WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer Aktiengesellschaft v. Fundacion Private Whois

Case No. D2012-2421

1. The Parties

The Complainant is Bayer Aktiengesellschaft of Leverkusen, Germany, represented by Siebeke Lange Wilbert, Germany.

The Respondent is Fundacion Private Whois of Panama.

2. The Domain Name and Registrar

The disputed domain name <ciprodexotic.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on December 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2013.

The Center appointed Jon Lang as the sole panelist in this matter on January 16, 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

The Complainant is a well known German based company with world-wide interests and core competencies in the fields of healthcare, nutrition and high-tech materials. It (and its predecessors) has traded under the name BAYER since 1863.

In 1991, the Complainant launched an oral fluoroquinolone medication under the trademark CIPRO. The product has been highly successful. Subsequently, the Complainant launched (in the United States of America (“USA”) in 2003 and in Canada in 2004) the product “Ciprodex Otic Suspension” to treat middle and outer ear infections.

The Complainant and its international subsidiaries are owners of 40 country code top level domains (“ccTLD”) and generic Top-Level Domains (“gTLD”) domain names consisting of or incorporating the term “cipro”, including <cipro.com> registered in 1995.

The Complainant is also the owner of many CIPRODEX and CIPRO trademark registrations worldwide (in about 120 countries), several consisting of the terms “Cipro” combined with other syllables, including Canadian trademarks CIPRODEX (TMA No. 616560) and CIPRO (TMA No. 356070) registered on November 8, 2004 and May 19, 1989 respectively, and USA trademarks CIPRODEX (No. 2513415) and CIPRO (No. 1585275) registered on March 6, 2000 and March 6, 1990 respectively.

The trademark CIPRO has been used for antibiotic medication in the USA and Canada for around 21 years, and the trademark CIPRODEX has been in use in those markets for around 10 years.

The Complainant, where commercially prudent to do so, licenses companies to manufacture, use, market, advertise, sell or distribute certain products and in this regard Alcon Inc was granted a license in 1998 to use the trademark CIPRO and in 2003, a license was granted for it to use the trademark CIPRODEX. Alcon Inc. website expressly refers to the trademark license.

The Domain Name was registered on January 8, 2010.

5. Parties” Contentions

A. Complainant

Confusing similarity

The Domain Name <ciprodexotic.com> is confusingly similar to the Complainant’s trademarks CIPRODEX and CIPRO being comprised of the word elements “cipro”, “dex” or “ciprodex”, and “otic”. The first and distinctive element of the Domain Name, “ciprodex” is identical to the Complainant’s CIPRODEX trademark, and the first syllable of the Domain Name (“cipro”) is identical to the Complainants’ trademark, CIPRO). The second element of the Domain Name, “otic” is an adjective relating to the ear as several dictionary definitions show. By way of example, “otic” is defined in Mosby’s Medical Dictionary as “pertaining to the ear”. Thus the term “otic” is a mere descriptive term that has been added to the Complainant’s mark CIPRODEX to constitute the Domain Name.

The confusing similarity with the Complainant’s trademarks will cause consumer confusion as Internet users accessing the Internet using the Domain Name will expect information and offerings of medications by the Complainant. This is particularly so given that the Domain Name resolves to a website offering (at a discount) the medication “Ciprodex Otic Suspension” for the treatment of ear infections. The average Internet user will believe this product originates from the Complainant and that the website to which the Domain Name resolves, and medication available thereon, is connected with or provided by the Complainant.

Lack of rights or legitimate interests in the Domain Name

The Respondent has no rights to use the Complainant’s marks. Consent to register the Domain Name was not sought or obtained and the Respondent is not affiliated with the Complainant in any way.

The Domain Name resolves to a website which appears to be operated by “America’s Canadian Pharmacy & International Drugstore “www.northWestPharmacy.com” (the “Website”). Neither that entity nor the Respondent is using the Domain Name in connection with a bona fide offering of goods and services. The Website offers information about the medication “Ciprodex Otic Suspension” but there is nothing which indicates the identity of the manufacturer or supplier of the product and it is impossible to verify from where the product originates. Moreover, the website does not accurately disclose the registrant’s relationship with the Complainant thus falsely suggesting that it is the (CIPRODEX or CIPRO) trademark owner. The Complainant has not authorized the advertising of the product by the Respondent.

The Complainant is deprived from reflecting its trademark in the Domain Name.

Even if the Respondent (or the entity responsible for the Website) was an authorized distributor, it would not have been allowed to register the Domain Name for its sole use.

The Website offers Ciprodex Otic Suspension at a discount, along with other brand name and generic prescription drugs.

The Complainant also alleges a violation of USA drug safety laws as the Website states that it dispenses drugs from sources outside Canada and the USA but does not indicate from where the drugs are shipped. Accordingly, the Domain Name is not being used for a bona fide offering of goods or services.

