WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman)

Case No. DPW2017-0003

1. The Parties

The Complainant is Abbott Diabetes Care Inc. of Alameda, California, United States of America (“USA”), represented by Steven M. Levy, USA.

The Respondent is Privacy Protection, Hosting Ukraaine LLC of Kiev, Ukraine / Виталий Броцман (Vitalii Brocman) of Germany, self-represented.

2. The Domain Name and Registrar

The disputed domain name <mylibre.pw> (the “Domain Name”) is registered with Hosting Ukraine LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2017. On September 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 6, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 8, 2017, 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 September 8, 2017.

The Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Name is Russian. On September 8, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding. The Respondent replied to the Center’s notification objecting to the Complainant’s request.

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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2017. On October 6, 2017 the Respondent requested an extension of time until October 31, 2017, in order to find an attorney for preparation of a response. On October 6, 2017, the Center sent an email to the Parties asking the Complainant to comment on the Respondent’s request for an extension of time by October 9, 2017 and granting a four-day extension to the Respondent. The Respondent did not submit a formal response to the Complaint. On October 13, 2017, the Center notified the Parties the commencement of panel appointment process. The respondent sent a further informal communication to the center on October 17, 2017.

The Center appointed Olga Zalomiy as the sole panelist in this matter on November 1, 2017. 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.

On November 6, the Panel issued a Procedural Order granting the Respondent a further four-day extension for submission of a response. On November 8, 2017, the Respondent submitted another informal email in Russian.

4. Factual Background

The Complainant operates in the field of diabetes cave, and designs and manufactures glucose monitoring systems.

The Complainant is the owner of various LIBRE trademarks, such as the European Union Trademark Registration No. 015200066 for the LIBRE trademark registered on July 19, 2016, and registration No. 016088148 registered on March 27, 2017. The Complainant’s genuine LIBRE products are not available in the Ukrainian and Russian markets.

The Respondent registered the Domain Name on March 21, 2017. The Domain Name used to resolve to a website in the Russian language offering for sale to Russian residents Freestyle Libre products along with various accessories manufactured by third parties. After the current administrative proceeding commenced, the Respondent deactivated the website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it has rights to the well-known LIBRE, LIBRE PRO, FREESTYLE LIBRE, LIBRELINK and LIBREVIEW trademarks (the “LIBRE Marks”). The Complainant it has been using the earliest of its LIBRE Marks in connection with creation, production, advertising, distribution and sale of glucose monitoring systems and other products related thereto since at least September 2015.

The Complainant claims that the Domain Name is confusingly similar to the Complainant’s LIBRE Marks. The Complainant argues that the mere addition of the generic term “my” and the country code Top-Level Domain (“ccTLD”) “.pw” does not avoid a finding of confusing similarity.

The Complainant alleges that the Respondent has no rights or legitimate interests in the <mylibre.pw> Domain Name. The Complainant contends that the Respondent’s actions are not a bona fide offering of goods or services under Policy. The Complainant claims that the Respondent is not affiliated with nor authorized by the Complainant to use the LIBRE Marks or to sell the Complainant’s products and appears to be misleading the Complainant’s customers by selling products that are either counterfeit or, are “grey market” goods, which are not intended for the Ukrainian and Russian markets, as targeted by the Respondent. The Complainant states that its genuine LIBRE products are not available in Ukraine and Russia markets. The Complainant contends that the website to which the Domain Name directs states that the product is sent “from Europe” and takes “an average 12-14 days” for receipt.

The Complainant contends that the Respondent is not a legitimate reseller of the Complainant’s goods and is making a nominative fair use of the Complainant’s marks. The Complainant states that on its website, the Respondent offers for sale third-party goods in addition to the Complainant’s goods. Further, the Complainant argues that although the Respondent’s “www.mylibre.pw” website contains the statements that it “is not representative of Abbott” and “Page MyLibre nothing to do with the company Abbott Diabetes Care Inc. / Abbott GmbH & Co.”, they are insufficient to provide any rights or legitimate interests in the Domain Name because they only appear towards the bottom of the page, either under the “Question Answer” section or in very faint, fine print.

The Complainant alleges that the Respondent is not commonly known by the Domain Name because his name is “Vitalii Brocma”n and because the Respondent used privacy service to register the Domain Name. The Complainant claims that the Respondent is also not making a legitimate noncommercial or fair use of the Domain Name. The Complainant argues that the Respondent’s has tarnished and diluted the LIBRE Marks because the Respondent has diminished consumers’ capacity to associate the LIBRE Marks with the quality products offered under the Marks by the Complainant.

