The Complainant is Neilmed Pharmaceuticals, Inc. of Santa Rosa, California, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is Nguyen Thi Hoa of Hanoi, Viet Nam.
The Disputed Domain Name <shopneilmed.com> is registered with iNET Corporation (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2018. On February 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 5, 2018, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the Disputed Domain Name was Vietnamese. On March 7, 2018, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint in English and Vietnamese, and the proceedings commenced on March 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2018. The Respondent did not submit any formal response. The Respondent sent email communications to the Center on March 14 and 30, 2018. The Complainant sent an email communication on April 10, 2018.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 16, 2018. 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.
The Complainant, Neilmed Pharmaceuticals, Inc., is a California-based corporation, which was founded in 2000. The Complainant is a leading worldwide manufacturer, distributor and retailer of over-the-counter nasal and sinus care products, and the largest manufacturer and supplier of large volume, low pressure saline nasal irrigation systems in the world. The Complainant’s goods and services are marketed and sold to consumers throughout the world through various trade channels.
The trademark NEILMED has been used by the Complainant since 2000 in the United States and worldwide in connection with a variety of pharmaceutical preparations, medical and surgical devices, pharmacy retail services, and related goods and services. The Complainant has applied for registration of the NEILMED trademark in several countries and obtained registrations in the United States, such as No. 2865035 and No. 3331754 respectively registered on July 20, 2004 and November 6, 2007, and the Australian trademark No. 1258941 registered on June 5, 2009.
The Complainant is operating the two websites “www.neilmed.com” and “www.shop.neilmed.com” and other pages in various social media platform for promotion and sale of the goods and services under the NEILMED trademark in the United States and throughout the world.
The Respondent registered the Disputed Domain Name on November 6, 2017. The Disputed Domain Name used to resolve to an online shop of the Respondent advertising and offering for sale nasal and sinus care products, bearing the NEILMED mark. As of the date of this Decision, the Disputed Domain Name is inactive.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.
The Complainant contends that the Complainant has extensive, exclusive rights in the well-known and incontestable NEILMED trademark in the United States and throughout the world in connection with pharmaceutical preparations, medical and surgical devices, pharmacy retail services, and related goods and services.
The Complainant contends that the Disputed Domain Name is confusingly similar to trademark NEILMED owned by the Complainant and by arguing that:
- the Disputed Domain Name comprises the Complainant’s NEILMED trademark in its entirety;
- the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Name does not alleviate the similarity between the Disputed Domain Name and the NEILMED trademark.
- the addition of descriptive or indistinctive terms, such as “shop”, does not dispel the likelihood of confusion.
- by removing only the insignificant period from the Complainant’s website “www.shop.neilmed.com”, the Respondent is clearly using Complainant’s NEILMED trademark in an attempt to take advantage of the consumer’s mistake.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant argues that the Disputed Domain Name is not the trade name or company name of the Respondent. The Respondent is not commonly known by that name, nor a licensee of the Complainant, and nor otherwise authorized to use the Complainant’s NEILMED trademark.
Further, according to the Complainant, the use of the Complainant’s NEILMED trademark does not bear any legitimate relationship to the Respondent’s business but seeks to create a false association with the Complainant, and to attract visitors seeking the Complainant’s website and/or information about the Complainant’s goods and services for the Respondent’s own commercial gain. In order for the Respondent’s use to be considered legitimate, it must make non-infringing use of the Complainant’s mark, which it does not.
Third, the Complainant contends that the Respondent’s registration of the Disputed Domain Name was made for the purpose of creating a false association with the Complainant and its well-known and popular NEILMED trademark and goods, and thus, there is no legitimate reason for its continued registration and use of the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant asserts thatthe trademark NEILMED has a strong reputation and is widely known and well recognized in the United States and throughout the world.
Secondly, given the extensive use, promotion, advertising and publicity of the Complainant’s NEILMED trademark, and the fact that the Respondent’s website appears virtually identical to the Complainant’s website, the Respondent must have been aware of the Complainant’s rights in the NEILMED trademark when registering the Disputed Domain Name.
