The Complainant is EISAI Inc. of Woodcliff Lake, New Jersey, United States of America, represented by Squire Patton Boggs (UK) LLP, United States of America.
The Respondent is Frank Mao of Shenzhen, Guangdong, China / Li Yuzhou of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2015. On December 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2015, 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 December 14, 2015 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 December 18, 2015.
On December 14, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On December 15, 2015, the Complainant confirmed its request that English be the language of the proceeding by email to the Center. On December 28, 2015, the Respondent submitted its request that Chinese be the language of proceeding.
The Center verified that the Complaint 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 the Respondent in English and Chineseof the Complaint, and the proceeding commenced on December 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2016. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the proceeding to the panel appointment on January 19, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on January 26, 2016. 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.
Following the appointment of the Panel and after the Panel had prepared the first draft of its decision, on January 31, 2016, the Respondent filed a Response. On February 2, 2016, the Complainant filed a “Reply to the Respondent’s Untimely Response”. In the normal course, the Panel would have not considered either the late Response or the Reply on the basis they had been filed too late. Attached to the Reply, the Complainant provided further evidence – namely, its trademark registration certificate in China. – As the trade mark certificate was an important piece of evidence the Panel wished to consider in making its decision, the Panel in fairness to the Respondent also considered the Response. 4. Factual Background
The Complainant is an American pharmaceutical company. One of its drugs is Hexalen which is used in chemotherapy. The Complainant commenced selling Hexalen in 2010.
The Complainant is the owner of the trademark HEXALEN registered since 1989 in the United States of America and China. The original registration was US Bioscence. By a series of assignments, the marks were assigned to the Complainant in 2009.
The disputed domain name was registered in 2002.
The website at the disputed domain name resolves to is a landing page with advertisements for cancer drug sites. The advertisements are in English. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical to the Complainant’s registered trademark HEXALEN.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for HEXALEN. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent’s knew of the Complainant predecessor’s rights in the mark HEXALEN and acquired the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant’s business.
The website the disputed domain name resolves a page which advertises cancer products suggesting an intention to monetize the disputed domain name. B. Respondent
The Respondent claimed, in essence:
1. that “Hex” and “Alen” are two common words;
2. it has been the legal owner of the disputed domain name registered with ICAAN;
3. that it has registered the disputed domain name for 14 years to provide shopping information to Chinese consumers in an efficient way; and
4. the content generated on the website is generated by a third party and does not show the registration was in bad faith. 6. Discussion and Findings
Language of Proceedings
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise 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 otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be English the on grounds that the website at the disputed domain name had been entirely in English.
The Respondent requested the language of proceeding be in Chinese.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
Given the merits of the case being strongly in favour of the Complainant; and that the website under the disputed name was entirely in English, the Panel does not consider it appropriate to require the Complainant to translate the Complaint.
The Panel determines to follow the Center’s preliminary determination. Accordingly, the Panel accepts the Respondent’s Response in Chinese. It will render its decision in English.
Substantive Decision A. Identical or Confusingly Similar
The disputed domain name is other than the generic Top-Level Domain (gTLD) “.com” identical to the Complainant’s trademark HEXALEN. Even if the name is derived from the word “Hex” and the name “Alen” as the Respondent asserts, this would not affect the identity of the trademark and the disputed domain name. The alleged derivation of the name may be relevant to the question of rights and legitimate interests or whether the mark has been registered and used in bad faith and will be considered below.
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a Respondent may establish they have rights and legitimate interests. These are:
“(i) before any notice to you 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 (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 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 Respondent has not presented any evidence to establish rights or legitimate interests under these heads. The Respondent has said the disputed domain name is made up of the words “Hex” and “Alen” but given no explanation as to why these words were chosen nor provided any evidence that it has been known by these names.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith:
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith. Although it was registered in 2002, this was after the Complainant’s predecessor in title registered its trademark for HEXALEN in 1999. Hexalen is an invented word with no meaning. No explanation has been offered by the Respondent as to why he has chosen to register a domain name combining “Hex” and “Alen” together. In the circumstances the Panel infers the Respondent knew of the Complainant’s predecessor’s rights in the trademark HEXALEN when it registered the disputed domain name.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website under the disputed domain name was being used to attract users to the website by being used as a landing page hosting sponsored links for cancer drugs.
The element part of paragraph 4(a) of the Policy is, therefore, 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.
Douglas Clark
Sole Panelist
Date: February 15, 2016
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