The Complainant contends that the Respondent registered and used the Domain Name in bad faith. The Complainant alleges that the Respondent intentionally registered and is using the Domain Name without consent from the Complainant to confuse and mislead visitors to its website. The Complainant claims that the Respondent was put on notice about the Complainant’s rights in the LIBRE Marks through the Complainant’s extensive prior use of the trademarks. The Complainant alleges that the Respondent is obtaining commercial gain from the sale of counterfeit or grey market products through the use of the website at the Domain Name. The Complainant contends that the fact that the Respondent’s website is offering for sale grey market or counterfeit goods or counterfeits only serves to reinforce the bad faith nature of the Respondent’s activities.

B. Respondent

The Respondent did not submit a formal response to the Complaint. On November 8, 2017, the Respondent submitted an email in Russian to the Center, which states that beginning November, 1, 2017 the website “www.mylibre.pw” ceased its existence. The Respondent contends that upon expiration of [his] rights to the Domain Name, the rights will not be renewed. If necessary, the rights to the Domain Name may be transferred earlier.

6. Discussion and Findings

6.1. Language of the proceeding

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement¹.” The default language of this administrative proceeding is Russian since it is the language of the Registration Agreement for the Domain Name. However, the Complainant filed the Complaint in English and requested English to be the language of this proceeding. The Respondent objected to the Complainant’s request.

The Rules allow the panel to determine language of the administrative proceeding having regard to the circumstances of the case in the spirit of fairness to the parties and taking into account time and cost of the proceeding.² Where it appears the parties reasonably understand the nature of the proceedings and the panel can understand both the language of the complaint and one of the respondent’s submissions, prior UDRP panels found it to be fair to the parties to conduct the proceeding in the language other than the language of the registration agreement.

In this case the Panel is proficient in both Russian and English and the circumstances of this case show that the Respondent is capable of understanding English. The Respondent’s November 8, 2017 email shows that he understood the nature of the proceedings because he shut down his the website “www.mylibre.pw” and informed the Center that he would not renew the Domain Name upon expiration of its registration. In the same email, the Respondent also indicated that he could transfer his rights to the Domain Name prior to the expiration of its registration, if necessary. In addition, the fact that the Respondent combined the English word “my” with the Complainant’s trademark LIBRE in the Domain Name, supports the conclusion that the Respondent understands English.

Furthermore, when script of the domain name is different from the respondent’s native language, it may indicate that the respondent is familiar with the languages other than their native language³. Here, the Respondent chose Latin letters rather than Cyrillic letters for the composition of the Domain Name. The Domain Name has no meaning in Russian. In addition, although the Respondent’s website used to be in Russian, it contained references to MyLibre services, a combination of words, which has no meaning in Russian.

In light of the Respondent’s ability to understand English and his decision to deactivate the website associated with the Domain Name without an attempt to rebut the Complainant’s allegations, it would not be fair or equitable to require the Complainant to go to the unnecessary time and expense of translating its pleadings into another language.

The Panel, therefore, finds that English is the appropriate language of this proceeding because it will encourage fair and expeditious resolution of this dispute. Eliminating translation of the Complaint to Russian in the situation where the Respondent understands English will conserve resources of the Parties.

6.2. General discussion

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To prove the first UDRP element, the Complainant must demonstrate that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has proved that it has standing for the purposes of this proceeding by submitting copies of registration certificates for the LIBRE marks, such as the European Union Trademark Registrations No. 015200066 for the LIBRE trademark registered on July 19, 2016 and Registration No. 016088148 registered on March 27, 2017. “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”⁴

The Complainant has also demonstrated that the Domain Name is identical or confusingly similar to its LIBRE trademark. “Where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”⁵ Here, the Domain Name consists of the LIBRE trademark, the term “my” and the ccTLD suffix “.pw”. Because the Domain Name incorporates the Complainant’s trademark in its entirety, it is confusingly similar to the Complainant’s trademark. The fact that the Complainant’s mark is comprised of two commonly used words, “my” and “libre⁶” does not weaken this conclusion, because it is the combination of the two terms in the trademark and their application in a particular field of commerce that supports their distinctiveness. See Fleming Sales Company, Inc. v. David Marketing Group, WIPO Case No. D2006-1174 (where infringing domain name incorporated entirety of complainant’s PATIOHEARTH mark, no defense that “patio” and “hearth” are commonly used terms). It is well-established that the addition of the ccTLD suffix may be disregarded under the confusing similarity test⁷.

Thus, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s trademark and the Complainant satisfied the first element of the UDRP.

