competitive products. The Respondent also increases the confusion by the lack of displaying any disclaimer or indication of the MOBIC’s product owner being the Complainant.
The foregoing behaviour shows that the Respondent is using the domain names only to divert consumers to its websites. Respondent cannot plausibly argue that it did not intentionally use these website presentations in order to benefit from the goodwill of the MOBIC mark.
Thus, the Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain names, and has registered and used the domain names only in order to create a likelihood of confusion with the Complainant’s trademarks.
The domain names have been registered and are being used in bad faith.
The Disputed Domain Names are identical with the Complainant's registered trademark MOBIC, also registered in the TradeMark Clearing House (TMCH) since April 16th, 2014, which are used to designate the Complainant’s drug MOBIC which is a prescribed drug used to treat pain or inflammation caused by osteoarthritis or rheumatoid arthritis in adults and children.
Furthermore, the following Disputed Domain Names, <mobic.website>, <mobic.press> and <mobic.club> point to an inactive website, further showing bad faith use.
By registering and using these domain names, it seems clear that the Respondent has maintained the domain names in order to prevent the Complainant from registering its MOBIC trademark as a domain name in the respective extensions.
The two others disputed domain names, <mobic.tech> and <mobic.host> resolve to websites that link online drugstores purporting to offer the Complainant’s MOBIC pharmaceutical drugs of the Complainant, without any authorization.
It is inconceivable that the Respondent was not aware of the trademark MOBIC when it registered the Disputed Domain Names, because the aim of the registration was clearly to use them to offer MOBIC drugs for sale by redirection of internet hits to external unofficial drugstores.
The Complainant also contends that the Respondent deliberately sought to use the Complainant’s trademark goodwill to attract Internet users seeking the Complainant’s MOBIC products.
Moreover, the Respondent has registered and used the Disputed Domain Names in order to deceive Internet users seeking the Complainant’s product, in order to generate revenue from redirecting internet consumers to unofficial drugstores selling unrelated or competing pharmaceutical products. This constitutes bad faith registration and use within the meaning of the Policy.
There is also evidence of bad faith use. Respondent is using the disputed domain names in order to redirect Internet traffic to for-profit on-line drugstores that sell unauthorized products linked and in competition with those of the Complainant.
Thus, the Complainant contends that the Respondent has registered the disputed domain names and is using them in bad faith.
B.RESPONDENT: The Respondent did not reply to the Complainant's contentions and is in default.
The Panel notes the observations in the recent decision in similar circumstances in Case No 100053, Enterprise Rent-a-Car Company v. Blupea c/o Janepanas, Sirinarin and will therefore decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules. It is also noted in that decision that it was said in Enterprise Rent-A-Car Company v. Marco Costa, NAF case No. 908572, that “the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory”. The Panel will therefore proceed along those lines.
A. COMPLAINANT:
The Complainant is a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies world-wide.
The Complainant is the owner of the international trademark MOBIC n°563599 registered on November 28th, 1990. The trademark MOBIC® has also been registered in the TradeMark Clearing House (TMCH) since April 16th, 2014.
The MOBIC trademark designates the Complainant’s drug Mobic (generic name: meloxicam) which is a prescribed nonsteroidal anti-inflammatory drug (NSAID). It works by reducing hormones that cause inflammation and pain in the body. It is used to treat pain or inflammation caused by osteoarthritis or rheumatoid arthritis in adults and children.
The disputed domain names <mobic.website>, <mobic.press> <mobic.club>, <mobic.tech>, <mobic.host> (hereinafter the “Disputed Domain Names”) were registered on August 21st, 2016, by the Respondent, who is the current domain name holder of each of the Disputed Domain Names.
On August 30th of 2016, a cease-and-desist letter was sent to the Respondent by the Complainant’s agent inviting the Respondent to justify the registration of the Disputed Domain Names. The Respondent did not provide any response to this cease-and-desist letter.
Each of the Disputed Domain Names is identical to the MOBIC trademark, because each domain name contains the entirety of the trademark and a gTLD.
