URS DEFAULT DETERMINATION


BOEHRINGER INGELHEIM INTERNATIONAL GMBH v. WhoisGuard, Inc.
Claim Number: FA1602001661659


DOMAIN NAME

<ispradaxathesameasxarelto.xyz>
 <pradaxaandxarelto.xyz>
 <pradaxaandxareltocomparison.xyz>
 <pradaxawarfarinxarelto.xyz>
 <xareltoogpradaxa.xyz>
 <xareltopradaxaapixaban.xyz>
 <xareltopradaxapfizer.xyz>


PARTIES


   Complainant: BOEHRINGER INGELHEIM INTERNATIONAL GMBH of INGELHEIM, Germany
  
Complainant Representative: Nameshield Laurent Becker of Angers, France

   Respondent: WhoisGuard, Inc. WhoisGuard Protected of Panama, II, PA
  

REGISTRIES and REGISTRARS


   Registries: XYZ.COM LLC
   Registrars: Namecheap

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Douglas M. Isenberg, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: February 19, 2016
   Commencement: February 19, 2016
   Default Date: March 7, 2016
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Respondents: Complainant states: "The domain names have been registered with the same: Registrar (namecheap.com) Period DNS (NS1.ROCKETIPS.COM, NS2.ROCKETIPS.COM) The domain names point to the same link: http://activehealthnews.com/xarelto-side-effects-lawsuit-information/". Accordingly, and because the registrant of all seven domain names is the same -- that is, "WhoisGuard Protected" -- the Examiner determines that it is appropriate to consider all of the disputed in this single proceeding.

   Findings of Fact: With respect to URS paragraph 1.2.6.1, Complainant states: "The domain names are confusingly similar to the International trademark 'PRADAXA' n°807503, registered on July 9th, 2003. This trademark is also registered in the TMCH since April 16th, 2014. The domain names include the trademark 'PRADAXA' in its entirety. The addition of the new gTLD '.XYZ' is not sufficient to escape the finding that the domain names are confusingly similar to the Complainant's trademark 'PRADAXA. "The addition of generic wording to a trademark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trademark to constitute the dominant component of the disputed domain name." With respect to URS paragraph 1.2.6.2, Complainant states: "The Respondent has no rights or interests in respect of the domain name and is not related to the Complainant’s business. The Complainant doesn’t carry out any activity or business with the Respondent. "Furthermore, the domain names point to the website (http://activehealthnews.com/xarelto-side-effects-lawsuit- information/). This link displays information in relation to the Competitor’s product (Xarelto). In further, the website displays commercial links without any relation with the domain names. "The Complainant contends that the Respondent has registered the disputed domain names to divert the internet traffic to his website." With respect to URS paragraph 1.2.6.3, Complainant states: "The domain names are confusingly similar to the International trademark 'PRADAXA' n°807503, registered on July 9th, 2003. This trademark is also registered in the TMCH since April 16th, 2014. The domain names include the trademark 'PRADAXA' in its entirety. According to the use of the disputed domain names, the Respondent was aware of the Complainant’s trademark at the moment of registration of the disputed domain names. "The Complainant contends that the Respondent has registered the domain names in order to: "- divert the internet traffic to his website; "- take financial gain by displaying commercial links."

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Examiner determines that each of the registered domain names is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Examiner determines that the Registrant has no legitimate right or interest to any of the domain names.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’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 Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The Examiner determines that that each of the domain names was registered and is being used in bad faith, considering the distinctiveness of the PRADAXA trademark and the fact that each of the domain names is being used in connection with a commercial website that includes information about a competitive product.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. ispradaxathesameasxarelto.xyz
  2. pradaxaandxarelto.xyz
  3. pradaxaandxareltocomparison.xyz
  4. pradaxawarfarinxarelto.xyz
  5. xareltoogpradaxa.xyz
  6. xareltopradaxaapixaban.xyz
  7. xareltopradaxapfizer.xyz

 

Douglas M. Isenberg
Examiner
Dated: March 9, 2016

 

 

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