B. Rights or Legitimate Interests

Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.⁸ Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.⁹ Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.¹⁰

The Respondent has no permission from the Complainant to use its LIBRE trademark. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent is not a licensee, or an authorized reseller of the Complainant. The Complainant proved its rights to the LIBRE trademark. It is well established that in the absence of any license or permission from a complainant to use the complainant’s trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

The Respondent is not commonly known by a name corresponding to the Domain Name. The Respondent’s personal name is Виталий Броцман (Vitalii Brocman), which is different from the Domain Name. The Respondent’s use of a WhoIs privacy service indicates that the Respondent specifically did not want to reveal the name by which it is commonly known. See, L’Oréal SA v. PrivacyProtect.org/ WangShanShan, WIPO Case No. D2014-0295 (“there is no evidence that the Respondent, who is moreover hiding behind a privacy shield, has been commonly known by the Domain Name.”) Even though at the time when the screenshots of the Respondent’s website were taken, it indicated that it belonged to the “online service MyLibre”, such indication does not create rights or legitimate interests for the Respondent because this indication is not supported by “independent and sustained examples of secondary material such as websites or blogs, news articles, correspondence with independent third parties; sports or hobby club publications referring to the respondent being commonly known by the relevant name; bills/invoices; or articles of incorporation¹¹”.

The Respondent is also not making a legitimate noncommercial or fair use of the Domain Name as a reseller of the Complainant’s products. Generally, resellers may have legitimate interests in a domain name containing complainant’s trademark if their activities comply with the following cumulative requirements:

“(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”¹²

Here, however, the Respondent cannot claim that it is merely a legitimate reseller of the Complainant’s products and making a nominative fair use of the LIBRE Marks. First, the evidence shows that at the time when the evidence was taken, the Respondent’s “www.mylibre.pw” website offered for sale third-party accessories for the LIBRE products, such as screen protectors, cases, and adhesives in addition to the Complainant’s goods. Second, although the Respondent’s “www.mylibre.pw” website contained the statements that it “is not representative of Abbott” and “Page MyLibre nothing to do with the company Abbott Diabetes Care Inc. / Abbott GmbH & Co.”, the statements were not prominent. Instead, the statements appeared towards the bottom of the page, either under the “Question Answer” section or in very faint, fine print.

The Respondent’s deactivation of the “www.mylibre.pw” website along with his intent not to renew the Domain Name registration is another confirmation that he lacks rights or legitimate interests in the Domain Name.

The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Complainant satisfied the second element of the UDRP.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

The bad faith can be found where a respondent, by registering and using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See UDRP, paragraph 4(b)(iv).

The Panel finds that the Respondent registered the Domain Name in bad faith as at the time of the Domain Name registration he was aware of the Complainant and its LIBRE trademark and registered the Domain Name without consent from the Complainant, to confuse and mislead visitors to his website. The evidence on the file shows that at the time of the Domain Name registration, the Complainant already owned a trademark registration for the LIBRE website in Germany, where the Respondent resides. The Respondent used the Domain Name to resolve to the website offering for sale the Complainant’s Freestyle Libre products and third-party accessories for the products. Buried in the “Question Answer” section of the website, about the Respondent’s relationship with the Complainant, the Respondent concealed the statement that it “is not a representative of Abbott”.

At the time of drafting the decision, the Respondent’s website had been deactivated. However, the Complainant has provided evidence showing that the Domain Name was pointed, prior to the filing of the Complaint, to the website offering for sale purported products of the Complainant. Internet users, in light of the contents of the website linked to the Domain Name, may have been misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant claims that the products offered on the Respondent’s website are grey market goods, which are not intended for sale in the Russian Federation and Ukraine. The Complainant also alleges that genuine LIBRE products are not available in the Ukrainian and Russian markets. The Respondent did not dispute these allegations. The evidence on file shows that the Respondent’s website in the Russian Federation offered to “help acquire FreeStyle Libre system in Germany reliably, quickly and profitably” and to deliver them to the Russian Federation in “12-14 days”. Thus, the Respondent used the Domain Name to attract Internet users to its website and to trade the purported goods of the Complainant’s in the unauthorized territory. Previous UDRP panels found such use of domain names to be in bad faith. See, Philip Morris USA Inc. v. Samurai Kapok and 1, WIPO Case No. D2016-2179 (“The Panel, therefore, concludes that the sale of purported, grey market goods or counterfeit cigarettes as well as promoting the brands that compete with Complainant under a domain name incorporating Complainant’s mark indicate use in bad faith.”)

Although currently the website associated with the Domain Name is deactivated, it does not prevent finding of bad faith. “[P]anelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”.¹³ One of the factors applied to passive holding doctrine is “the implausibility of any good faith use to which the domain name may be put”.¹⁴ Here, the previous bad faith use of the Domain Name and lack of any explanation of possible good faith use from the Respondent make any good faith use of the Domain Name implausible.

Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been satisfied.

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, <mylibre.pw> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: November 14, 2017

¹ Paragraph 11(a) of the Rules.

² Id.

³Section 4.5.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

⁴Section 1.2.1, Overview 3.0.

⁵ Id.

⁶ “Libre” means “free” in Spanish.

⁷Section 2.1, WIPO Overview 3.0.

⁸Id.

⁹Id.

¹⁰Id.

¹¹Section 2.3, WIPO Overview 3.0.

¹²Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903

¹³Section 3.3, WIPO Overview 3.0.

¹⁴Id.