The Complainant is Apologistics GmbH of Markkleeberg, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is Name Redacted1 / Jan Hoffmann of Berlin, Germany (referred to collectively as “Respondent”).
The disputed domain name <apodiscounter24.com> is registered with Rebel.com Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2016. The second-named Respondent submitted informal communication on November 18, 2016 but did not submit a formal response.
The Center appointed Dietrich Beier as the sole panelist in this matter on December 14, 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.
The Complainant is proprietor of several trademarks incorporating “apodiscounter”, inter alia, the European Union Trademark APODISCOUNTER Registration No. 9250499 in class 35 applied for July 15, 2010 and valid until July 15, 2020. This trademark was licensed to a German online pharmacy being commercially active under the domain name <apodiscounter.de>.
The disputed domain name was registered on December 15, 2015 under the name of a different person. The given address in the WhoIs information was wrong. The name of the Respondent, Jan Hoffmann, was used in an email communication to the Center in this proceeding and as affiliated with the email address mentioned in the registration in further searches by the Complainant.
Whereas the Respondent did not reply to the Complaint, the Complainant undisputedly argued that the licensee of its trademark is active with an online pharmacy since many years in a successful way.
In August 2016, business partners of the licensee of the Complainant received emails from email-accounts of the disputed domain name in the name of the licensee, who did, however, not write these emails. The emails from the disputed domain name requested to change the links on the Complainant’s partner’s webpages from <apodiscounter.de> to the disputed domain name <apodiscounter24.com>.
The disputed domain name was used for a website which offered prescriptive drugs within Germany. Orders placed on this website were never delivered.
The Respondent did not reply in substance to the Complaint.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its trademarks and that there are neither rights nor legitimate interests available for the Respondent. The use of the identity of a third person as well as the attempt to exploit the successful Internet business of the licensee by misconducting consumers shows bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established the fact that it has valid trademark rights for the sign APODISCOUNTER.
The disputed domain name is confusingly similar to this trademark of the Complainant since the addition of “24” in the disputed domain name is of a purely descriptive nature and does not change the overall impression being created by the dominating element “apodiscounter” being used identically.
The Panel therefore considers the disputed domain name to be confusingly similar to the trademark APODISCOUNTER in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name, since there is no indication that the Respondent is commonly known by the name “apodiscounter24” or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
In the view of the Panel, derived by the approach of the Respondent in contacting the licensee of the Complainant to change their links to the disputed domain name as well as offering a similar product range as a competitor under the disputed domain name, the Respondent must have been aware of the trademarks of the Complainant when registering the disputed domain name. The Complainant has also not authorized the Respondent to make use of its trademarks. From the record, the Panel does not see any conceivable legitimate use being made by the Respondent of the disputed domain name.
The circumstances of this case, in particular the Respondent’s approach to detour established links from the Complainant’s licensee’s website to its own website with competitive offers as well as the Respondent’s concealment of its identity indicate that the Respondent registered and is using the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to its potential website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location.
The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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, <apodiscounter24.com>, be transferred to the Complainant.
Date: December 28, 2016
1 The Panel has decided that the first-named Respondent has been most likely the subject of identity theft and that no purpose is to be served by including this named Respondent in this Decision, and has therefore redacted its name from the caption and body of this Decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes both named Respondents, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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