The Complainant submits that a domain name that wholly incorporates a Complainant’s registered trademark is sufficient to establish confusing similarity for purposes of the UDRP.
The Complainant also submits that the addition of the new gTLD suffixes “.website”, “.press”, “.club”, “.tech”, “.host” is not sufficient to avoid a finding that the Disputed Domain Names are identical to the Complainant's trademarks and does not change the overall impression of the designation as being connected to its trademark.
Accordingly, the inclusion of the TLD in each of the Disputed Domain Names is not relevant when determining if the domain name is identical or confusingly similar to a Complainant’s trademark.
Moreover, the term MOBIC is a fanciful term, only known in relation to the Complainant. It has no meaning whatsoever in English, French or in any other language.
Thus, each of the Disputed Domain Names is identical to the Complainant’s trademark.
The Respondent does not have any rights or legitimate interests in the domain names.
The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made out, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain names. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.
In support of making its prima facie case, the Complainant contends that the Respondent is not commonly known by the domain names as, according to the WHOIS information of the concerned registrar, the registrant and administrative contact of each of the Disputed Domain Names is Albert Sadykov.
Nor does the Complainant carry out any activity for, or have any business with, the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant's trademark, or apply for registration of the Disputed Domain Names by the Respondent.
The disputed domain names <mobic.website>, <mobic.press> and <mobic.club> have pointed to inactive websites since their registration and the two other disputed domain names, <mobic.tech> and <mobic.host> resolve to websites linking online drugstores of MOBIC’s pharmaceutical drugs, which offer them without prescription or authorization. These sponsored web links redirect to online drugstores and offer drugs of Complainant’s competitors for sale.
The Complainant contends that these considerations demonstrate a lack of rights or legitimate interests in respect of the domain names.
The Complainant also contends that the Respondent has not developed a legitimate use in respect of the domain names.
The Respondent’s websites also offer for sale MOBIC products and other pharmaceutical products, and so are attracting Internet users by taking advantage of the fame of the Complainant’s trademark in order to offer a wide range of competitive products. The Respondent also increases the confusion by the lack of displaying any disclaimer or indication of the MOBIC’s product owner being the Complainant.
The foregoing behaviour shows that the Respondent is using the domain names only to divert consumers to its websites. Respondent cannot plausibly argue that it did not intentionally use these website presentations in order to benefit from the goodwill of the MOBIC mark.
Thus, the Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain names, and has registered and used the domain names only in order to create a likelihood of confusion with the Complainant’s trademarks.
The domain names have been registered and are being used in bad faith.
The Disputed Domain Names are identical with the Complainant's registered trademark MOBIC, also registered in the TradeMark Clearing House (TMCH) since April 16th, 2014, which are used to designate the Complainant’s drug MOBIC which is a prescribed drug used to treat pain or inflammation caused by osteoarthritis or rheumatoid arthritis in adults and children.
Furthermore, the following Disputed Domain Names, <mobic.website>, <mobic.press> and <mobic.club> point to an inactive website, further showing bad faith use.
By registering and using these domain names, it seems clear that the Respondent has maintained the domain names in order to prevent the Complainant from registering its MOBIC trademark as a domain name in the respective extensions.
The two others disputed domain names, <mobic.tech> and <mobic.host> resolve to websites that link online drugstores purporting to offer the Complainant’s MOBIC pharmaceutical drugs of the Complainant, without any authorization.
It is inconceivable that the Respondent was not aware of the trademark MOBIC when it registered the Disputed Domain Names, because the aim of the registration was clearly to use them to offer MOBIC drugs for sale by redirection of internet hits to external unofficial drugstores.
The Complainant also contends that the Respondent deliberately sought to use the Complainant’s trademark goodwill to attract Internet users seeking the Complainant’s MOBIC products.
Moreover, the Respondent has registered and used the Disputed Domain Names in order to deceive Internet users seeking the Complainant’s product, in order to generate revenue from redirecting internet consumers to unofficial drugstores selling unrelated or competing pharmaceutical products. This constitutes bad faith registration and use within the meaning of the Policy.