Third, the Complainant submits that the Respondent is seeking to create a false association with the Complainant by including the entirety of the Complainant’s well-known NEILMED trademark in the Disputed Domain Name and creating a website at the Disputed Domain Name that is virtually identical with or confusingly similar to the Complainant’s “www.shop.neilmed.com” website. According to the Complainant, Respondent clearly intended to attract Internet users to its retail store website and capitalize on the goodwill of the Complainant’s well-known NEILMED trademark for its own commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
The Complainant further argues that the Disputed Domain Name is a form of typosquatting because the Disputed Domain Name differs from the Complainant’s “www.shop.neilmed.com” website by the deletion of a single punctuation character rendering it confusingly similar to the Complainant’s website.
Finally, the Complainant contends that the products being promoted and sold via the Disputed Domain Name are counterfeit or otherwise unauthorized.
Therefore, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not submit any response to the Complainant’s arguments by the due date of April 2, 2018. However, on March 14 and 30, 2018, the Respondent sent to the Center two email communications informing that the Respondent would “remove” the Disputed Domain Name. However, in its emails, the Respondent did not respond directly to other issues as raised by the Complainant in the Complaint. The Panel draws an inference from the aforesaid emails of the Respondent in the below discussion.
The Complaint was filed in English on February 9, 2018. On February 14, 2018, the Registrar informed that the language of the Registration Agreement is Vietnamese, and the Center invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding; and invited the Respondent to comment on the language of the proceeding.
On March 7, 2018, the Complainant sent the Center an email requesting for English to be the language of the proceeding in the Complaint. The Respondent did not give any comments on this issue.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a United States business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and
(ii) the English language is quite popular in Viet Nam, where the Respondent is located, the website under the Disputed Domain Name contains English contents and the Respondent did send to the Center two email communications in English; these suggest that the Respondent has ample knowledge of the English language and is able to communicate quite well in English.
For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to NEILMED, well before the Disputed Domain Name is registered. Also, the Complainant has sufficiently demonstrated and evidenced that it has a continuous use of its trademark for its commercial activities and in particular offering nasal and sinus care products branded NEILMED.
Secondly, the Disputed Domain Name comprises the Complainant’s NEILMED mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix “shop”, a descriptive term. As such, the Panel finds that the term “neilmed” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as “shop”) to a trademark does not prevent confusing similarity. In other words, the addition of the prefix “shop” neither helps distinguish the Disputed Domain Name from the trademark, nor dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., Nike Innovate C.V. v. Melikssa Svensson, WIPO Case No. D2017-2357; Acer Incorporated v. Marco Martucci, WIPO Case No. D2017-2121).
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD suffix “.com” to the Disputed Domain Name does not constitute an element that may help avoid confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s NEILMED trademark, and the first element under paragraph 4(a) of the Policy is established.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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 Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the NEILMED trademark.
Considering whether or not the Respondent is making a bona fide offering of goods and services using the Disputed Domain Name, the Panel finds that on the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of relationship with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s
logo-typed trademark and photos of products, which are presented in the Complainant’s websites.
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.
The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a)(ii) of the Policy is established.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, 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.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith.”
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s NEILMED trademark has been registered in several countries, including the United States and Australia.
The Disputed Domain Name comprises the NEILMED trademark in its entirety, adding only the descriptive term “shop”. Given the extensive use of the NEILMED trademark by the Complainant, which occurs worldwide, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name, the contents of the website thereunder, and the Respondent’s admission that it is “my shortcomings to take the domain” and that “the name ʻshopneilmed.comʼ can be easily misunderstood to the ʻshop.neilmed.comʼ”, the Panel is of the view that the Respondent obviously knew of the Complainant and its NEILMED trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent to take advantage of the Complainant’s goodwill.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to an inactive website. However, it is well proved and evidenced by the Complainant that before becoming active, the Disputed Domain Name had been used to direct to a website selling nasal and sinus care products bearing the Complainant’s NEILMED trademark. At that time, in addition to the adoption of the Complainant’s trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent also used the Complainant’s logo-typed trademark and copyrighted photos of products on the website. Hence, the Respondent’s subsequent taking down of the website does not alter the Panel’s finding.
Further, the Panel finds that the Disputed Domain Name is confusingly similar to the subdomain name <shop.neilmed.com> of the Complainant. The difference between these two domain names is just an insignificant period between “shop” and “neilmed”. Hence, in this regard, the Panel agrees with the Complainant that this may be an example of the typo squatting, which takes advantage of the Internet users’ typographical errors.
With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <shopneilmed.com>, be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: April 24, 2018