The Complainant is Shire Human Genetic Therapies, Inc. of Lexington, Massachusetts, United States of America ("United States"), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Domain Administrator (Xia Yaa) of Beijing, China, self-represented. 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 April 20, 2017. On April 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2017, 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. In response to a notification by the Center requesting the clarification of the Registrar identified in the Complaint, the Complainant filed an amended Complaint on May 5, 2017.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. The Response was filed with the Center on May 29, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on June 14, 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 global biotechnology company which focuses on helping people with rare diseases.
On March 15, 2016, the Complainant applied (no. 86940710) for a United States trade mark for "THEXYA" in international class 5. That application is still pending.
The Complainant owns international trade mark no. 1296231 for "THEXYA" in class 5, filed on March 19, 2016.
The disputed domain name was registered on March 19, 2016, via a privacy / proxy service.
On March 21, 2016, the Complainant filed an application for a European Union trade mark for "THEXYA" in class 5. That mark has been registered on July 26, 2016 under no. 015250244.
On March 29, 2017, the Complainant sent a cease and desist letter to the Respondent by email.
As of April 5, 2017, the disputed domain name resolved to a website which was headed "MEET THE XYA" and included the statement "Hello, Welcome to TheX—Xia Yaa's blog site." as well as additional text in Chinese. 5. Parties' Contentions A. Complainant
A summary of the Complainant's contentions is as follows:
The Complainant is well-known for its international biotechnological practice in the treatment of rare diseases and it seeks to expand its activities through its "THEXYA" trade mark.
The Complainant relies on its registered trade marks. The Policy does not require that the Complainant's trade marks be registered before the disputed domain name. The location of protection and date of registration are irrelevant.
The disputed domain name incorporates the Complainant's trade mark in its entirety and is identical to the Complainant's trade mark, disregarding the sufix.
The Respondent lacks rights and legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name. This is shown by the Respondent's use of a privacy / proxy service.
The Respondent has not acquired relevant trade mark rights and the Respondent's registration and use of the disputed domain name was not authorised by the Complainant.
The disputed domain name did not resolve to a website before the cease and desist letter. Such passive use cannot constitute legitimate or fair use according to the Policy.
The Respondent's creation of a website after receipt of the Complainant's letter, and therefore after receiving notice of the dispute, does not constitute rights or legitimate interests; on the contrary, is a clear indication of bad faith and an attempt to simulate rights or legitimate interests.
The Respondent's claim in the blog post of April 1, 2017, to be known as "Xia Yaa" is also a clear attempt to feign rights or legitimate interests. The Respondent's use of a privacy service prevents verification of the Respondent's identity. Furthermore, a privacy service is unnecessary if the Respondent disclosed his identity on the website itself.
The Respondent did not reply to the Complainant's cease and desist letter, which is further evidence of a lack of rights or legitimate interests and of bad faith.
The Respondent has registered and used the disputed domain name in bad faith.
The Respondent must have been aware of the Complainant and its trade mark when registering the disputed domain name. The trade mark is an invented word. The disputed domain name was registered after the Complainant's United States trade mark application and on the same day as the Complainant's international trade mark application. It is almost impossible that this is a coincidence.
The Complainant refers to a concurrent UDRP complaint filed by the Complainant regarding the disputed domain name , which involves the same situation as here. The respondent in that case is also using a proxy service, albeit a different one, to conceal his identity and that domain name was registered on the same day as the international application for Complainant's KOGTHERO trademark and within seconds of the disputed domain name. This cannot be a coincidence and strongly suggests that the respondents in both proceedings are either the same or at least connected.
By registering the disputed domain name, the Respondent has prevented the Complainant from reflecting its mark in a corresponding domain name.
The lack of use of the disputed domain name before the Complainant sent its cease and desist letter constituted passive holding in bad faith. The fact that the Respondent started using the disputed domain name on receipt of the letter, following inactivity for over a year, is further evidence of use in bad faith.
Use of a privacy shield to conceal the Respondent's identity, in connection with passive holding, is further evidence of bad faith. B. Respondent
A summary of the Respondent's contentions is as follows:
The English version of the Respondent's name is "Xia YaA". "XYA" is "'my first letter abbreviated my name". The Respondent registered the disputed domain name for his own blog site "[a]ccording to the Chinese website popular format".
The Respondent received the Complainant's email on March 29, 2017. It was clearly an attempt to "snatch" his domain name. No one would agree to such unreasonable demands.
The Respondent responded to the Complainant by email on April 3, 2017. The Respondent's email provider has made it clear that this reply was successfully delivered to the Complainant's email address. The Complainant's claim that the Respondent never responded to the Complainant's letter is false.
The Respondent was unaware that the disputed domain name was the same as the Complainant's trade mark.
The trade mark is not the same as the disputed domain name.
The disputed domain name was registered before registration of the Complainant's trade mark. When the disputed domain name was registered on March 19, 2016, the Complainant's trade mark was merely a pending application.
