Even if you’re a big pharmaceutical (pharma) company you might end up losing the UDRP. A German pharma company attempted to usurp the domain name MeditechPharmaceutical.com from its Indian registrant.
The Respondent argued that the Complainant is a “fake person” that “does not exist” adding that it holds the registered trademark for MEDITECH since 2015.
The three member panel found no evidence of bad faith in the registration and use of the domain, adding:
“The Panel finds there is sufficient evidence to support the averments of the Respondent, the Panel therefore finds that reverse domain name hijacking has occurred.”
Final decision: Deny transfer of the domain MeditechPharmaceutical.com to the Complainant, with a finding of Reverse Domain Name Hijacking (RDNH.)
Laura Grunwald v. Abhijeet Singh / Meditech Human Pharmaceutical
Claim Number: FA2307002053262
PARTIESComplainant is Laura Grunwald (“Complainant”), represented by Laura Grunwald, Germany. Respondent is Abhijeet Singh / Meditech Human Pharmaceutical (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is meditechpharmaceutical.com, registered with Dreamhost LLC.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Alan L. Limbury, Saravanan Dhandapani and Lars Karnøe (Panel Chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 14, 2023; Forum received payment on July 17, 2023.
On July 17, 2023, Dreamhost LLC confirmed by e-mail to Forum that the meditechpharmaceutical.com domain name is registered with Dreamhost LLC, and that Respondent is the current registrant of the name. Dreamhost LLC has verified that Respondent is bound by the Dreamhost 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 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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.com. Also on July 18, 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.
A timely Response was received and determined to be complete on July 20, 2023.
On June 27, 2023, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed Alan L. Limbury, Saravanan Dhandapani and Lars Karnøe (Panel Chair) as Panelists.
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.
RELIEF SOUGHT
Complainant requests that the domain name be cancelled.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a pharmaceutical company. Complainant has rights in the MEDITECH mark through a common law trademark. Respondent’s meditechpharmaceutical.com domain name is identical or confusingly similar to Complainant’s MEDITECH mark as it merely adds the generic word “pharmaceutical” and the “.com” generic top-level-domain name (“gTLD”).
Respondent lacks rights or legitimate interests in the meditechpharmaceutical.com domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the MEDITECH mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to sell goods that compete with those offered by Complainant.
Respondent registered and uses the meditechpharmaceutical.com domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to compete with Complainant. Furthermore, Respondent had actual knowledge of Complainant’s rights to the MEDITECH mark prior to registering the disputed domain name.
B. Respondent
Respondent argues that Complainant has not provided substantiated proof of common law ownership of the trademark. Further, Respondent argues that there is contradicting evidence of the claim that Laura Grunwald is the registrant and owner of the domain. Next, Respondent disputes Complainant’s rights to the mark. Additionally, Respondent argues the domain name meditechpharmaceutical.net was registered after suspension of meditechpharmaceutical.com but the registrant is unclear. Respondent alleges Complainant is a fake person and does not exist. Respondent argues it holds the registered trademark for MEDITECH since 2015.
FINDINGS
Respondent holds trademark rights for the MEDITECH mark. The Complainant has failed to support with the evidence produced by Complainant that Complainant has established prior common law rights in the MEDITECH mark. Complainant has failed to prove that Complainant holds rights in a trademark to which the domain name is identical or confusingly similar.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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.
Identical and/or Confusingly Similar
Respondent contends that the evidence Complainant provides for proving the common law trademark is incomplete. Respondent argues that the MEDITECH mark was designed by Abhhijeet Singh and was entitled to copyright of the mark since 2010. Respondent provides trademark registration information for the MEDITECH mark with the country of India, registration number 2998898, registered on May 10, 2015. The meditechpharmaceutical.com domain name was registered by Respondent on July 16, 2014. Respondent alleges that the meditechpharmaceutical.com domain name became available because Complainant had been suspended by the registrar for copyright claims in October 2013 brought by Respondent and then Complainant moved its business to meditechpharmaceutical.net. Next, Respondent alleges that the revenue report that Complainant provides to prove volume of sales is an unsubstantiated Excel document and should not be considered evidence. Additionally, Respondent argues that the proof Complainant provides to show key word search volume is flawed since there are multiple companies registered across the world using the term “MEDITECH”. Lastly, Complainant states in the Complaint, Point 24 that the Respondent was inactive until 2022, however, Respondent argues that Complainant acknowledged Respondent’s existence and mark in 2015 when they posted the notice of a “counterfeit website”.
Complainant relies on its claimed use of the meditechpharmaceutical.com and meditechpharmaceutical.net domain names to establish common law rights in the MEDITECH mark yet none of the Whois information provided by Complainant in relation to those domain names nor the material as to sales, advertising, website use etc. show the name Laura Grunwald.
Complainant’s own exhibit 15 shows Vithoon Jiravachborvornhij as “the lawful owner and user” of the meditechpharmaceutical.net domain name, in seeking to overturn the recent decision in ETABLISHMENTS TREMBLAY v. LAURA GRUNWALD, Claim Number: FA2303002036000. So, any trademark rights arising from the use of the MEDITECH mark on the website to which the meditechpharmaceutical.net domain name resolved prior to its recent cancellation cannot be attributed to Complainant.
Therefore, the Panel finds that the Complainant has not demonstrated common law rights in the MEDITECH mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Registration and Use in Bad Faith
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the meditechpharmaceutical.com domain name, of its rights to use the disputed domain name. Respondent alleges that Complainant knew of Respondent’s existence in 2015 when it had registered the MEDITECH mark as evidenced by its message dated November 25, 2015. The Panel finds that Complainant knew that the evidence produced does not establish that the Complainant has any relevant trademark rights. The Panel finds there is sufficient evidence to support the averments of the Respondent, the Panel therefore finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and declares that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the meditechpharmaceutical.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Saravanan Dhandapani and Lars Karnøe (Panel Chair), Panelists
Dated: August 8, 2023
