The Complainant is Actelion Pharmaceuticals, Ltd of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is Whois Privacy Protection Service, Inc of Kirkland, Washington, United States of America (“US”) / Robin Bhattacherjee of Rand Burg, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2016. On November 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2016, 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 1, 2016, 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 amendment to the Complaint on December 3, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2016. The Center appointed George R. F. Souter as the sole panelist in this matter on January 5, 2017. 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 a Swiss biopharmaceutical company focused on the discovery, development and commercialisation of innovative drugs for diseases with unmet medical needs. The company was founded in 1997, and has been quoted on the Swiss Stock Exchange since 2000. It has 30 operative affiliates throughout the world, including in the United States, where the Respondent is domiciled, details of which have been supplied to the Panel. The Complainant has registered its ACTELION trademark widely throughout the world, and the Panel has been supplied with details of these registrations, including US registration 3148269 and International Registration 869683, both dating from 2005.
The disputed domain name was registered on July 12, 2016 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its ACTELION trademark, containing the Complainant’s mark in its entirety, with the mere addition of a hyphen followed by the geographical initials UK, denoting the United Kingdom.
The Complainant alleges the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent is not known by the disputed domain name, and is not using the disputed domain name in conjunction with a bona fide offering of goods or services.
The Complainant alleges that the disputed domain name has been registered in bad faith, and is being used in bad faith even though the disputed domain name is not currently being actively used in connection with a website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent 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
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.
The Panel accepts that the Complainant has the necessary trademark rights for the purposes of these proceedings. It is well established under the UDRP that the mere addition to the Complainant’s trademark of descriptive or non-distinctive elements will be insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel finds that the additional hyphen and the letters “uk” to the Complainant’s ACTELION trademark are descriptive or non-distinctive elements, and, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may, in appropriate circumstances, may support an inference that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which he can find no rational reason for the incorporation of the Complainant’s ACTELION trademark (which is an invented word) into the disputed domain name other than being an attempt to take advantage of the reputation attached to that trademark, as sufficient to justify a finding that the disputed domain name has been registered in bad faith, and the Panel, accordingly, finds that the disputed domain name was registered in bad faith.
In connection with use in bad faith, the Panel agrees with the panel’s reasoning in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and, in the circumstances of the present case, can find no plausible alternative reason for the adoption of the disputed domain name to a deliberate attempt to illegitimately profit from the reputation of the Complainant’s ACTELION trademark. Further, the Panel is convinced that the registration of the disputed domain name poses a real threat to the legitimate interests of the owner of the trademark ACTELION. The Panel, therefore, finds that the disputed domain name is being used in bad faith and that, accordingly, the Complainant has satisfied the dual requirements 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.
George R. F. Souter
Sole Panelist
Date: January 25, 2017
Full & Egal Universal Law Academy