There is also evidence of bad faith use. Respondent is using the disputed domain names in order to redirect Internet traffic to for-profit on-line drugstores that sell unauthorized products linked and in competition with those of the Complainant.
Thus, the Complainant contends that the Respondent has registered the disputed domain names and is using them in bad faith.
B.RESPONDENT: The Respondent did not reply to the Complainant's contentions and is in default.
The Panel notes the observations in the recent decision in similar circumstances in Case No 100053, Enterprise Rent-a-Car Company v. Blupea c/o Janepanas, Sirinarin and will therefore decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules. It is also noted in that decision that it was said in Enterprise Rent-A-Car Company v. Marco Costa, NAF case No. 908572, that “the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory”. The Panel will therefore proceed along those lines.
Rights
The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
No Rights or Legitimate Interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).
Bad Faith
The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
DISCUSSION AND FINDINGS
This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers ( “ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.
A. Administrative deficiency.
By notification dated September 16, 2016, and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that the concerned Registrar has revealed a different identification of the domain name holder than originally stated in the Complaint and also added its fax number, drawing the Complainant's attention to the Registrar Verification enclosed in the previously published nonstandard communication.
On September 16, 2016, the Complainant filed an Amended Complaint and the CAC determined that in view of the amendments so made, the Complaint should be forwarded to the Respondent.
The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.
B. Substantive matters
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the onus is on the complainant to make out its case and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant has adduced evidence that the Panel accepts that it is the registered owner of the MOBIC trademark and as such has rights in the mark.
The Panel next finds that the disputed domain names <mobic.website>, <mobic.press>, <mobic.club>, <mobic.tech> and <mobic.host> (hereinafter the “Disputed Domain Names”) are confusingly similar to the MOBIC trademark for the following reasons.
First, the domain names in each case consist of the entirety of the MOBIC trademark to which has been added in each case one of the new generic top level domains. It has long been established that the incorporation of a trademark in a domain name is sufficient to show that the domain name is identical or confusingly similar to the trademark. The decisions cited by the Complainant are consistent with that position, namely:
- WIPO case no. DCO2014-0023 Boursorama S.A. v. Daven Mejon ;
- WIPO Case No. D2000-0503 Uniroyal Engineered Products, Inc. v. Nauga Network Services ;
- WIPO Case No. D2002-0358, Thaigem Global Marketing Limited v. Sanchai Aree ; and
- WIPO Case No. D2007-1629, F. Hoffmann-La Roche AG v. Relish Entreprises.
In this regard it has long been held by UDRP panels, as the Complainant submits, that generic top level domains which are part of the domain names, are not taken into account for the purposes of the present analysis and cannot negate identity or confusing similarity that is otherwise present, as it is in the present case. That is so because the domain names are virtual copies of the Complainant's trademark.
Accordingly, the domain names are identical to the Complainant’s trademarks and the Complainant has thus shown the first of the three elements that it must establish.
RIGHTS OR LEGITIMATE INTERESTS
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
By virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] 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 [respondent] (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 [respondent] 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.
Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the Disputed Domain Names, the complainant will have failed to discharge its onus and the complaint will fail.
However, It is also well-established that initially a complainant is required only to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names and that when such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent cannot do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP: see See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the UDRP before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The first step, therefore, is to see if the Complainant has made out a prima facie case.
The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in any of the domain names. That prima facie case is made out from the following considerations.
First, the Respondent chose for each of the disputed domain names, without the Complainant’s authorization, the Complainant’s well-known trademark MOBIC which it had registered as an international trademark on November 28th, 1990 and which was had also been registered in the TradeMark Clearing House (TMCH) since April 16th, 2014. Moreover, the trademark is very clearly a fanciful name and one of prominence, so there can be doubt but that, when the Respondent misappropriated the Complainant's trademark, it knew exactly what it was doing and that it intended to copy the Complainant's trademark. Moreover, when the Respondent did this five times, as it did, there is no room for any conclusion other than that the Respondent intended to and did misappropriate the Complainant's trademark, knowing that it was prominent as a mark describing an important drug manufactured by the Complainant.
