MEDITECH HUMAN PHARMACEUTICALS v. Wayakon Phuengngern
Claim Number: FA2307002054491
Complainant is MEDITECH HUMAN PHARMACEUTICALS (“Complainant”), represented by Abhijeet singh, India. Respondent is Wayakon Phuengngern (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <meditechpharmaceutical.net> (“Domain Name”), registered with DropCatch.com 564 LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on July 25, 2023; Forum received payment on July 25, 2023.
On July 25, 2023, DropCatch.com 564 LLC confirmed by e-mail to Forum that the <meditechpharmaceutical.net> domain name is registered with DropCatch.com 564 LLC and that Respondent is the current registrant of the name. DropCatch.com 564 LLC has verified that Respondent is bound by the DropCatch.com 564 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 July 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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 July 26, 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 August 16, 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 transferred from Respondent to Complainant.
A. Complainant
Complainant, is an Indian pharmaceutical company with a significant global reputation. Since July 16, 2014 it has used the domain name <meditechpharmaceutical.com> to promote its business. Complainant asserts rights to a trade mark consisting of the words (in fancy script) “MEDITECH Engineered for Performance” (the “MEDITECH mark”) based upon registration with various national trade mark authorities including the Indian Comptroller General of Patents, Designs & Trade Marks and the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,881,875, registered October 15, 2019). Respondent’s <meditechpharmaceutical.net> domain name is confusingly similar to Complainant’s mark as it contains the dominant MEDITECH element of the MEDITECH mark and adds the descriptive (for Complainant’s goods) term “pharmaceutical” and the generic top-level domain (“gTLD”) “.net” to form the Domain Name.
Respondent does not have rights or legitimate interests in the <meditechpharmaceutical.net> domain name. On April 13, 2023 a UDRP panel ordered the Domain Name to be cancelled, see ETABLISHMENTS TREMBLAY v. Laura Grunwald FA 2036000 (Forum April 13, 2023). Prior to the cancellation the Domain Name was used to impersonate Complainant and offer for sale a variety of pharmaceutical products for sale under the MEDITECH mark, some of which were illegal (not approved for human consumption) and others were counterfeit. Following the cancellation, the former owner of the Domain Name redirected customers to other domain names through a Facebook page while incorrectly asserting that the Domain Name was down for maintenance. Respondent acquired the Domain Name by auction from the drop-catch service and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent inactively holds the Domain Name.
Respondent registered and uses the <meditechpharmaceutical.net> domain name in bad faith. Respondent registered and inactively held the Domain Name. Finally, Respondent registered and uses the Domain Name with actual knowledge of Complainant’s rights in the MEDITECH mark given the fame 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 and 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 the USPTO (e.g. Reg. No. 5,881,875, registered October 15, 2019). 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 distinctive and dominant MEDITECH element of the MEDITECH mark and adds the generic or descriptive term “pharmaceutical” and the “.net” gTLD. Adding a generic term and a gTLD to a mark or a distinctive portion of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); 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 “Wayakon Phuengngern” 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 is inactive and there is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Complaint contains various statements about Respondent’s conduct, both in respect to the Domain Name, on Facebook and on findings made in ETABLISHMENTS TREMBLAY v. Laura Grunwald FA 2036000 (Forum April 13, 2023). The Panel notes that there is no evidence before it that Respondent is connected to the respondent in the previous proceeding and it cannot conclude that Respondent is connected to any of the conduct surrounding the Domain Name alleged in the Complaint.
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, June 1, 2023, Respondent had actual knowledge of Complainant’s MEDITECH mark. The Complainant had developed a significant reputation in its MEDITECH mark over 10 years of use across various jurisdictions. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register (following acquisition through a drop-catch auction service) a domain name that wholly incorporates the dominant element of the MEDITECH mark and a term (“pharmaceutical”) that describes Complainant’s products (and happens to be almost identical to Complainant’s <meditechpharmaceutical.com> domain name) other than to take advantage of Complainant’s reputation in the MEDITECH Mark and any confusion between the Domain Name and the Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel notes that the actions of Respondent in this matter do not fall under the arguments set out in Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”)
Respondent has, without alternative explanation, registered a domain name that incorporates the dominant element of the MEDITECH Mark, along with a descriptive term to create a domain name almost identical to that used by Complainant. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the inherent nature of the Domain Name) and in the absence of any Response or other explanation for such inactivity by Respondent (or any possible good faith use of the Domain Name by Respondent), the Panel finds that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).
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.ne6t> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 17, 2023
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