ETABLISHMENTS TREMBLAY v. Laura Grunwald
Claim Number: FA2303002036000
Complainant is ETABLISHMENTS TREMBLAY (“Complainant”), represented by OLIVER SALIAS, GLEIZE - FRANCE. Respondent is Laura Grunwald (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <meditechpharmaceutical.net> (“Domain Name”), registered with DreamHost, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on March 16, 2023; Forum received payment on March 16, 2023.
On March 16, 2023, DreamHost, LLC confirmed by e-mail to Forum that the <meditechpharmaceutical.net> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the names. DreamHost, LLC has verified that Respondent is bound by the DreamHost, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@meditechpharmaceutical.net. Also on March 17, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be cancelled.
A. Complainant
Complainant is a sports pharmaceuticals company in France. Complainant has rights in the MEDITECH mark through Complainant’s registration of the mark with the French National Institute of Intellectual Property (I.N.P.I.), (e.g. Registration Number 3,337,809, registered on January 31, 2005). Respondent’s <meditechpharmaceutical.net> domain name is identical or confusingly similar to Complainant’s MEDITECH mark as it merely adds the generic word “pharmaceutical” and the “.net” generic top-level-domain ("gTLD") to the wholly incorporated mark.
Respondent lacks rights or legitimate interests in the <meditechpharmaceutical.net> domain name. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Rather, from the resolving website (“Respondent’s Website”) Respondent offers a variety of pharmaceutical products for sale under the MEDITECH mark, some of which are illegal (not approved for human consumption) and others are counterfeit (being unauthorized copies of pharmaceutical products owned and distributed by third parties).
Respondent registered and uses the <meditechpharmaceutical.net> domain name in bad faith. Respondent’s Website disrupts Complainant’s business as Respondent registered the Domain Name to pass off as Complainant and sell illegal and counterfeit products for Respondent’s financial gain. Respondent had actual knowledge of Complainant’s rights to the MEDITECH mark prior to registering the Domain Name as evidenced by Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MEDITECH mark. The Domain Name is confusingly similar to Complainant’s MEDITECH mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the MEDITECH mark under Policy ¶ 4(a)(i) through its registration of the mark with I.N.P.I. (Re Registration Number 3,337,809, registered on January 31, 2005). Registration of a mark with a national trademark authority is sufficient to establish rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <meditechpharmaceutical.net> Domain Name is confusingly similar to the MEDITECH mark as it fully incorporates the MEDITECH mark and adds the generic or descriptive term “pharmaceutical” and the “.net” gTLD. The addition of generic terms along with a gTLD to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the MEDITECH mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Laura Grunwald” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website, which reproduces Complainant’s MEDITECH mark and advertises a number of pharmaceutical products which, based on the uncontested evidence in the Complaint, are clearly counterfeit products or products that could not be legally sold as they are not approved pharmaceutical products or are combinations of pharmaceutical products never approved for human use. Using a domain name to offer illegal substances for sale is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Nintendo of America Inc. v. Dajana Shawn, FA 1798791 (Forum Sep. 4, 2018) (“The use of a Domain Name to promote illegal products or services is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii)).”); see also Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, January 3, 2014, Respondent had actual knowledge of Complainant’s MEDITECH mark as the Respondent’s Website reproduced Complainant’s mark and offers pharmaceutical products (including in France, the location of Complainant), which are the same products offered by Complainant under its MEDITECH mark (noting that Complainant does not offer illegal or counterfeit products). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith for commercial gain as it is using the confusingly similar Domain Name to resolve to a website, under the Complainant’s MEDITECH mark, offers illegal and counterfeit products. Use of a disputed domain name in this manner is bad faith use under Policy ¶ 4(b)(iv) and ¶ 4(a)(iii) generally. See Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval); H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); MedImpact Healthcare Systems, Inc. v. Helen Jones, FA2107001954521 (Forum Aug. 4, 2021) (finding bad faith registration and use where infringing domain name was used to operate an illegal online pharmacy).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <meditechpharmaceutical.net> domain name be CANCELLED.
Nicholas J.T. Smith, Panelist
Dated: April 13, 2023
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