Secondly, the evidence shows that the Respondent is not associated with a business enterprise or a trademark in the name MOBIC or anything similar; the Respondent is not in any way related to the Complainant’s business, is not one of its agents and does not carry out any activity for or have any business with it.
Thirdly, the Complainant contends that the Respondent is not commonly known by the domain names. The Panel accepts this argument, as, according to the WHOIS information of the concerned registrar, the registrant and administrative contact of each of the Disputed Domain Names is Albert Sadykov and there is no evidence submitted by the Respondent to show that the Respondent is known by the domain name or any similar name.
Moreover, the Complainant has never given any authorization to the Respondent or any other entity to use its trademark in a domain name or in any other way, nor apply for registration of the domain names in issue.
Finally, if there were any doubt as to whether the Complainant had made out a prima facie case, that doubt evaporates when it is known, as it is by the evidence submitted by the Complainant , that the disputed domain names <mobic.website>, <mobic.press> and <mobic.club> have pointed to inactive website since their registration and the two other disputed domain names, <mobic.tech> and <mobic.host> resolve to websites linking online drugstores of MOBIC’s pharmaceutical drugs, which offer them without prescription or authorization. These sponsored web links redirect to online drugstores and offer drugs of Complainant’s competitors for sale.
The Panel has examined the manner in which the domain names resolve and finds that the Complainant's description is correct. With respect to the domain names that resolve to competing websites, they are particularly brazen abuses of the Complainant's trademarks, as not only have they misappropriated the Complainant's intellectual property, but they are being used to tempt unsuspecting and vulnerable internet users into taking the enormous risk of buying unproven and possibly dangerous drugs, without prescription and under the pretence that they are the equivalent of the Complainant's verified and trademarked products. This is the reason why panellists have expressed the view that this type of use of a well known and respected trademark in a domain name is a particularly egregious act, involving as it does, putting the health of unsuspecting users at great risk. In the present context it is inconceivable that such conduct could give rise to a right or legitimate interest in a domain name.
The same can also be said of the domain names that lead to inactive websites, as although they do not actively tempt internet users to buy competing and possibly dangerous drugs, they are part of the Respondent's modus operandi and their status is coloured by the active use to which the Respondent has put the other two domain names. Moreover, as the Complainant submits, it has been recognized in prior decisions that inactive use does not prevent the finding of a lack of rights or legitimate interests in the subject domain name; see - Boeing Co. v. Bressi, WIPO Case No. D2000-1164, and
LFP, Inc. v. B & J Props, NAF case No. FA109697.There is also no doubt in the mind of the Panel that, if not stopped, the Respondent will soon be putting the three inactive domain names to the same unprincipled use as it has already put the other two domain names.
These considerations all point in the one direction and show that the Complainant has clearly made out its prima facie case.
The Respondent has not filed a Response or made any other answer to the claims of the Complainant and is in default.
Accordingly, the prima facie case has not been rebutted and the Complainant has made out the second of the three elements that it must establish.
BAD FAITH REGISTRATION AND USE
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances specified are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that the Complainant has shown that the Respondent registered and used the disputed domain names in bad faith both in general and in particular because the Respondent’s conduct puts the case squarely within paragraph 4(b) (iv) of the Policy and probably within other provisions of paragraph 4 (b) as well. That is so for the following reasons.
Because of the fame and strong reputation of the MOBIC trademark and the products to which it clearly relates, the Respondent must have been actually aware of the existence of the Complainant its trademark and its good reputation when it, the Respondent, registered the Disputed Domain Names. As the Complainant submits, it is inconceivable that the Respondent did not know of the Complainant's trademark or that it related to drugs that the Respondent then sought to sell, either under that name or as purported generic or competing equivalents.
The Panel accepts the Complainant’s submission, and it is the only conclusion that can be reached on the evidence, that the Respondent chose the Complainant's MOBIC mark as the basis of its domain names, so that in registering the domain names deceptively and without any authority to do so, it intended to create the likelihood of confusion between, on the one hand, the Complainant's trademark and its well known products and, on the other hand, the dubious alternatives that it then set about promoting, with the intention of attracting current and potential customers of the Complainant looking for its products and inducing them to believe that the products bought over the internet were the same as or the equivalent to those of the Complainant. It is also apparent that the Respondent would not be doing this for altruistic reasons but to make money, either by click-through fees or by some other means. This shows clearly that the Respondent registered the Disputed Domain Names in bad faith.
