WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Besins Healthcare Luxembourg Sarl v. TCG Kraakman, TCG Websolutions

Case No. D2020-2917

1. The Parties

The Complainant is Besins Healthcare Luxembourg Sarl, Luxembourg, represented by Nameshield, France.

The Respondent is TCG Kraakman, TCG Websolutions, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <androgelkopen.com> (hereafter referred to as the “Disputed Domain Name”) registered with The Registrar Company B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. On December 7, 2020, the Center received an email communication from the Respondent mentioning that it was informed of a complaint via the Registrar and asking for further information. The Center replied on December 8, 2020, that it was verifying that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”). The Center sent an email communication to the Complainant on the same day, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 2020.

On the same day, the Center and both Parties exchanged email communications regarding the language of proceedings.

Following another email communication from the Respondent indicating it was willing to settle the matter with the Complainant, the Center offered the Parties to explore settlement options by an email communication on December 9, 2020. On December 15, 2020, the Complainant sent an email communication to the Center requesting to reinstitute the proceedings.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. On January 8, 2021, the Center received a short email communication from the Respondent asking about the status of the proceedings. On the same day, the Center notified the Parties that it would proceed to Panel Appointment. The Center received one more email communication from the Respondent on January 18, 2021, in which the Respondent asks for clarifications once again.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 21, 2021. 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, Besins Healthcare Luxembourg SARL, is part of a group of pharmaceutical companies founded in 1885 and specialized in obstetrics, gynecology, urology and andrology. The Complainant’s group offers novel therapies for gynecology and andrology.

The Complainant’s group manufactures and sells a product under the name ANDROGEL, used for treating testosterone deficiency.

The Complainant is the owner of several trademarks for the sign ANDROGEL, such as the following:

- ANDROGEL, International word mark n°475204, registered since March 3, 1983, in class 5 and covering various countries and territories such as the Benelux, where the Respondent is located.

The Complainant also owns the domain name <androgel.nl>.

The Disputed Domain Name was first registered on September 23, 2015. According to the Registrar, the Disputed Domain Name was transferred to the Respondent on May 14, 2018. The Complainant provides screen prints of the website linked to the Disputed Domain Name. This website appeared to offer for sale the Complainant’s ANDROGEL product, and displayed the logo of the Complainant’s group, “BESINS HEALTHCARE Innovating for Well-being”. It also included information about competing products.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered and uses the Disputed Domain Name to intentionally attract visitors for commercial gain by creating confusion with the Complainant’s trademarks.

B. Respondent

The Respondent did not file a proper Response. Apart from several emails requesting clarifications about the Complaint and the present proceedings, the Respondent mentions that the website linked to the Disputed Domain Name has been online for years without any problems, and that it is an informative website.

6. Discussion and Findings

6.1. Preliminary Procedural Issue: Language of proceedings

Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.

According to information received from the concerned registrar, the language of the registration agreement for the Disputed Domain Name is Dutch. The Complaint has been submitted in English.

UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include:

- evidence showing that the respondent can understand the language of the complaint;
- potential unfairness or unwarranted delay in ordering the complainant to translate the complaint;
- other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.

On UDRP panel appointment, both parties’ arguments are provided to the UDRP panel for its determination as to the language of proceedings. This may include accepting the Complaint as filed, and a response in the language of the registration agreement, thereby seeking to give both Parties a fair opportunity to present their case (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the Complainant requests that English be the language of the proceedings, as (1) it is the language most widely used in international relations and (2) translating the Complaint into Dutch would require specialized translation services and therefore impose a significant burden on the Complainant. The Respondent states that its preferred language is Dutch.

The Panel observes that the Respondent was made aware of the present proceedings and further informed of the procedure with both English and Dutch communications from the Center. By accepting the terms and conditions of the registration agreement in Dutch and by the Center’s bilingual communications, the Panel finds that the Respondent was sufficiently informed about the content of these administrative proceedings. Moreover, although the Respondent indicated that its preferred language is Dutch, all of its communications to the Center have been sent in English. According to the Panel, this indicates that the Respondent can understand the language of the Complaint. Finally, the Panel observes that the Parties exchanged emails about a potential settlement in English. These discussions ended with the following statement of the Respondent: “If I don’t have to pay anything, not even in the future, I will await the procedure”.

In such circumstances, the Panel finds that it would be a disadvantage for the Complainant to be forced to translate the Complaint. As the Respondent had ample chance to defend itself but elected not to do so, the rights of the Respondent to defend itself and the right to equal treatment are guaranteed (see INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) v. Two B Seller, Estelle Belouzard, WIPO Case No. D2011-1978).

For these reasons and given the circumstances of this case as further explained below, the Panel determines that the language of the proceedings is English.

6.2 Substantive elements of the Policy

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s ANDROGEL trademark has been registered and is being used in various countries in connection to the Complainant’s pharmaceutical product for treating testosterone deficiency.

The Disputed Domain Name incorporates the Complainant’s ANDROGEL trademark in its entirety, simply adding the term “kopen”, which is the Dutch word for “buy”. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other (descriptive) terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0).

Additionally, it is well-established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s ANDROGEL trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “TCG Kraakman” from the organization “TCG Websolutions”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed.

Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). As mentioned under section A above, the Disputed Domain Name incorporates the Complainant’s ANDROGEL trademark and adds the term “kopen”, which means “buy” in Dutch. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant and cannot constitute fair use, especially for Dutch-speaking Internet users.

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).

The Panel observes that the website linked to the Disputed Domain Name appeared to offer for sale the Complainant’s ANDROGEL product, and displayed the logo of the Complainant’s group, “BESINS HEALTHCARE Innovating for Well-being”. In the Panel’s view, these clear references to the Complainant and its trademarked product indicate that the Respondent intends to impersonate the Complainant and attempts to mislead consumers into thinking that the ANDROGEL products purportedly offered on the website linked to the Disputed Domain Name originate from the Complainant. The Panel finds that such use demonstrates neither a bona fide offering of services nor a legitimate interest of the Respondent (see section 2.13.1 of the WIPO Overview 3.0).

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. The Respondent simply states that the website linked to the Disputed Domain Name is an informative website. According to the Panel, the following contradicts the Respondent’s statement:

- the Disputed Domain Name itself corresponds to the Dutch translation of “buy Androgel”;
- the website linked to the Disputed Domain Name appeared to include numerous clickable links mentioning “Nu bestellen”, which is the Dutch translation for “Order now”.

The Complainant does not specify if these links worked but even if not, the Panel finds that the content of the website linked to the Disputed Domain Name is misleading for Internet users as it clearly suggests a link with the Complainant’s group and ANDROGEL product.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location.

In the present case, the Panel finds it inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s distinctive trademark in its entirety, and the website linked to the Disputed Domain Name directly referred to the Complainant’s trademarked product by offering it for sale. Moreover, this website even displayed the logo of the Complainant’s group, “BESINS HEALTHCARE Innovating for Well-being”. A simple Internet search would have revealed the Complainant’s trademark rights. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).

The Respondent has been using the Disputed Domain Name incorporating the Complainant’s trademark to offer for sale the Complainant’s trademarked product without any authorization. In the Panel’s view, this indicates that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

The Respondent did not contest the foregoing in its email communications and did not file an official Response. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.

7. Decision

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 <androgelkopen.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: February 4, 2021