{
    "case_number": "CAC-ADREU-007080",
    "time_of_filling": null,
    "domain_names": [
        "www.doktormorris.eu"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "Jan Schlimgen (DocMorris N.V.)"
    ],
    "complainant_representative": null,
    "respondent": [
        "Melissa Jones"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is DocMorris N.V., a limited liability company registered under the law of the Netherlands.  It is a pharmacy called “DocMorris” that operates in Europe and offers medicines from its own premises, though mainly sends drugs ordered remotely via its website www.docmorris.de to its customers. \r\n\r\nThe Complainant is the licensee of Apotheke DocMorris Holding GmbH with regard to the following trademarks:\r\n\r\n- German national trademark DocMorris (word) number 304396729, applied for on July 13, 2004, and registered on December 9, 2004, for goods and services in classes 3, 5, 9, 35, 38, 42\r\n- community trademark 800 DocMorris (word) CTM 001388529, applied for on November 18,  1999, and registered on March 29, 2005, for goods and services in classes 5, 9, 35, 38, 42\r\n- community trademark DocMorris (word) CTM 003932423, applied for on July 14, 2004, and registered on November 8, 2005, for goods and services in classes 5, 9, 35, 38, 42\r\n- community trademark DocMorris (figurative) CTM 005242557, applied for on July 18, 2006, and registered on November 22, 2007, for goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44\r\n- community trademark DocMorris (figurative) CTM 005623608, applied for on December 29, 2006, and registered on February 11, 2008, for goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44\r\n- community trademark DocMorris (figurative) CTM 006047955 applied for on December 26, 2006, and registered on July 18, 2008, for goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44, and \r\n- community trademark DocMorris (figurative) CTM 006047971 applied for on December 26, 2006, and registered on July 14, 2008, for goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44. \r\n\r\nThe Respondent is Melissa Jones. The domain name in dispute, docmorris.eu, was registered by the Respondent on August 26, 2015. Under the domain in dispute, doktormorris.eu, the Respondent offers customers prescription medicines in the Federal Republic of Germany in the German language.  \r\n\r\nThe Complainant filed its Complaint on November 9, 2015. The formal date of the commencement of the ADR proceedings was fixed by the Czech Arbitration Court as November 23, 2015, and the Complaint notified to the Respondent.  The Respondent did not respond, and a Notification of Respondent’s Default was issued on February 1, 2016. \r\n\r\nOn February 12, 2016, the panelist, having filed the necessary Statement of Acceptance and Declaration of Impartiality and Independence, had been appointed.\r\n\r\nOn February 19, 2016, the Complainant was asked to provide additional evidence in the form of copies of the license agreements concerning the Community trademarks CTM 001388529, CTM 003932423, CTM 005242557, CTM 005623608, CTM 006047955, CTM 006047971, and the German trademark DE 30439672, together with an English translation thereof, and an English translation of the press release of May 25, 2013, attached as an annex to the Complaint. \r\n\r\nOn February 26, 2016, the Complainant provided the English translation of the press release of May 25, 2013. On March 9, 2016, the Complainant provided  a statutory declaration dated March 8, 2016, of Mr. Marcel Ziwica, one of the managing directors of DocMorris Holding GmbH, holder of the Community Trademarks CTM 001388529, CTM003932423, CTM 005242557, CTM 005623608, CTM 006047955, CTM 006047971 and the German trademark DE 30439672, stating that the aforementioned trademarks are licenced to the Complainant DocMorris N.V. without any limitation including the right to take legal action against any trademark infringements or impairments.",
    "other_legal_proceedings": "",
    "discussion_and_findings": "In order to render a decision, the Panel has to establish whether the conditions of Article 21(1) of Regulation (EC) No. 874\/2004 (“the Regulation”) are satisfied. \r\n\r\n“A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law, such as the rights mentioned in Article 10(1), and where it: (a) has been registered by its holder without rights or legitimate interest in the name; or (b) has been registered or is being used in bad faith.” \r\n\r\nEstablished Rights: \r\n\r\nArticle 10(1) lists as relevant prior rights, inter alia, registered national and Community trademarks and, where they are protected under national law, trade names, business identifiers and company names. \r\n\r\nThe Complainant has established his rights to several trademarks mentioned above.\r\n\r\nIn addition, based on the Complainant’s evidence and historical description, it should be concluded that the Complainant’s „DocMorris” trademark and corresponding tradename have become well-known (at least in the German market) at least from May 25, 2013, that is the date of publication of the survey according to which the term \"DocMorris\" can claim a (brand) awareness of 62% (highest among mail-order pharmacies).