The Complainant is Actelion Pharmaceuticals, Ltd of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is Fernando Bautista, Agrana 79880688 of Bogotá, Colombia. 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 10, 2017.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 10, 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 well-established Swiss company that operates in the field of biopharmaceutical products on a worldwide basis. The Complainant has acquired many trademark registrations for its ACTELION mark, including International Trademark Registrations (e.g., Registration No. 869983, registered August 15, 2005; and Registration No. 1285310, registered on December 17, 2015).
The Respondent is the owner of the disputed domain name, , which he registered on May 11, 2016. The disputed domain name is attached to a website that offers links to additional websites, some of which offer the Complainant’s products and others that offer the products of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
- The Complainant, founded in 1997 in Allschwil/Basel, Switzerland, is a leading biopharmaceutical company focused on the discovery, development and commercialization of innovative drugs for diseases with significant unmet medical needs. The Complainant has 30 affiliates around the globe and engages in distribution, sales and marketing on a worldwide basis.
- The Complainant has registered its ACTELION trademark in numerous countries and jurisdictions throughout the world, including with an international authority that specifically directs that mark toward Columbia, the domicile of the Respondent. Moreover, the Complainant owns and operates through many domain names that contain its mark, such as .
- The disputed domain name, , which incorporates the Complainant’s ACTELION trademark, is confusingly similar to that mark. The addition of the letters “jp”, which can be understood as referring to Japan, does not distinguish the name from the mark. Furthermore, the addition of the generic Top-Level Domain (“gTLD”), “.com”, is not relevant with respect to any such distinction.
- The Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that he is commonly known by that name, which is distinctive and without relevant generic meaning. Moreover, the disputed domain name is used to host a website that features links to the Complainant’s products as well as to those of the Complainant’s competitors. Such use is not legitimate.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s mark is well-known worldwide, and the Respondent was certainly aware of it when he registered the disputed domain name. Moreover, the Respondent ignored repeated contact attempts initiated by the Complainant, including a cease-and-desist request and an offer to secure a voluntary transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) - (iii), the Panel may rule in favor of the Complainant and order that the disputed domain name, , be transferred, if the Complainant proves that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In line with the Complainant’s submission of pertinent evidence (Annex 7.1) of its valid International Trademark Registrations for the ACTELION trademark, the Panel concludes that the Complainant has satisfactory rights to proceed in this case. A similar conclusion has been reached in several prior UDRP decisions. See, for example, Actelion Pharmaceuticals, Ltd v. Miles Richey, Richey Fixnet,WIPO Case No. D2016-1612; Actelion Pharmaceuticals, Ltd Corporation Switzerland v. Rsinal Indana,WIPO Case No. D2016-1042; and Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel,WIPO Case No. D2016-0068 (“...the Complainant is the registered owner of ACTELION, i.e. International Trademark Registration No. 869983, registered in 2005...and US Trademark Registration No. 3148269, registered in 2006...”).
Visual inspection enables the Panel to determine that the disputed domain name, , is not identical to the ACTELION mark, though the name does include the mark in its entirety. As a result of that inclusion, the Panel believes that the disputed domain name bears little distinction from that mark, because the addition of a hyphen and the letters, “jp”, which often serve as an abbreviation for “Japan”, are not significant. The Complainant’s mark dominates the name and the casual Internet user might assume wrongly that the name is connected to the Complainant marketing its products in Japan. Thus, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. See, F. Hoffmann-La Roche AG v. Domain Administrator, See PrivacyG and Dmitry Petroff,WIPO Case No. D2015-0997 (finding to be confusingly similar to the ACCUTANE mark, saying “[t]he expression “ok” and the “hyphen” are not enough to avoid confusion by Internet users.”); and DHL Operations B.V. v. ZLEX,WIPO Case No. D2007-1612 (finding to be confusingly similar to the DHL mark, opining “[t]he addition of 'dg-' leaves the domain name in issue still looking confusingly like the Complainant’s mark.”).
The Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a Response and thus has put forth no arguments to support a claim to rights or legitimate interests in the disputed domain name. Meanwhile, the Complainant has sustained a prima facie case that the Respondent lacks such rights or interests by demonstrating above that the name is confusingly similar to the ACTELION mark and contending persuasively that the Respondent, Fernando Bautista, is very unlikely to be commonly known as . As a consequence, the Panel must detect from the record a compelling rebuttal to that prima facie case if the Respondent is to prevail as to this element of the Policy. See, Hermès International v. Registrant [3585485]: Boris Moser,WIPO Case No. D2011-0406 (“It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent’s responsibility to prove otherwise.”); and Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261 (“Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain name at issue, the Respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption.”).
As the Complainant has pointed out to the Panel, the disputed domain name has no descriptive meaning since the ACTELION mark is fanciful and not a generic term. Thus, there is no evidence that the Respondent could possibly use the name for its descriptive value. On the contrary, the Complainant has provided the Panel with evidence (Annex 9) that the disputed domain name is used to host a website that furnishes links not only to the Complainant’s products, but to products from its competitors. Countless prior Policy panels have concluded that such action constitutes neither a bona fide offering of goods or services per Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use of a disputed domain name per Policy paragraph 4(c)(iii). See, Brink's Network, Inc. v. Asproductions,WIPO Case No. D2007-0353 (“Respondent initially used the [disputed] Domain Name to forward visitors to a website that offered services competitive with those of Complainant, and later used the [disputed] Domain Name in connection with a website that offered sponsored results that provided links to websites that promote the goods and/or services of Complainant’s competitors. Such commercial use does not constitute use of the [disputed] Domain Name in connection with a bona fide offering of goods or services, and is not legitimate non-commercial or fair use.”); and Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304 (“The website to which the [disputed] Domain Name resolves...contains links to other sites that offer...services that appear to compete with those offered by Complainant. This type of use is neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).”).
Since the Panel can find no evidence in the Record, considering Policy paragraph 4(c) or otherwise, to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, that case must stand as conclusive as to this issue. See, Société Nationale des Chemins de Fer Français v. yves Mw Invest,WIPO Case No. D2009-0358 (“The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.”).
The Panel rules that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
As noted above, the Complainant has provided clear and convincing evidence that the disputed domain name is used to host a website that furnishes links to the Complainant’s products and to products from its competitors. As have many other previous UDRP panels confronting similar circumstances, the Panel believes that the Respondent likely derives commercial gain in the form of click-through fees connected to such links. The Panel also concludes that the Respondent intended when he registered the disputed domain name to generate likely confusion as to whether it was connected with the Complainant’s mark with respect to the source, sponsorship, affiliation or endorsement of the Respondent’s website. As a result, the Panel determines that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. See, Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462 (“The Respondent is deriving a financial benefit from web traffic diverted through the [disputed] Domain Name to linked websites on the [disputed] domain [name] parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy.”); and Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231 (“The Panel further infers that the Respondent is benefiting from this confusion by receiving 'click-through' commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal. Accordingly, the Panel considers that the circumstances constitute evidence of bad faith registration and use of the [disputed] Domain Name in accordance with paragraph 4(b)(iv) of the Policy.”).
The Panel concludes that the Complainant has satisfied the requirements of Policy paragraph 4(a)(iii). 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.
Dennis A. Foster
Sole Panelist
Date: January 24, 2017
Full & Egal Universal Law Academy