The Complainant is Helsinn Healthcare SA of Lugano, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Crear Imagen sas, Crear Imagen of Miami, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2015. On June 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 July 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2015.
The Center appointed Richard Tan as the sole panelist in this matter on August 17, 2015. 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
The Complainant is the owner of the trademark HELSINN in several jurisdictions around the world, including Swiss Trademark Registration No. P-354118, International Trademark Registration No. 514239, Colombian Trademark Registration No. 403992 and US Trademark Registration No. 3946649 and has registered its mark as early as 1987.
The Respondent registered the disputed domain name on August 29, 2014. The disputed domain name does not resolve to an active web site. 5. Parties’ Contentions A. Complainant
The Complainant is part of the Helsinn Group of companies which includes the Complainant, Helsinn Holding S.A., Helsinn Advanced Synthesis S.A. (based in Switzerland), Helsinn Birex Pharmaceuticals Ltd. (located in Ireland) and Helsinn Therapeutics, Inc. (based in the United States of America). The Helsinn Group was founded in in 1976 in Chiasso, Switzerland and operates, develops and trades in pharmaceutical preparations and products. Its products are sold through distributors in 90 countries worldwide, including in the United States and South America, and has generated approximately CHF 1,082,300 in gross sales worldwide and invests approximately 21 percent of the turnover in Research and Development in the last years.
The Complainant and the Helsinn Group have been using the mark HELSINN worldwide since 1983, when the corresponding word was coined by the Company’s founders by the combination of the first three letters of the term “Helvethia” (which is the name of the Swiss Confederation) and the first three letters of the English word “synthesis”, which represents, according to the Complainant, its core business involving the synthesis of chemical compounds. The Complainant has a large product development capability ranging from lead optimizing, preclinical research and all phases of clinical development, with a proven expertise in cancer care, oncology, pain, inflammation and gastroenterology. The Complainant’s products are also sold around the world including in the South American and particularly the Colombian market where, according to the Complainant’s investigations, the Respondent appears to operate. The Complainant also owns in addition to trademark registrations around the world, registered as early as 1987, various domain names with the word “HELSINN” and also operates its corporate website with the domain name registered on January 7, 1999.
Upon the Complainant becoming aware of the Respondent’s registration of the disputed domain name, its authorized representative sent to the Respondent a cease and desist letter on October 28, 2014 and further reminder letters but received no response.
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the HELSINN trademark, which has been registered in many countries around the world.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In the Panel’s view, this threshold test is satisfied. The disputed domain name incorporates the Complainant’s trademark HELSINN in its entirety with the addition of the generic and descriptive word “pharma”, which is a common abbreviation of the word “pharmacy” or “pharmaceutical”, which describes the core business of the Complainant and the type of products it deals with.
The addition of a generic Top-Level Domain “.com” is insufficient to avoid a finding of confusing similarity as that is a requirement of registration.
In the Panel’s view, the test of confusingly similarity is clearly satisfied. The Panel accordingly finds that the disputed domain is confusingly similar to the Complainant’s trademark HELSINN. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant contends that the Respondent registered the disputed domain name long after the Complainant established its rights in the mark, which rights the Respondent would clearly have been aware of at the time of the registration of the disputed domain name.
The Panel finds that the Respondent is not and has not been commonly known by the disputed domain name, that the Respondent has not been granted any license or other rights to use the Complainant’s marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.
The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, the disputed domain name does not resolve to an active website. A mere passive holding of a domain name does not constitute “legitimate noncommercial or fair use.” See, for example, Netcentives, Inc. v. B.W. Brody Co.,WIPO Case No. D2000-0672. The Panel accepts the Complainant’s contentions.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.
The disputed domain name was registered well after the Complainant’s mark was registered and in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain name, as asserted by the Complainant.
The Respondent did not also reply to the Complainant’s cease and desist letters. The Panel accepts the arguments of the Complainant that such failure to respond is capable of supporting an inference of bad faith when viewed in the context of all the surrounding circumstances.
The Panel finds that the incorporation of the mark in question in its entirety as part of the disputed domain name may be an indication of bad faith under the circumstances. The Respondent’s choice of the disputed domain name incorporating the Complainant’s distinctive and invented or coined word HELSINN, with the addition of the word “pharma” that constitutes a clear reference to the Complainant’s products, suggests that the Respondent intentionally chose to register the disputed domain name in order to take advantage of the reputation of the Complainant’s trademark.
As established in a number of cases, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, an apparent lack of so-called active use (e.g., to resolve to a website) of the domain name even without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
Given that the disputed domain name consists of the Complainant’s trademark, which is a distinctive invented word, in combination with the generic word “pharma” referring to the Complainant’s business, the fact that the Respondent must have known of the trademark at the time of the registration of the disputed domain name but registered it nonetheless, and the absence of any authorization by the Complainant to its registration and use and the absence of any legitimate interest or right of the Respondent to register or use the disputed domain name, the Panel considers that it is unlikely that the disputed domain name could have been registered for any purpose except to intentionally create a false and misleading impression of an association between the disputed domain name and the Complainant’s mark. It is hard to imagine any use of the disputed domain name in these circumstances that would not be illegitimate.
Taking all these matters and circumstances into consideration, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 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.
Richard Tan
Sole Panelist
Date: August 23, 2015
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