Shocking? Not really: An Indian company engaged in “Plan B” to usurp a 19 year old domain via the UDRP process.
Dr. Reddy’s Laboratories Limited, India, filed a UDRP at the WIPO to get 2DG.com, a domain registered in 2002. The “2DG” part allegedly infringed on the Complainant’s Indian marks of 2 DG, 2DG, and 2DEGE.
There is no proof that the Complainant’s marks hold any substantial fame, however, and the sole panelist pointed that out:
The Respondent did not formally respond; an informal communication was relayed to the WIPO panel disputing the allegations:
Final decision: Deny transfer of the domain 2DG.com to the Complainant. Full details follow.
Dr. Reddy’s Laboratories Limited v. Domain Internet Ltd, Domain Internet Ltd
Case No. D2021-1779
1. The Parties
Complainant is Dr. Reddy’s Laboratories Limited, India, internally represented.
Respondent is Domain Internet Ltd, Israel.
2. The Domain Name and Registrar
The disputed domain name <2dg.com> (the “Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. On June 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 9, 2021 providing the registrant and contact information disclosed by the Registrar and requesting that Complainant include the section of language of the proceedings in its Complaint. Complainant filed an amended Complaint on June 14, 2021.
On June 10, 2021, the Center received an email communication from a third party claiming to be the owner of the Domain Name and asking the Center to explain the nature of the dispute. The Center replied on June 14, 2021 stating that the Complaint was filed against Respondent and requesting the third party to identity itself. The third party did not reply to the Center’s email.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to the panel appointment process on July 13, 2021.
On July 19, 2021, the Center re-sent the Notification of the Complaint email of June 22, 2021 to Respondent at two additional email addresses including the one of the aforementioned third party as those email addresses were not included in the initial Notification of the Complaint email of June 22, 2021, granting Respondent an additional ten-day period to indicate whether it wished to participate in the proceedings. On July 28, 2021, Respondent submitted a reply.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 2, 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
Complainant was incorporated in India in 1984. Complainant describes itself as “one of the leading pharmaceutical companies in India.” According to Complainant, its products and services include active pharmaceutical ingredients, custom pharmaceutical services, generics, biosimilars, and differentiated formulations.
Complainant states that is has a paid-up capital of 830 million (no specific currency is indicated), and that its principal markets are India, the Russian Federation, the United States of America, the United Kingdom, and Germany.
Complainant alleges that it “has rights over the trademark 2 DG and owns numerous applications/registration for variations of its 2 DG trademark.” In aid of this statement, Complainant annexes to the Complaint a trademark application, apparently filed with the Government of India Trade Marks Registry, for the word mark 2 DG in connection with “pharmaceutical and medicinal preparations.” This trademark application was filed on May 16, 2021 and, as far as the Panel is aware, the mark has not yet been registered, its status being “objected”. There is no information in the application form annexed to the Complaint about when Complainant first used the 2 DG mark in commerce.
Complainant also annexes to the Complaint a trademark application, apparently filed with the Government of India Trade Marks Registry, for the word mark 2DG in connection with “pharmaceutical and medicinal preparations.” This trademark application was filed on June 3, 2021 and, as far as the Panel is aware, the mark has not yet been registered, its status also being “objected”. There is no information in the application form annexed to the Complaint about when Complainant first used the 2DG mark in commerce.
Complainant also owns a trademark registration with the Government of India Trade Marks Registry, Reg. No. 2897647, for the word mark 2DEGE, in connection with “pharmaceutical, medicinal preparations and substances.” This mark was registered effective February 3, 2015.
Although Complainant refers to its “famous suite of goods/services,” there is absolutely no evidence in the record of the degree of the renown of the marks 2 DG, 2DG, or 2DEGE.
The Domain Name was registered on March 5, 2002. The Domain Name does not resolve to an active website. As noted above, a third party sent an email to the Center on June 10, 2021, purporting to speak for Respondent. That person said in part:
“The domain is actually owned by us for years, so not even sure what the dispute is about. […] I do know that some time ago a lot of parties were interested in purchasing the domain from us, but nothing moved forward.”
This person also described the Complaint as a “waste of time” with “false accusations.”
On July 28, 2021, the same party wrote to the Center claiming to be the sole owner of the Domain Name since 2001, claiming to own more than 100 3-character domain names, and disclaiming any accusation that it sought to take advantage of third party trademark rights (having apparently turned down a number of offers for the Domain Name over the years).
5. Parties’ Contentions
Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not formally respond to Complainant’s contentions. A third party purporting to represent Respondent/own the Domain Name made a few comments by email, the relevant content of which is discussed above.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark 2DEGE through registration demonstrated in the record. (The Panel makes no finding on the alleged 2 DG and 2DG marks. As far as the record reveals, these marks are not registered, and Complainant has not presented any evidence that these marks were ever used in commerce, or any argument why Complainant should be considered to have rights at this time in these marks.)
The Panel finds that the Domain Name is confusingly similar to the 2DEGE mark. There is a visual and aural similarity between the mark and the Domain Name, and the mark is recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 need not consider this element in view of its finding below on the “bad faith” element.
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes from this lean record that Complainant has failed to prove that Respondent registered the Domain Name in bad faith. Complainant makes the strong assertion that Respondent registered the Domain Name “with actual knowledge of Complainant’s rights in the [trademark] 2 DG or variations thereof.” There is absolutely no proof to back up that bold claim.
The Domain Name was registered on March 5, 2002, nearly 20 years ago. There is no evidence in this record that Complainant ever used the marks 2 DG, or 2DG, or 2DEGE at any time prior to February 3, 2015, the date on which the mark 2DEGE was registered.
The Panel notes further that the Domain Name has a Second-Level Domain (“SLD”) comprised of three characters: a number and two letters. Domain names containing only three letters in the SLD are generally regarded as desirable for a variety of reasons, including their brevity and attendant convenience.
Respondent (as to which, see above) claims to have registered this Domain Name along with other such 3-character domain names albeit the ultimate purposes is not clear (it not being used, and said party/owner claiming to have rejected purchase offers). In any event, in the circumstances of this case and upon review of the lean record provided here, Complainant has not come close to meeting its burden of proving, on a balance of probabilities, that Respondent was targeting Complainant and its trademark at the time the Domain Name was registered.
The Complaint fails.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: August 16, 2021
Copyright © 2021 DomainGang.com · All Rights Reserved.