Abbott Diabetes Care Inc. v. Timo Kalweit / Webmedien
Claim Number: FA1607001683408
Complainant is Abbott Diabetes Care Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Timo Kalweit / Webmedien (“Respondent”), represented by Klaus Lodigkeit of Lodigkeit Rechtsanwälte, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <freestyle-libre.com>, registered with EPAG Domainservices GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2016; the Forum received payment on July 12, 2016.
On July 13, 2016, EPAG Domainservices GmbH confirmed by e-mail to the Forum that the <freestyle-libre.com> domain name is registered with EPAG Domainservices GmbH and that Respondent is the current registrant of the name. EPAG Domainservices GmbH has verified that Respondent is bound by the EPAG Domainservices GmbH 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 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2016 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@freestyle-libre.com. Also on July 13, 2016, 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 28, 2016.
Complainant’s Additional Submission was received by the Forum and determined to be compliant with Supplemental Rule 7 on July 29, 2016.
Respondent’s Additional Submission was received on August 3, 2016 by the Forum and determined to be compliant with Supplemental Rule 7 on August 4, 2016.
On August 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is at the forefront of diabetes care, focusing on the design, development and manufacture of diabetes management products as well as educating people with diabetes on living active, healthy lives. Its diabetes care unit had sales exceeding $1 billion in 2015 and sells products in more than 60 countries. People living with diabetes know they can count on Complainant’s FREESTYLE family of products to help them better manage their diabetes. Healthcare professionals depend on Complainant to provide them with state of the art tools to help them care for their patients. Complainant markets one of its diabetes management products through the FREESTYLE LIBRE mark, which it has registered in numerous jurisdictions around the world, including Germany, with rights dating back to 2014.
Complainant alleges that the disputed domain name is confusingly similar to the FREESTYLE LIBRE mark because it merely adds a hyphen (“-”) between the terms of the fully incorporated mark and appends the “.com” generic top-level domain (“gTLD”) to the end of the mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in or to the disputed domain. Respondent is not commonly known by the disputed domain. Respondent has not arranged any bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Instead, the resolving page displays the following pay-per-click links from which Respondent presumably profits: “Freestyle Blood Glucose Tester,” “Freestyle Meter,” “Freestyle Lite Test Strips,” “Freestyle Lite Glucose Meter,” Freestyle Testing Strips,” “Freestyle Lancets,” and “Abbott Freestyle.” Each of these links, when clicked, takes the user to a list of sponsored advertisements for third-party sites unaffiliated with Complainant that sell competing products. Respondent presumably receives click through revenues as a result of this arrangement, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant cites UDRP precedents to support its position.
In addition, says Complainant, there is a link stating that the domain “may be for sale by owner”. Clicking that link redirects Internauts to a “Sedo domain marketplace” which reflects that the domain is in fact for sale, representing further evidence of Respondent’s lack of rights and legitimate interests. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent registered and used the disputed domain in bad faith. Respondent has attempted to sell the disputed domain, imputing bad faith registration and use under Policy ¶ 4(b)(i). Next, Respondent has included competing hyperlinks, from which it presumably profits, which demonstrates bad faith under both Policy ¶¶ 4(b)(iii) and (iv). Lastly, while Complainant has demonstrated rights which predate Respondent’s (Complainant’s trademark registrations dating back to 2014, while the disputed domain name was registered on February 17, 2016), and Complainant’s demonstration of rights includes trademark registrations in Respondent’s country of origin (Germany), and the resolving website to the disputed domain displays hyperlinks which include Complainant’s name ABBOTT and the salient part of Complainant’s FREESTYLE LIBRE mark, the totality of the circumstances suggests that Respondent had actual or constructive knowledge of Complainant’s rights, which is bad faith under Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
B. Respondent
In an E-Mail to the Forum dated July 13, 2016, Respondent states: “I pointed out the deletion of the domain. (see below). Is the procedure done with it?”
In an E-Mail to the Forum dated July 14, 2016, Respondent asks: “If I delete the domain content, the process is then closed?”
In his formal response, Respondent does not address Policy ¶ 4(a)(i).
Respondent alleges that, regarding Policy ¶ 4(a)(ii), the domain was registered to create a website that gives neutral information about Complainant’s products. Respondent works in the field of medical treatments and has a legitimate interest in publishing information in that field. The resolution to an advertising landing page was unintentional and was automatically generated.
Respondent further alleges that, regarding Policy ¶ 4(a)(iii), he has been developing the final concept for the website, but was intending to do so in the following months. Respondent registered the domain five (5) months ago, and did not register with an intent to sell to Complainant, or to deprive Complainant of its rights in the mark.
C. Additional Submissions
Complainant
In its Additional Submission, Complainant alleges that Respondent provides no evidentiary support, and has not established demonstrable preparations for a bona fide offering of goods or services using the disputed domain name.
Further, says Complainant, Respondent may have misrepresented himself as being involved in the medical field, as a preliminary investigation by Complainant shows that Respondent is not involved in healthcare; rather, Respondent is engaged in an Internet business unrelated to healthcare. Respondent has also registered <amazohn.net> and <sex-tools.net> three days prior to registering the disputed domain, suggesting a modus operandi of bad faith domain registrations.
In addition, according to Complainant, upon being served with the Complaint, Respondent attempted to delete the disputed domain name. Respondent stated he had deleted the domain.
Respondent
In his Additional Submission, Respondent provides a document that, according to him, shows that he works in the health care insurance field and therefore deals with medical questions. This underlines the strong bona fide use of the disputed domain.
Further, says Respondent, he never planned to offer any goods and services on the resolving website, rather it was intended for the sharing of information about the product in the future.
