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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Biomedica Pharma-Produkte GmbH v. Jucco Holdings

Case No. D2006-0526

 

1. The Parties

The Complainant is Biomedica Pharma-Produkte GmbH, Heinrichsthal, Germany, of Germany, represented by Dr. Peter Pfortner, Germany.

The Respondent is Jucco Holdings, Los Angeles, CA, United States of America, of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <formoline.com> (the “Domain Name”) is registered with NameKing.com (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2006. On April 27, 2006, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On the same date, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2006. In accordance with the Rules, paragraph 5(a), the date due for Response was May 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2006.

The Center appointed Anna Carabelli as the sole panelist in this matter on June 1, 2006, indicating that absent exceptional circumstances the decision would be due by June 15, 2006. 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.

 

4. Factual Background

The Complainant has provided evidence (attachments 4 and 5 to the Complaint) of registration of the following trademark registrations reflecting the name FORMOLINE:

- EU Reg. No. 002350346 filed on August 22, 2001, in connection with international classes of goods and services CL. 5 and 29;

- German Reg. No. 1137144 filed on September 1, 1998, in connection with international classes of goods and services CL. 5.

The Respondent registered the Domain Name on March 11, 2004 (attachment 1 to the Complaint).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Complainant’s trademark FORMOLINE is used for a health care product to manage health problems concerning excessive weight in various EU countries including Germany;

- the Domain Name is identical to the Complainant’s trademark;

- the Respondent has no right or legitimate interest in the Domain Name since: (i) there is no indication of the Domain Name being used in connection with a bona fide offering of goods and services or of the Respondent’s making or intending to make a legitimate non-commercial or fair use of the Domain Name according to paragraphs 4(c)(i) and 4(c)(iii) of the Policy; (ii) there is no indication that the Respondent was known by the Domain Name according to paragraph 4(c)(ii) of the Policy or has acquired any rights in the Domain Name; (iii) the Respondent has been using the Domain Name to divert consumers to a site containing commercial databases and a list of internet shops offering, amongst others, products of the Complainant;

- the Domain Name was registered in bad faith since from the website “www.juccoholdings.com” it appears that the Respondent’s main business is to acquire domain names for the purpose of selling them for a valuable consideration;

- the Domain Name is being used in bath faith, since (i) by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain; (ii) the display on the Respondent’s website of sponsored links to other commercial websites allows the Respondent to collect a financial remuneration proportional to the number of connections.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, a Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has proven to have acquired trademark rights in the designation FORMOLINE by virtue of two registrations with the Office for harmonization in Internal Market and with the German Patent and Trademark Office dating back to 2001 and 1998, respectively.

Since the Domain Name incorporates the Complainant’s trademark FORMOLINE entirely the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name because: (i) there is no indication of the Domain Name being used in connection with a bona fide offering of goods and services or of the Respondent’s making or intending to make a legitimate non-commercial or fair use of the Domain Name according to paragraphs 4(c)(i) and 4(c)(iii) of the Policy; (ii) on the contrary, the Respondent appears to have been making an illegitimate use of the Domain Name for commercial gain by displaying on its web page some sponsored links to other commercial websites (as shown by attachment 6); (iii) there is no indication that the Respondent was known by the Domain Name according to paragraph 4(c)(ii) of the Policy.

The Complainant has put forward prima facie evidence that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed by many WIPO UDRP decisions, in such a case the burden of proof shifts on the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; Belupo d.d.v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Respondent has not filed any submission or evidence in order to rebut the Complainant’s prima facie evidence.

There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.

The Panel therefore finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant is relying on paragraphs 4(b)(i) and (iv) of the Policy, which provide that sufficient evidence of bad faith may consist of:

“(i) Circumstances indicating that you have registered or that you have required 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 your documented out-of-pocket costs directly related to the domain name”;

or may occur when:

(iv) By using the domain name, you [i.e., the respondent] have intentionally attempted to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Based on the Complainant’s allegations and documents, in the Panel’s opinion the Domain Name may be deemed to have been registered and used in bad faith for the following reasons.

As established above, the Domain Name is identical to the Complainant’s trademark and the Respondent has no rights or legitimate interests in the Domain Name.

Attachments 4 and 5 to the Complaint show that the Complainant’s first trademark registration for FORMOLINE dates back to 1998. The Complainant alleges that it has been using the trademark FORMOLINE to identify a health care product (Formoline L112) for the treatment of excess weight in many EU countries including Germany. The Panel visited the web site “www.formoline.de” and “www.L112.com” referred to in the Complaint and found confirmation of the above. On the other hand, on searching the Internet for “formoline” with two search engines (i.e., Google and Yahoo!), the Panel was invariably directed to the Complainant’s product. The Panel may therefore reasonably consider that the Respondent was aware of the Complainant’s trademark at the time when it registered the Domain Name.

The Panel also tried to visit the website “www.formoline.com” without success. As a matter of fact, the Domain Name appears to be presently inactive since no website was found. However, the Complainant provided a printout of a webpage from a search portal displaying information on <formoline.com< (attachment 6) from which it may be inferred that the Respondent used the Domain Name to route Internet users to a website providing various sponsored links related to a wide range of different services and products including diet pills, Formoline, L112, and weight loss program, although no link or reference to the Complainant’s web sites “www.formoline.de” and “www.L112.com” are provided. In this connection the Panel notices that it is now a well known practice to display on a web page or search engine various links to other commercial websites, for every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. Previous panels have established that this practice constitutes bad faith use (Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062).

The Complainant has also provided copies of the printout of the website “www.juccoholdings.com” (attachment 7) which appears to run an automatic process for the acquisition/transfer of domain names. It is not clear how this system works, and the Complainant did not submit any evidence or conclusive allegation (e.g. of having attempted to obtain the transfer of the Domain Name by making an application to the Respondent) that the Respondent would have requested a price in excess of documented out-of-pocket costs directly related to the registration of the Domain Name, for the transfer of the latter. As a consequence, the Panel does not accept the Complainant’s allegation in that respect.

Nonetheless, based on all the foregoing considerations and on the fact that the Respondent has failed to submit a Response, the Panel finds that the Domain Name has been registered and is being used in bad faith by attempting to attract for commercial gain, Internet users to the Respondent’s website or other on-line locations, by creating a likelihood of confusion with the Complainant’s trademark.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <formoline.com> be transferred to the Complainant.

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Anna Carabelli
Sole Panelist

Date: June 15, 2006