The Complainant is Aesculap AG, Germany, represented by Friedrich Graf von Westphalen & Partner, Germany.
The Respondent is Hans Weber, Czech Republic.
The disputed domain name <aesculapkontor.info> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2021, 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. The Center sent an email communication to the Complainant on November 11, 2021 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 amendment to the Complaint on November 12, 2021.
The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Center received two informal emails from the Respondent; one on January 11, 2022 and the other on January 13, 2022.
The Center appointed John Swinson as the sole panelist in this matter on January 17, 2022. 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 is a German company that sells medical products and services used for surgery.
The Complainant owns registered trademark EUTM 018014638 for AESCULAP which registered on June 27, 2019.
The disputed domain name was registered on April 13, 2020.
According to the Complainant, the Respondent is a resident of Germany and is the managing director of Imperial Trading & Consulting GmbH (“Imperial Trading”).
In September 2021, the Regional Court of Mannheim issued an interim injunction against Imperial Trading and the Complainant prohibiting the use of the sign “AesculapKontor” for medical products and prohibiting the use of the website at the disputed domain name in connection with these medical products.
At one time, the website at the disputed domain name showed a photograph of a smiling doctor, included the Complainant’s AESCULAP trademark and associated logo, and had the words: “We help people in these difficult times to stay healthy and live life to the fullest. We provide products related to COVID-19.”
At the present time, the disputed domain name now redirects to <pandemica.de/en/> and has similar content to that described above, except that the Complainant’s trademark has been replaced with a “fighting covid” logo.
Both the previous and current version of the website includes links to products such as respirators, COVID tests, masks and medical gloves. When clicking on such links, the website in some cases displays these products for sale. In other cases, the webpage is a blank template page.
In summary, the Complainant made the following submissions.
The Complainant owns the registered trademark AESCULAP referred to in Section 4 above. The disputed domain name and the AESCULAP trademark are visually and phonetically highly similar. The addition of “Kontor”, which has a low degree of distinctiveness, is of little importance.
The Complainant’s AESCULAP trademark is registered in respect of class 10 medical products. The website at the disputed domain name sells products that are class 10 medical products.
The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent’s use of the disputed domain name is a trademark infringement, as confirmed by the Mannheim court when it issued an injunction of September 9, 2021.
The Complainant’s AESCULAP trademark is well-known, and the Respondent used this trademark as part of the disputed domain name to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. “Kontor” in the disputed domain name signifies a sales point, and thus the disputed domain name suggests that it is the website of an authorized sales point for the Complainant’s products.
The Respondent did not file a formal response. In informal emails to the Center, the Respondent stated “Ja nemluvím Anglicky” which is Czech for “I do not speak English.”
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 onus of proving these elements is on the Complainant, even where the Respondent does not file a formal response.
An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Captain Fin Co. LLC v. Private Registration, NameBrightPrivacy.com / Adam Grunwerg, WIPO Case No. D2021-3279.
Paragraph 15(a) of the Rules directs the Panel to decide the 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 18(a) of the Rules state:
“In the event of legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Complaint states:
“Proceedings before the Landgericht Mannheim (court ref.: 22 O 1/21): interim injunction of AESCULAP AG against Imperial Trading & Consulting GmbH and its managing director Hans Weber (annex 5): - ITC GmbH and Mr. Weber were both listed in the imprint of www.aesculapkontor.info. - By the decision of the Court the opponents have been forbidden to use the sign “AesculapKontor” for medical products, namely respirators and masks, rapid antigen tests, medical gloves, cancer drugs and other medical products and goods of medical need. Moreover, they have been forbidden to use the website www.aesculapkontor.info in connection with the above mentioned products.”
The Complainant included a copy of the injunction referred to in the Complaint, however the injunction is in German and the panelist cannot read German.
The present UDRP proceedings were filed by the Complainant believing that the disputed domain name was owned by Martin Kacena who was not a party to the Mannheim court proceedings. When the Registrar disclosed registrant details, the Complainant amended the Complaint to the current Respondent. When doing so, the Complainant stated:
“Before we filed the interim injunction, Mr. Hans Weber pretended that he is not the owner of the website “aesculapkontor.info”, but Mr. Martin Kacena (the current Respondent) is. As we know now, this information was wrong.”
The Respondent has not requested that the Panel suspend or terminate these administrative proceedings.
The Panel believes that suspension is not an appropriate action in this case as it could leave the matter unresolved for a period of time. Such a delay falls outside the aims of the of the Policy which is designed to be expeditious. See Galley, Inc. v. Pride Marketing & Procurement / Richard’s Restaurant Supply, Inc., WIPO Case No. D2008-1285.
Panels have exercised their discretion to proceed to a decision under paragraph 18(a) of the Rules despite the existence of concurrent legal proceedings. See Auer Lighting GmbH v. Domain Privacy LTD / The Tidewinds Group, Inc., WIPO Case No. D2009-1622 and the cases cited in that decision.
Additional factors that the panel has taken into account in deciding not to suspend or terminate these proceedings include that a court has issued an interim injunction that does not directly deal with ownership of the disputed domain name, it is unclear whether the Complainant is proceeding with further court action, it is unclear whether further court action will deal with ownership of the disputed domain name, and the Respondent mislead the Complainant in respect of his ownership of the disputed domain name.
By exercising its discretion to proceed to a decision, the Panel’s decision will not be binding on the Court, nor will it prevent the filing of any defenses or counterclaims by either the Complainant or the Respondent. See Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0426.
The first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns a registered trademark for AESCULAP.
The disputed domain name includes the Complainant’s trademark AESCULAP in its entirety. The only difference is that the word “kontor” is added at the end of the disputed domain name. The word “kontor” is German for “office” or “trading branch”. This change does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s AESCULAP trademark under the Policy.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc., WIPO Case No. D2017-0371.
The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s AESCULAP trademark.
The Complainant succeeds on the first element of the Policy.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services. Moreover, according to the Complainant, a court has issued an interim injunction in respect of the website at the disputed domain name, thus demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has prior rights in the AESCULAP trademark, which precede the registration of the disputed domain name by the Respondent.
The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
In the present circumstances, the fact that the disputed domain name initially resolved to a website which advertised products in competition to the Complainant’s products, and then after notification of this dispute or after the interim injunction, now diverts to a website at a different domain name but with substantially similar content, leads the Panel to conclude that the registration and use of the disputed domain name are in bad faith.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark.
The Respondent also misled the Complainant as to his association with the disputed domain name.
The Response filed by the Respondent states that the Respondent does not understand the English language. However, the website at the disputed domain name is in English.
The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
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 <aesculapkontor.info> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: January 31, 2022