It should also be said at this point that the above conclusion apply equally, for the reasons given above, both to the domain names that resolve to active websites and those that do not, as they are all part of the modus operandi on the Respondent.
As to the issue of use in bad faith, the evidence is that two of the domain names are pointing to websites that promote allegedly equivalent drugs if not the Complainant's own drugs which must be assumed to be done to earn illegal revenue. That clearly constitutes bad faith use of the domain names.
As has been indicted above, the matter is made worse by the highly dangerous activity in which the Respondent has been engaged and the danger of promoting untested and potentially dangerous drugs.
As has also been indicated above, the same conclusion must be reached with respect to the domain names pointing to inactive websites as the intention of the Respondent is equally clear with respect to those domain names.
These facts bring the case squarely, with respect to all of the domain names, within paragraph 4(b)(iv) of the Policy, i.e. “by using the domain name, ( the Respondent) [...] intentionally attempted to attract, for commercial gain, Internet users to (its) web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of (its) web site or location or of a product or service on (its) web site or location”.
As the Complainant submits, such conduct has been held by previous UDRP panels, particularly those dealing with links to online pharmacies selling drugs, to constitute bad faith use, as is seen in cases such as F. Hoffman-La Roche AG v. Maniamin James, WIPO Case No. D2012-2312, where the panel observed that it is “bad faith use to misdirect consumers to online pharmacy supplying a generic version of Complainant’s drug”.
For reasons of completeness, the Panel also finds that the conduct of the Respondent also brings the case within two other provisions of Paragraph 4(b) of the Policy, namely : (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; and (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;[...]".
It should also be noted that the conduct of the Respondent constitutes bad faith registration and use not only because of the precise criteria set out in the Policy. That is so because in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <mobic.website>, <mobic.press>, <mobic.club>, <mobic.tech> and <mobic.host> domain names using the MOBIC mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Accordingly, the Complainant has shown the third of the three elements that it must establish.
This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers ( “ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.
A. Administrative deficiency.
By notification dated September 16, 2016, and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that the concerned Registrar has revealed a different identification of the domain name holder than originally stated in the Complaint and also added its fax number, drawing the Complainant's attention to the Registrar Verification enclosed in the previously published nonstandard communication.
On September 16, 2016, the Complainant filed an Amended Complaint and the CAC determined that in view of the amendments so made, the Complaint should be forwarded to the Respondent.
The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.
B. Substantive matters
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the onus is on the complainant to make out its case and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant has adduced evidence that the Panel accepts that it is the registered owner of the MOBIC trademark and as such has rights in the mark.
The Panel next finds that the disputed domain names <mobic.website>, <mobic.press>, <mobic.club>, <mobic.tech> and <mobic.host> (hereinafter the “Disputed Domain Names”) are confusingly similar to the MOBIC trademark for the following reasons.
First, the domain names in each case consist of the entirety of the MOBIC trademark to which has been added in each case one of the new generic top level domains. It has long been established that the incorporation of a trademark in a domain name is sufficient to show that the domain name is identical or confusingly similar to the trademark. The decisions cited by the Complainant are consistent with that position, namely:
- WIPO case no. DCO2014-0023 Boursorama S.A. v. Daven Mejon ;
- WIPO Case No. D2000-0503 Uniroyal Engineered Products, Inc. v. Nauga Network Services ;
- WIPO Case No. D2002-0358, Thaigem Global Marketing Limited v. Sanchai Aree ; and
- WIPO Case No. D2007-1629, F. Hoffmann-La Roche AG v. Relish Entreprises.
In this regard it has long been held by UDRP panels, as the Complainant submits, that generic top level domains which are part of the domain names, are not taken into account for the purposes of the present analysis and cannot negate identity or confusing similarity that is otherwise present, as it is in the present case. That is so because the domain names are virtual copies of the Complainant's trademark.
