URS DEFAULT DETERMINATION

Boehringer Ingelheim Pharma GmbH & Co.KG v. Daniel Kobelau
Claim Number: FA1706001736461

DOMAIN NAME

<mirapex.club>

PARTIES

	Complainant: Boehringer Ingelheim Pharma GmbH & Co.KG Petra Leyendecker of INGELHEIM, Germany
	Complainant Representative: Nameshield Laurent Becker of Angers, France

	Respondent: Daniel Kobelau of Moscow, II, RU

REGISTRIES and REGISTRARS

	Registries: .CLUB DOMAINS, LLC
	Registrars: NameCheap, Inc.

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.
	Mr. Tomáš Abelovský, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: June 20, 2017
	Commencement: June 21, 2017
	Default Date: July 6, 2017
	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

Findings of Fact: Complainant has provided the following initial explanatory text, in his Complaint: “A. The domain name is identical to Complainant’s trademark. The domain name is identical to the International trademark "MIRAPEX" n° 3364585, registered on January 25th 2006. This trademark is also registered in the TMCH since April 16th, 2014. The addition of the new gTLD ".CLUB" is not sufficient to escape the finding that the domain name is identical to the Complainant's trademark “MIRAPEX” and therefore doesn’t eliminate the likelihood of confusion with its trademark. The addition of generic wording to a trademark in a domain name is insufficient to avoid a finding of confusing similarity and panels have usually found the incorporated trademark to constitute the dominant component of the disputed domain name. See WIPO D2014-1590 Fiskars Corporation v. James Taverner B. Registrant has no legitimate right or interest to the domain name The Respondent has no rights or interests in respect of the domain name and is not related to the Complainant’s business. According to the Whois of the disputed domain name, the Respondent is "Daniel Kobelau", Past panels have held that a Respondent was not commonly known by a domain name if the Whois information was not similar to the domain name. Thus, the Respondent is not known as "MIRAPEX ". Please see for instance: NAF - FA699652 - Braun Corp. v. Loney Furthermore, the website in relation with the disputed domain name < MIRAPEX.CLUB> displays no information in respect of the domain name. The Complainant contends that the Respondent has not developed a demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Indeed, the Respondent could not have used the domain name without infringing the Complainant’s intellectual property rights on the trademark MIRAPEX. C. The domain name was registered and is being used in bad faith. The domain name is identical to the International trademark "MIRAPEX" n° 3364585, registered on January 25th 2006. This trademark is also registered in the TMCH since April 16th, 2014. The Complainant is known as one of the most famous pharmaceutical group in worldwide and has registered its distinctive trademark “MIRAPEX in numerous country such as Russia since 2006. Thus, the Respondent was aware of the Complainant’s trademark “MIRAPEX” at the moment of registration of the disputed domain name. Given the distinctive trademark “MIRAPEX”, the Complainant contends that the Respondent do not use the disputed domain name without create a likelihood of confusion with the Complainant. On those facts, the Complainant contends that the Respondent has registered the domain name only in order to prevent the Complainant to register it and to reflect its trademark in a domain name.” Complainant has provided all above mentioned evidences. Respondent has not provided its Response to the Complaint.

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

Complainant has proven that he is owner of the trademark “MIRAPEX” (EUIPO). The Domain Name “mirapex.club” reproduces this trademark and is identical. Moreover, the new gTLD suffix “.club” does not reduce the similarity with the trademark. Therefore, the registered Domain Name is identical or confusingly similar to a word mark for which the Complainant holds valid registration/rights, which is in current use.

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

Determined: Finding for Complainant

Complainant has proven that Respondent has no rights or legitimate interests in the Domain Names. Furthermore, the Complainant has not authorized the Respondent to use his trademark.

[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

Respondent has registered and used the Domain Name in bad faith. Complainant has thus satisfied paragraph 1.2.6.3 of the URS Procedure. Complainant has proven that his trademark was also registered in the TMCH and he is known as one of the most famous pharmaceutical group in worldwide; and registered its distinctive trademark “MIRAPEX in numerous country such as Russia since 2006. Therefore, the Respondent should be aware of the trademark “MIRAPEX” at the moment of registration of the disputed domain name. Moreover, passive possession of identical Domain Name consisting of protected word marks and without any manifest proof of purpose towards commercial benefit, can't represent a good faith use under overall circumstances presented in this case.

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:

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:

mirapex.club

Mr. Tomáš Abelovský
Examiner
Dated: July 9, 2017

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