\r\n\r\nSimilarity \r\n\r\nThe next step after establishing the Complainant’s prior rights to the trademarks and trade name DocMorris is deciding whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. \r\n\r\nIt is well-established that the TLD extension of a domain name, in this case “.eu”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar pursuant to Article 21 (1) of the Regulation. \r\n\r\nAccordingly, „doktormorris” should be compared to “DocMorris”. \r\n\r\nBoth signs consist of two parts: the word “doc” \/ “doktor\" and “morris”. Consequently, the second part of both signs is identical. With regard to the first part of the signs, i.e. the words  “doc” \/ “doktor\", it should be noted that “doc” is a well-known and often used abbreviation of the word “doctor”, and the vast majority of consumers will perceive it as such. The word “doctor” will be perceived as “doctor” by the vast majority of consumers. \r\n\r\nIn light of the above circumstances, it should be concluded that the disputed domain name is confusingly similar to the Complainant’s trademarks and trade name. \r\n\r\nRights or legitimate interest\r\n\r\nThe Complainant contends that the Respondent has no right, including trademark or any other right, corresponding to the domain name, or any kind of legitimate interest to use the domain name. By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the disputed domain name. \r\n\r\nThere is nothing in the Respondent’s name that indicates the Respondent has been conducting business under a trade name which may have become commonly known by the disputed domain name, or any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.  On the contrary, the Respondent is using the domain to run a website which offers customers in the Federal Republic of Germany in German language prescription medicines – an activity which falls directly within the scope of the Complainant’s trademark rights. \r\n\r\nIt should be therefore concluded that the Respondent has no rights or legitimate interests in respect of doktormorris.eu. \r\n\r\nBad Faith\r\n\r\nAs shown by the Complainant, at the time the disputed domain was registered, the Complainant had been conducting his business for a number of years, and has achieved (brand) awareness of 62% (highest among mail-order pharmacies) in Germany. \r\n\r\nAccording to clause B11(f)(3) and (4) of the ADR Rules, for purposes of Paragraph B11(d)(1)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith: \r\n\r\n- the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or \r\n\r\n- the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and\/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent.\r\n\r\nThe Respondent’s use of the domain to run a website which offers customers in the Federal Republic of Germany in German language prescription medicines – an activity which falls directly within the scope of the Complainant’s activity and trademark rights - clearly shows that the domain is being used in bad faith, by intentionally choosing a domain name which would attract Internet users, for commercial gain to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s „DocMorris” trademarks and trade name. \r\n\r\nTherefore, it should be concluded that the disputed domain is being used in bad faith.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe domain name DOKTORMORRIS be revoked.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2016-02-19 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: doktormorris.eu\r\n\r\nII.     Country of the Complainant: Netherlands, country of the Respondent: Germany\r\n\r\nIII.    Date of registration of the domain name: August 26, 2015\r\n\r\nIV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n      \r\n        1. word trademark registered in Germany, reg. No. 304396729, for the term DocMorris, filed on July 13, 2004, registered on December 9, 2004, in respect of goods and services in classes 3, 5, 9, 35, 38, 42\r\n        2. word CTM, reg. No. CTM 001388529, for the term 800 DocMorris, filed on November, 18, 1999, registered on March 29,2005, in respect of goods and services in classes5, 9, 35, 38, 42\r\n        3. word CTM, reg. No. CTM 003932423, for the term DocMorris, filed on July 14, 2004, registered on November 8, 2005, in respect of goods and services in classes 5, 9, 35, 38, 42\r\n        4. figurative CTM, reg. No. CTM 005242557, for the term DocMorris, filed on July 18, 2006, registered on November 22, 2007, in respect of goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44\r\n        5. figurative CTM, reg. No. CTM 005623608, for the term DocMorris, filed on December 29, 2006, registered on February 11, 2008, in respect of goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44\r\n        6. figurative CTM, reg. No. CTM 006047955, for the term DocMorris,  filed on December 26, 2006, registered on July 18, 2008, in respect of goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44, and \r\n        7. figurative CTM, reg. No. CTM 006047971, for the term DocMorris, filed on December 26, 2006, registered on July 14, 2008 in respect of goods and services in classes 3, 5, 9, 16, 35, 38, 41, 42, 44. \r\n        7.   unregistered trademark: DocMorris\r\n        8.   trade name: DocMorris \r\n\r\nV.    Response submitted: No\r\n\r\nVI.   Domain name is confusingly similar to the protected right\/s of the Complainant\r\n\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. No\r\n        2. Why: Respondent has not shown any prior rights, and is using the domain name in bad faith\r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Yes\r\n        2. Why: The domain name is used for a commercial web site offering the same type of goods as the Complainant\r\n\r\nIX.   Other substantial facts the Panel considers relevant:\r\n\r\nX.    Dispute Result: Revocation of the disputed domain name\r\n\r\nXI.   Procedural factors the Panel considers relevant:",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}