Neither the Respondent nor the Website have been commonly known by the Domain Name, or use it as a legal or corporate (or other) name and the Complainant assumes that neither the Respondent (nor the owner of the Website, if different) has acquired any trademark rights in the Domain Name.

Neither the Respondent nor the Website is making any legitimate noncommercial or fair use of the Domain Name. The Respondent seeks commercial gain by misleadingly diverting customers to the Website. Internet users are misled into believing that medications offered are provided by or sponsored by the Complainant. Moreover, the Complainant, as a result of such diversion, suffers a loss in sales and, if the medications are of poor quality, will also suffer damage to its reputation.

The Domain Name was registered and is being used in bad faith

The Domain Name, incorporating as it does a well-known and distinctive trademark, is itself indicative of bad faith registration in the absence of any evidence of rights or legitimate interests.

The Respondent most probably knew of the Complainant’s trademarks CIPRODEX and CIPRO and of the antibiotic produced and marketed over many years, particularly given the use made of the Domain Name. It can be assumed that Respondent chose the Domain Name with the aim of attracting customers and that it is being used to mislead the public and to trade on the trademarks” goodwill for profit.

Internet users will believe that the Website is licensed or at least tolerated by the Complainant.

Given the long and continuous use made by the Complainant of its trademarks, which pre-dates the registration of the Domain Name in 2010, the Respondent, in registering the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Website or of products available on it. The suggested motivation of the Respondent seems all the more likely given the coincidence of registration of the Domain Name (on January 8, 2010) with the publicity surrounding the acquisition of the Complainant’s licensee, Alcon Inc. (by Novartis) following an announcement on January 4, 2010.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:

(i) identical or confusingly similar to a trademark or service mark in which a complainant has rights;

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

The Complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The Complainant clearly has rights in its trademarks CIPRO and CIPRODEX.

The Domain Name incorporates the Complainant’s trademarks in their entirety but they are not identical. The trademark CIPRODEX is very much the dominant element of the Domain Name, being a distinctive and well known mark followed by the generic or descriptive word “otic”. The trademark CIPRO is less dominant within the Domain Name, but still recognizable.

Under the UDRP, the test for confusing similarity involves a comparison between the Complainant’s trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.

Given the distinctive nature of the CIPRO and CIPRODEX trademarks, both readily recognisable within the Domain Name (and, at least in the case “ciprodex”, very much its dominant element), the Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s trademarks CIPRO and CIPRODEX.

Even if one were to adopt a possibly slightly higher burden and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that there is some form of association between the Respondent and the Complainant. This is particularly so given the addition of the term “otic” at the end of the Domain Name which serves to re-enforce the possible association given its meaning (relating to the ear), and the use the Complaint makes of its marks, or at least the trademark CIPRODEX mark i.e. on products for the treatment of ear infections.

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s trademarks for the purposes of the Policy.

B. Rights or Legitimate Interests

By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests for the purposes of the Policy.

Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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.

Here, however, the Respondent is not known by the Domain Name which resolves to a website redirecting to the website “www.northwestpharmacy.com” displaying the name of “America’s Canadian Pharmacy & International Drugstore”.

Moreover, given the nature of the website to which the Domain Name resolves, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put. Furthermore, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (absent any alternative explanation), that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. In this Panel’s opinion, this seems to be the case here.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that the Domain Name, which so obviously takes advantage of the fame of the trademarks to which it is confusingly similar, is being used in connection with a bona fide offering. As paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear, it is possible, in certain circumstances, for use of a domain name for advertising purposes, (including parking pages) to provide a legitimate interest within the meaning of the Policy. For instance, if a registrant intends to profit from the descriptive element of a domain name without intending to take advantage of a third party’s rights. However, as the panel noted in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, if the registrant of the domain name is using it in order “…to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267)”. The Respondent’s choice of the Domain Name here seems a clear attempt to unfairly capitalise on or otherwise take advantage of the Complainant’s trademarks.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. One such example of bad faith registration and use is where the Respondent has, by using the domain name, “… intentionally attempted to attract, for commercial gain, Internet users to your [Respondent’s] 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 your web site or location or of a product or service on your web site or location.”

It would appear that the Respondent has indeed intentionally attempted to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s trademarks. Even if, which is in fact not the case here, the Internet user, once arriving at the Website realises, (because of disclaimers or otherwise), that it is unconnected with the Complainant, the Respondent will still be treated as having acted in bad faith. This is because the Internet user will have been confused, albeit initially, as to the relationship between the Website and trademark owner and that is enough to establish bad faith. But on the facts of this case, it may well be that an Internet user continues to be confused as to the relationship between the Complainant and Respondent even after arriving at the Website. Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the 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 Domain Name <ciprodexotic.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Dated: January 30, 2012