WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim International GmbH v. Maria Gendels

Case No. D2016-1585

1. The Parties

The Complainant is Boehringer Ingelheim International GmbH of Ingelheim, Germany, represented by Nameshield, France.

The Respondent is Maria Gendels of Krasnogorsk, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <mirapex.top> is registered with 1API GmbH (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 6, 2016.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on September 16, 2016. 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 Boehringer Ingelheim International GmbH, a family-owned group of companies founded in 1885. The Complainant is one of the largest manufacturers of pharmaceutical products in the world, with about 140 affiliated companies world-wide and 46,000 employees. In 2013, the Complainant's net sales amounted to about EUR 14.1 billion.

MIRAPEX is a prescription medicine used, for over 12 years, to treat signs and symptoms of Parkinson's disease. In clinical studies, MIRAPEX was shown to significantly improve patients' motor scores and their ability to perform activities of daily living.

The Complainant owns a portfolio of brands including the word "mirapex" in several countries, including the European trademark MIRAPEX number 3,364,585 registered on January 25, 2006 and the German trademark MIRAPEX number 396,196,128 registered on January 10, 1997.

The trademark MIRAPEX is also registered in the Trademark Clearinghouse and its last renewal is dated April 16, 2014.

Furthermore, the Complainant is the owner of several domain names that include the wording "mirapex" such as: <mirapex.com> registered on February 27, 1998; <mirapex.de> registered on July 16, 2007; <mirapex.fr> registered on July 16, 2007; <mirapex.eu> registered on May 1, 2006; <мирапекс.рф> registered on December 10, 2009; <mirapex.asia> registered on November 23, 2007.

The disputed domain name was registered on June 28, 2016.

The disputed domain name is currently inactive, but it lead to a website that offered MIRAPEX-branded pharmaceutical drugs in competition with the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name <mirapex.top> is identical to the Complainant's MIRAPEX trademark because it contains the Complainant's trademark MIRAPEX in its entirety. The mere addition of the generic Top-Level Domain ("gTLD") ".top" does not alter such identity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not related with the Complainant; the Respondent is not sponsored by or affiliated with the Complainant in any way.

The Respondent was not permitted by the Complainant to use the MIRAPEX mark in any manner, nor to apply for any domain name incorporating it.

The Complainant contends that the Respondent has not develop a legitimate use in respect of the disputed domain name considering that the disputed domain name resolves to a website that offers MIRAPEX−branded pharmaceutical drugs in competition with the Complainant, without any prescription.

The Complainant contends that the disputed domain name <mirapex.top> has been registered and is being used in bad faith.

The Complainant contends that the Respondent knew, or at least should have known of the existence of the Complainant's trademark, when it registered the disputed domain name. Indeed, the disputed domain name resolves to a website that makes direct reference to the MIRAPEX products, and proposes the sale of these products.

The Complainant contends that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the disputed domain name registered by the Respondent is 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 name; and

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

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant's trademark MIRAPEX; the only difference is the adjunction of the gTLD suffix ".top".

With regards to the gTLD suffix ".top" (which indicates that the domain name is registered in the ".top" gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000‑0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / [email protected],WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:

(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

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

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.

There is no evidence of the Respondent's use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods.

The Respondent has not been and is not commonly known by the disputed domain name or has acquired any trademark or service mark rights in it. The Respondent's name does not coincide with the disputed domain name.

The Complainant states that the Respondent is not linked to the Complainant in any way, through a business or legal relationship or authorized by the Complainant to register the disputed domain name <mirapex.top>.

Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. In fact, although the disputed domain name is currently inactive, it resolved to a website that offered MIRAPEX's pharmaceutical drugs in competition with the Complainant, without any prescription. As stated in previous UDRP decisions, this Panel finds that this type of use of a domain name, which in effect trades off the Complainant's reputation and trademark, offering or linking to competing goods and services, is not bona fide and cannot confer any rights or legitimate interests upon it (see Woolworths Limited v. Domain AdminkPrivacyProtect.org/Smvs Consultancy Privacy Limited, WIPO Case No., D2010-1046cited by the Complainant).

Finally, given the circumstance of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to previous UDRP decisions "non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang,WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

In light of the evidence submitted by the Complainant, the Complainant's registered MIRAPEX trademark predates the registration of the disputed domain name <mirapex.top> and in the Panel's belief, the Respondent must have known about the Complainant's existence and rights at the time of the registration of the disputed domain name. Moreover, the MIRAPEX trademark is registered in the Trademark Clearinghouse and its last renewal is dated April 16, 2014.

Furthermore, the Respondent's website to which the disputed domain name previously resolved made direct reference to the Complainant's MIRAPEX products and offered MIRAPEX-branded pharmaceutical drugs (without any prescription) that competed with those offered by the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the disputed domain name was registered or acquired other than by reference to the Complainant. The registration of the disputed domain name in awareness of the Complainant's activities and rights, in the absence of rights or legitimate interests, amounts to registration in bad faith.

Concerning the use of the disputed domain name and considering the above mentioned circumstance, by such use the Respondent intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant's products and to obtain information about the Complainant's activity to its own website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website. According to previous UDRP decisions (besides Stuart Weitzman IP, LLC v. Zhao Ke, WIPO Case No. DME2015-0003, cited by the Complainant, see also Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537; and Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319) the Panel finds that the registration of the disputed domain name with the intention to attract visitors for commercial gain by confusion with the Complainant's trademark in the terms of paragraph 4(b)(iv) of the Policy, constitutes registration and use in bad faith. Moreover, the Panel notes that the disputed domain name is now inactive, UDRP panels have found that passive holding based on the totality of the circumstances may amount to bad faith registration and use.

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name <mirapex.top> was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mirapex.top> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: September 30, 2016