The Complainant is Alliance Pharmaceuticals Limited of Chippenham, Wiltshire, United Kingdom of Great Britain and Northern Ireland, represented by Taylor Wessing LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Pavol Icik of Bratislava, Slovakia / Chen Xiaojie, Privacy Protection Service of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2014, 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 October 10, 2014 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 amended Complaint on October 15, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2014.
The Center appointed Zoltán Takács as the sole panelist in this matter on November 12, 2014. 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. Language of the Proceedings
The Complainant originally filed its Complaint in English against Chen Xiaojie, whose identity was then protected through the privacy protection service of the Registrar. In the Registrar verification of September 30, 2014 the Registrar disclosed the identity of the Registrant as Pavol Icik of Bratislava, Slovakia and informed the Center that the language of the registration agreement used in registering the disputed domain name is Slovak.
On October 10, 2014 the Center sent an email communication to the parties, and in part requested the Complainant to submit either a signed request that the language of the proceedings be English including any evidence or arguments in support of such contention, or a version of the Complaint translated into Slovak.
On October 13, 2014 the Complainant submitted to the Center a signed request that the language of the proceedings be English, claiming that both the Registrar’s website and the Respondent’s webpage at the disputed domain name are in English which demonstrate that the Respondent understands English. The Respondent did not file any response to the language of the proceedings issue.
According to paragraph 11(a) of the Rules “unless otherwise agreed by the Parties, or specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine othewise, having regard to the circumstances of the administrative proceeding.”
In this particular case, the Respondent’s website at the disputed domain name is in English which proves that the Respondent obviously understands English. The Respondent did not submit any response neither on the issue of the language of the proceedings, nor on the allegations contained in the Complaint filed by the Complainant.
The Panel is of the view that in consideration of these circumstances it would be unfair to the Complainant to rule that the language of the proceedings is Slovak. Such a ruling would cause significant delay in the proceedings as well as unnecessary costs incurred on the part of the Complainant and the Panel therefore decides that, in accordance with paragraph 11 of the Rules, English shall be the language of this administrative proceeding. 4. Factual Background
The Complainant is a subsidiary of Alliance Pharmaceutical plc, an international publicly owned pharmaceutical company listed on AIM, part of the London Stock Exchange. The principal activities of the Alliance pharmaceutical group are the acquisition, licensing and marketing of mature pharmaceutical products.
The Complainant owns a number of trademarks for LYPSYL, a brand of lip salve which has been sold since approximately 1891, e.g.:
- UK Trademark Registration LYPSYL No. 00000154666 filed on March 7, 1891 for pharmaceutical preparations for humans of class 05 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter, “the Nice Classification”);
- UK Trademark Registration LYPSYL No. 00001210535 filed on January 10, 1984 for cosmetics and non-medicated toilet preparations of class 03 of the Nice Classification.
The disputed domain name was registered on November 6, 2006.
Both at the time of submission of the Complaint and rendering of this decision the disputed domain name pointed to an English webpage containing various sponsored links related to skin care and cosmetics such as: Lypsyl Lyp Balm, lip naturals lip balm, Lypsyl, Favorite lip balm. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name reflects its LYPSYL trademark in its entirety, with the addition of the generic Top-Level Domain suffix “.com” which is purely descriptive and as such has to be disregarded. The Lypsyl name has been used since 1891 and has built up substantial reputation and goodwill, and since the disputed domain name is identical to its LYPSYL trademark, there is a real risk that Internet users will be confused.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) and (iii) of the Policy.
The Complainant argues that timing of registration of the disputed domain name and the fact that it is identical to an invented and inherently distinctive trademark demonstrates that the Respondent must have been aware of the Complainant’s LYPSYL trademark and must have registered the disputed domain name in bad faith.
The Complainant claims that the fact that the disputed domain name points to a webpage featuring sponsored links to third parties’ goods in direct competition with those of the Complainant evidence that the Respondent has registered and is using the disputed domain name to misappropriate the goodwill behind the Complainant’s LYPSYL trademark and redirect Internet traffic intended for the Complainant for its own purposes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent and registrant of the disputed domain name 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. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced sufficient evidence that it holds registered rights in the trademark LYPSYL. For the purpose of this proceeding, the Panel establishes that the Complainant’s UK Trademark Registrations No. 00000154666 and 00001210535 both for the mark LYPSYL satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the LYPSYL mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the LYPSYL mark of the Complainant.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold test for identity or confusing similarity under the Policy the relevant trademark would generally need to be recognizable as such within the domain name and the applicable top-level suffix in the domain name would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration).
The only element in the disputed domain name – other than the gTLD “.com” suffix which is usually disregarded under the confusing similarity test – is the inherently distinctive LYPSYL trademark of the Complainant.
The Panel finds that the disputed domain name is identical to the LYPSYL trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) they have been commonly known by the domain name;
(iii) they are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark LYPSYL.
The Complainant never authorized the Respondent to use its LYPSYL trademark in any way, and the Complainant’s prior rights in the LYPSYL trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the disputed domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so it failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant presented extensive and undisputed evidence which convince the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
In view of the Panel there can be little doubt that the Respondent knew about the existence of the Complainant’s LYPSYL trademark at the time of registering the disputed domain name, by which time the LYPSYL trademark was widely used for over a century to market products identical to or similar with those the Respondent uses on sponsored links of its website.
The Panel finds therefore that the Respondent has deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark which is clear indication of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Under these circumstances the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
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 be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Date: November 25, 2014
Full & Egal Universal Law Academy