WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mediq N.V., formerly OPG Groep N.V. v. PrivacyProtect.org / E.O. de Bocanegra, Secure Web S.A.

Case No. D2009-0963

1. The Parties

The Complainant is Mediq N.V., formerly OPG Groep N.V., of Utrecht, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.

The Respondents are PrivacyProtect.org of Moergestel, the Netherlands and E.O. de Bocanegra, Secure Web S.A. of Panama, Panama.

2. The Domain Names and Registrar

The disputed domain names <mediq-apotheek.com> and <mediqapotheek.com> are registered with UK2 Group Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2009. On July 17, 2009, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain names. On July 21, 2009, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on July 27, 2009. The Center verified that the Amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 18, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on August 25, 2009. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is one of the market leaders for the distribution and retail of pharmaceuticals in the Netherlands with 231 pharmacies and is one of the largest wholesalers in the Netherlands with 24% market share. The Complainant also delivers pharmaceuticals, medical supplies and renders related services to home healthcare customers. The Complainant is doing business in eight countries in Europe and is listed on the Euronext Amsterdam stock exchange.

The Complainant owns a multitude of registrations worldwide for its MEDIQ trade marks, in particular the following trade mark registrations for MEDIQ (the “MEDIQ Marks”):

- Benelux Registration No. 776748 MEDIQ in classes 35 and 44, registered on July 29, 2005;

- Benelux Registration No. 789918 MEDIQ in classes 5, 10, 36 and 41, registered on November 17, 2005;

- Benelux Registration No. 782408 MEDIQ & device in classes 5, 10, 35, 36, 39, 41, 44, registered on November 21, 2005;

- Benelux Registration No. 819489 MEDIQ & device in classes 5, 10, 35, 36, 39, 41, 44, registered on March 9, 2007;

- Benelux Registration No. 843429 MEDIQ & device in classes 5, 10, 35, 36, 39, 41, 44, registered on April 9, 2008;

- International Registration No. 881669 MEDIQ in classes 5, 10, 35, 36, 41, 44, registered on January 27, 2006, covering Europe, Norway and Switzerland;

- International Registration No. 929949 MEDIQ & device in classes 5, 10, 35, 36, 39, 41, 44, registered on March 7, 2007, covering Europe.

The Complainant provides its services on the Internet mainly at “www.mediq.com” and “www.mediq-apotheek.nl”. The websites are available in Dutch and English.

The disputed domain names were registered on November 15, 2007 and July 24, 2008 respectively, and are used to redirect Internet users to the website at “www.dokteronline.com”, which offers online pharmacy services.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain names are phonetically identical and visually identical or at least confusingly similar to the MEDIQ Marks, which consist of the term “mediq” which has no meaning in the Dutch or English language and the term “apotheek”, which means “pharmacy” in Dutch.

(2) The Complainant contends that it did not consent to the Respondent's use of the MEDIQ Marks, that the Respondent is not commonly known by a name corresponding to the domain names and that the Respondent's use of the disputed domain names, namely the redirection to the website available at “www.dokteronline.com”, is not bona fide use under the Policy.

(3) The Complainant finally contends that the disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondent registered the disputed domain names primarily because of the fact that the MEDIQ Marks are well known and therefore highly suitable to attract customers of pharmaceuticals and medicine supplies looking for third parties' products. With regard to bad faith use of the disputed domain names, the Complainant contends that the Respondent causes initial interest confusion and attempts to attract for commercial gain, Internet users to its own website by creating a likelihood of confusion with the MEDIQ Marks. Furthermore, the Complainant contends that the Respondent disrupts its business by diverting the Complainant's customers to another website.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

After receipt of the Complaint, the Registrar UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. However, the WhoIs record still shows the Respondent's apparent privacy shield “PrivacyProtect.org” as registrant. Therefore, the Panel will treat “PrivacyProtect.org” and “E.O. de Bocanegra, Secure Web S.A.” both as registrants in this proceeding. Both registrants will hereinafter be referred to as the “Respondent”.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the 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 domain names; and

(iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names fully incorporate the Complainant's MEDIQ Marks in which the Complainant has rights.

The mere addition of the generic word “apotheek”, which means “pharmacy” in Dutch, following the trademark does not eliminate the similarity between the Complainant's marks and the domain names. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc, WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).

Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

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

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has asserted that the Respondent neither uses the domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods or services nor is known by the disputed domain names, that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names, and that the Respondent therefore cannot have any rights or legitimate interests in the domain names. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain names under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(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 trade mark 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 trade mark 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 its website or other online 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 its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).

The Complainant provided evidence that it is established throughout Europe and has a strong presence on the Internet. It is therefore inconceivable that the Respondent registered the domain names without knowledge of the Complainant and its highly distinctive MEDIQ Marks. This finding is supported by the fact that the Respondent registered domain names which are identical with the MEDIQ marks except for the descriptive term “apotheek”, describing the Complainant's type of business. Therefore, the Panel concludes that the Respondent registered the domain names <mediqapotheek.com> and <mediq-apotheek.com> with full knowledge of the MEDIQ Marks and therefore in bad faith.

As to bad faith use, the Respondent has used the disputed domain names to redirect Internet users to the website at “www.dokteronline.com”, which offers online pharmacy services directly competing to the services offered by the Complainant. Thereby, the Respondent created a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, trying to divert Internet users to its website. As a result, the Panel finds that the Respondent has used the domain names in bad faith under the Policy, paragraph 4(b)(iv), by attempting to attract, for commercial gain, Internet users to its website 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 its website or location.

Consequently, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <mediqapotheek.com> and <mediq-apotheek.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: September 7, 2009