Respondent alleges that he does not sell or buy domains via “webmedia.” Complainant’s argument that Respondent’s registration of the <amazohn.net> and <sex-tools.net> domains does not demonstrate any bad faith or bolster any argument under the Policy.
Respondent states that he tried to delete the disputed domain to avoid legal conflicts, which does not indicate bad faith.
Complainant owns rights in the mark FREESTYLE LIBRE dating back to 2014.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent has offered to sell the disputed domain name.
Respondent is using the disputed domain name to resolve to a web site that provides links to products and services that compete with those of Complainant.
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.
Prior to considering the three elements of the Policy, the Panel must deal with a procedural issue: the language of the proceedings.
Complainant requests that the language of this administrative proceeding be the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the German language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of English. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the German language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Respondent has submitted an English language Response, demonstrating that no prejudice would result in proceeding in English.
Therefore, pursuant to UDRP Rule 11(a), and given that persuasive evidence has been adduced that Respondent is conversant and proficient in the English language, the Panel decides that the proceeding shall be in English.
Complainant argues it has registered the FREESTYLE LIBRE mark in numerous jurisdictions around the world. The disputed domain name is confusingly similar to the FREESTYLE LIBRE mark because it merely adds a hyphen (“-”) between the terms of the fully incorporated mark and appends the “.com” gTLD to the end of the mark. Such alterations have been deemed nugatory under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Respondent does not contest that the disputed domain name is confusingly similar to a mark in which Complainant has rights. Therefore, the Panel finds that the disputed domain name is confusingly similar to the FREESTYLE LIBRE mark under Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed domain: the WHOIS lists,“Timo Kalweit / Webmedien” as registrant of record and Respondent has not contended that he has been commonly known by the disputed domain. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent alleges that the disputed domain name was registered to create a website that would provide neutral information about Complainant’s products. Respondent states that he works in the field of medical treatments, and has a legitimate interest in publishing information in that field.
But Respondent provides no evidence to support the allegation that he is in the process of developing a website that would give neutral information about Complainant’s products. As noted by the Panel in Morgan Stanley v. Yykk Snc, FA 1597661 (Forum Jan 28, 2015):
… Paragraph 4(c)(i) of the Policy provides that rights or legitimate interests may be demonstrated by demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
… Respondent asserts that she intends to use the domain name for an e commerce business relating to automotive parts, but has submitted no evidence to substantiate this claim. The Panel therefore finds that Complainant has satisfied its burden of proof on this issue.
The Panel finds that Respondent has not provided any evidence to support his allegations, and in particular he has not provided evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Accordingly, the Panel does not accept that his allegations suffice to establish that he has rights or legitimate interests in the disputed domain name, and this in particular because, as discussed below, the disputed domain name was used to resolve to a web page containing competing hyperlinks, and to offers to sell the domain name.
Respondent has not arranged any bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Instead, the resolving page displays the following pay-per-click links from which Respondent presumably profits: “Freestyle Blood Glucose Tester,” “Freestyle Meter,” “Freestyle Lite Test Strips,” “Freestyle Lite Glucose Meter,” Freestyle Testing Strips,” “Freestyle Lancets,” and “Abbott Freestyle.” Past Panels have agreed that competing hyperlinks cannot amount to a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Therefore, the Panel finds that Respondent’s use does not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent argues that the resolution to an advertising landing page was unintentional and was automatically generated. But Respondent is responsible for the content displayed on the resolving web page. The fact that it is automatically generated is irrelevant, as is the fact that Respondent may not have explicitly arranged for the content to be displayed. It suffices that Respondent allowed such content to be displayed, intentionally or not.
Further, the web page at the disputed domain name contains a link stating that the domain “may be for sale by owner”; clicking that link redirects to a domain name marketplace which reflects that the domain is in fact for sale. This represents further evidence of Respondent’s lack of rights and legitimate interests. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
Therefore, the Panel finds that this circumstance also shows that Respondent lacks rights or legitimate interests in or to the disputed domain per Policy ¶ 4(a)(ii).
Respondent makes the following arguments:
(i) Respondent has been developing the final concept for the website, but was intending to do so in the following months.
(ii) Respondent registered the domain five (5) months ago, and did not register with an intent to sell to Complainant, or to deprive Complainant of its rights in the mark.
(iii) Respondent never planned to offer any goods and services on the resolving website, rather it was intended for the sharing of information about the product in the future.
Respondent only provides one attachment as evidence, which is in the German language, and apparently shows that Respondent works in the health services field. All other statements amount to self-serving allegations that are not supported by any evidence. Therefore the Panel considers that they are not sufficient to establish that bad faith registration and use were not present. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where the respondent failed to provide any evidence to controvert the complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).
Respondent deleted the disputed domain name, apparently thinking that this would end the instant proceedings. While this is not evidence of bad faith, it does indicate that Respondent was willing to relinquish the disputed domain name once Complainant initiated legal proceedings.
Respondent admits that he knows about Complainant’s products and services. As noted above, the Panel does not accept Respondent’s argument to the effect that he intended to use the disputed domain name to develop a web site offering neutral information on Complainant’s products, and this in particular because the disputed domain name was used to provide competing hyperlinks and was offered for sale. Consequently, the Panel finds that Respondent registered the disputed domain name in bad faith in the sense of the Policy.
Further, again as noted above, Respondent has attempted to sell the disputed domain, which constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, since Respondent has offered the disputed domain to the public in a general offer for sale, the Panel finds that bad faith use under Policy ¶ 4(b)(i) is present.
Indeed, as noted above, Respondent has included competing hyperlinks, from which he presumably profits, which demonstrates bad faith under both Policy ¶¶ 4(b)(iii) and (iv). Past Panels have seen the inclusion of such competing links to evince bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that there is sufficient evidence that Respondent has engaged in bad faith under the bounds of Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freestyle-libre.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 11, 2016
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