Accordingly, the domain names are identical to the Complainant’s trademarks and the Complainant has thus shown the first of the three elements that it must establish.
RIGHTS OR LEGITIMATE INTERESTS
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
By virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] 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 [respondent] (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 [respondent] 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.
Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the Disputed Domain Names, the complainant will have failed to discharge its onus and the complaint will fail.
However, It is also well-established that initially a complainant is required only to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names and that when such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent cannot do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP: see See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the UDRP before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The first step, therefore, is to see if the Complainant has made out a prima facie case.
The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in any of the domain names. That prima facie case is made out from the following considerations.
First, the Respondent chose for each of the disputed domain names, without the Complainant’s authorization, the Complainant’s well-known trademark MOBIC which it had registered as an international trademark on November 28th, 1990 and which was had also been registered in the TradeMark Clearing House (TMCH) since April 16th, 2014. Moreover, the trademark is very clearly a fanciful name and one of prominence, so there can be doubt but that, when the Respondent misappropriated the Complainant's trademark, it knew exactly what it was doing and that it intended to copy the Complainant's trademark. Moreover, when the Respondent did this five times, as it did, there is no room for any conclusion other than that the Respondent intended to and did misappropriate the Complainant's trademark, knowing that it was prominent as a mark describing an important drug manufactured by the Complainant.
Secondly, the evidence shows that the Respondent is not associated with a business enterprise or a trademark in the name MOBIC or anything similar; the Respondent is not in any way related to the Complainant’s business, is not one of its agents and does not carry out any activity for or have any business with it.
Thirdly, the Complainant contends that the Respondent is not commonly known by the domain names. The Panel accepts this argument, as, according to the WHOIS information of the concerned registrar, the registrant and administrative contact of each of the Disputed Domain Names is Albert Sadykov and there is no evidence submitted by the Respondent to show that the Respondent is known by the domain name or any similar name.
Moreover, the Complainant has never given any authorization to the Respondent or any other entity to use its trademark in a domain name or in any other way, nor apply for registration of the domain names in issue.
Finally, if there were any doubt as to whether the Complainant had made out a prima facie case, that doubt evaporates when it is known, as it is by the evidence submitted by the Complainant , that the disputed domain names <mobic.website>, <mobic.press> and <mobic.club> have pointed to inactive website since their registration and the two other disputed domain names, <mobic.tech> and <mobic.host> resolve to websites linking online drugstores of MOBIC’s pharmaceutical drugs, which offer them without prescription or authorization. These sponsored web links redirect to online drugstores and offer drugs of Complainant’s competitors for sale.
The Panel has examined the manner in which the domain names resolve and finds that the Complainant's description is correct. With respect to the domain names that resolve to competing websites, they are particularly brazen abuses of the Complainant's trademarks, as not only have they misappropriated the Complainant's intellectual property, but they are being used to tempt unsuspecting and vulnerable internet users into taking the enormous risk of buying unproven and possibly dangerous drugs, without prescription and under the pretence that they are the equivalent of the Complainant's verified and trademarked products. This is the reason why panellists have expressed the view that this type of use of a well known and respected trademark in a domain name is a particularly egregious act, involving as it does, putting the health of unsuspecting users at great risk. In the present context it is inconceivable that such conduct could give rise to a right or legitimate interest in a domain name.
The same can also be said of the domain names that lead to inactive websites, as although they do not actively tempt internet users to buy competing and possibly dangerous drugs, they are part of the Respondent's modus operandi and their status is coloured by the active use to which the Respondent has put the other two domain names. Moreover, as the Complainant submits, it has been recognized in prior decisions that inactive use does not prevent the finding of a lack of rights or legitimate interests in the subject domain name; see - Boeing Co. v. Bressi, WIPO Case No. D2000-1164, and
LFP, Inc. v. B & J Props, NAF case No. FA109697.There is also no doubt in the mind of the Panel that, if not stopped, the Respondent will soon be putting the three inactive domain names to the same unprincipled use as it has already put the other two domain names.
These considerations all point in the one direction and show that the Complainant has clearly made out its prima facie case.
The Respondent has not filed a Response or made any other answer to the claims of the Complainant and is in default.
Accordingly, the prima facie case has not been rebutted and the Complainant has made out the second of the three elements that it must establish.
BAD FAITH REGISTRATION AND USE
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances specified are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that the Complainant has shown that the Respondent registered and used the disputed domain names in bad faith both in general and in particular because the Respondent’s conduct puts the case squarely within paragraph 4(b) (iv) of the Policy and probably within other provisions of paragraph 4 (b) as well. That is so for the following reasons.
Because of the fame and strong reputation of the MOBIC trademark and the products to which it clearly relates, the Respondent must have been actually aware of the existence of the Complainant its trademark and its good reputation when it, the Respondent, registered the Disputed Domain Names. As the Complainant submits, it is inconceivable that the Respondent did not know of the Complainant's trademark or that it related to drugs that the Respondent then sought to sell, either under that name or as purported generic or competing equivalents.
The Panel accepts the Complainant’s submission, and it is the only conclusion that can be reached on the evidence, that the Respondent chose the Complainant's MOBIC mark as the basis of its domain names, so that in registering the domain names deceptively and without any authority to do so, it intended to create the likelihood of confusion between, on the one hand, the Complainant's trademark and its well known products and, on the other hand, the dubious alternatives that it then set about promoting, with the intention of attracting current and potential customers of the Complainant looking for its products and inducing them to believe that the products bought over the internet were the same as or the equivalent to those of the Complainant. It is also apparent that the Respondent would not be doing this for altruistic reasons but to make money, either by click-through fees or by some other means. This shows clearly that the Respondent registered the Disputed Domain Names in bad faith.
It should also be said at this point that the above conclusion apply equally, for the reasons given above, both to the domain names that resolve to active websites and those that do not, as they are all part of the modus operandi on the Respondent.
As to the issue of use in bad faith, the evidence is that two of the domain names are pointing to websites that promote allegedly equivalent drugs if not the Complainant's own drugs which must be assumed to be done to earn illegal revenue. That clearly constitutes bad faith use of the domain names.
As has been indicted above, the matter is made worse by the highly dangerous activity in which the Respondent has been engaged and the danger of promoting untested and potentially dangerous drugs.
As has also been indicated above, the same conclusion must be reached with respect to the domain names pointing to inactive websites as the intention of the Respondent is equally clear with respect to those domain names.
These facts bring the case squarely, with respect to all of the domain names, within paragraph 4(b)(iv) of the Policy, i.e. “by using the domain name, ( the Respondent) [...] intentionally attempted to attract, for commercial gain, Internet users to (its) web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of (its) web site or location or of a product or service on (its) web site or location”.
As the Complainant submits, such conduct has been held by previous UDRP panels, particularly those dealing with links to online pharmacies selling drugs, to constitute bad faith use, as is seen in cases such as F. Hoffman-La Roche AG v. Maniamin James, WIPO Case No. D2012-2312, where the panel observed that it is “bad faith use to misdirect consumers to online pharmacy supplying a generic version of Complainant’s drug”.
For reasons of completeness, the Panel also finds that the conduct of the Respondent also brings the case within two other provisions of Paragraph 4(b) of the Policy, namely : (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; and (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;[...]".
It should also be noted that the conduct of the Respondent constitutes bad faith registration and use not only because of the precise criteria set out in the Policy. That is so because in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <mobic.website>, <mobic.press>, <mobic.club>, <mobic.tech> and <mobic.host> domain names using the MOBIC mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Accordingly, the Complainant has shown the third of the three elements that it must establish.
For all the reasons stated above, the Complaint is
Accepted
and the disputed domain name(s) is (are) to be
- MOBIC.WEBSITE: Transferred
- MOBIC.PRESS: Transferred
- MOBIC.CLUB: Transferred
- MOBIC.TECH: Transferred
- MOBIC.HOST: Transferred
PANELLISTS
Name | The Hon. Neil Brown, QC |
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Date of Panel Decision
2016-10-14
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