The Complainant has not used "THE XYA" in commerce. Common law rights cannot logically precede a mark's use in commerce, as shown by various UDRP cases.
The Complainant's trade mark is not well-known, including in China and the United States.
Last year, the Respondent rejected an offer to buy the disputed domain name for USD 1,250.
The Respondent has legitimate rights and/or interests in the disputed domain name, which has not been registered and used in bad faith.
The Respondent requests that the Panel make a finding of reverse domain name hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark THE XYA by virtue of its registered trade marks for that term.
The Respondent rightly points out that the disputed domain name was registered before the Complainant's mark was registered. However, section 1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") sets out the consensus view that registration of a domain name before a complainant acquires trade mark rights does not prevent a finding of identity or confusing similarity under this first element of the Policy (which is effectively a preliminary requirement to show that the Complainant has "standing" to pursue the case). The timing issue may or may not become relevant under other elements of the Policy.
At this point of the discussion, it is sufficient that the Complainant has established ownership of relevant registered trade marks as at the date of filing this Complaint.
While the Respondent says that the trade mark is not the same as the disputed domain name, in fact the only difference is the ".com" domain name suffix – which is generally disregarded when comparing domain name and trade mark. See section 1.2 of WIPO Overview 3.0.
The Respondent further observes that the Complainant has not used "THE XYA" in commerce and that common law rights cannot logically precede a mark's use in commerce. However, the Complainant has not in fact claimed that it used the term "THE XYA" in commerce; nor has the Complainant asserted common law rights. The Complainant relies purely on its registered trade marks to establish the first element of the Policy, as it is entitled to do.
For the above reasons, the Panel concludes that the disputed domain name is identical to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Section 2.1 of WIPO Overview 3.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
Paragraph 4(c)(i) of the Policy applies where, before having notice of the dispute, a respondent used, or at least made demonstrable preparations to use, the disputed domain name for a bona fide offering of goods or services. Here, the only evidence of use of the disputed domain name is the website launched by the Respondent following receipt of the Complainant's cease and desist letter. Such use of the disputed domain name therefore came after the Respondent had notice of the dispute and cannot constitute evidence of rights or legitimate interests under paragraph 4(c)(i).
Paragraph 4(c)(ii) of the Policy applies where a respondent has been commonly known by the domain name. Here, the Respondent has indeed claimed that the disputed domain name reflects a version of his personal name. However, for reasons explained below under the third element, the Panel has rejected this assertion by the Respondent because the Panel has not been provided with any evidence supporting the claim.
Paragraph 4(c)(iii) of the Policy is concerned with "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 provided the Panel with allegations or evidence which convince the Panel that this paragraph applies in the circumstances of this case. See further under the third element below.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel cannot know for certain what was the Respondent's intention when he registered the disputed domain name. All that the Panel can do is to make its best assessment based on the information before it.
Having carefully considered the evidence, the Panel has concluded that the Complainant has established on the balance of probabilities that the Respondent registered the disputed domain name with the Complainant's trade mark application in mind. This is for the following reasons:
1. The Respondent registered the disputed domain name on the same day that the Complainant filed its international trade mark application with WIPO and four days after the Complainant filed its United States trade mark application. In the Panel's view this is unlikely to be a coincidence, particularly in light of the other factors below.
2. The term "THE XYA" is a distinctive made-up name.
3. The Respondent has provided no evidence (a) verifying his name in Chinese or (b) demonstrating that the English version of this name is indeed "Xia YaA" / "Xia Yaa", as he claims. Nor has he explained clearly why he saw fit to abbreviate the name in this manner, i.e., taking the initials of each name plus the letter "A". Or why he prefixed the abbreviation "XYA" with the word "THE", which to the Panel is not an obvious formulation. For example, there is no suggestion, let alone evidence, that this is say a nickname of the Respondent.
4. The Respondent only started using the disputed domain name for a website shortly after receipt of the Complainant's cease and desist letter and approximately one year after the disputed domain name was registered. The Complainant suggests that the website was uploaded on April 1, 2017, two days after the letter. In fact, the screenshot provided by the Complainant is dated April 5, 2017. Even in the latter case, the timing and content of the website (see section 4 above) suggest to the Panel that the website was launched purely as a defensive move.
In the Panel's view, the above factors amount to registration of the disputed domain name in bad faith.
The Panel further considers that the Respondent's passive holding of the disputed domain name combined with the later launch of the defensive website described above constitute use of the disputed domain name in bad faith.
For the reasons stated above, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
The Panel would add that, in reaching this conclusion, it has not taken into account the alleged failure of the Respondent to reply to the Complainant's cease and desist letter. The Respondent has produced a copy of a response email (which in fact forms the gist of the Response) and insists that this was sent to, and received by, the Complainant on April 3, 2017. The Panel makes no finding on this point as it is not necessary for the decision.
The Panel has also disregarded the Complainant's assertion that the Respondent is connected with another domain name registered on the same day as the disputed domain name, allegedly reflecting a different international trade mark also filed by the Complainant on that day. The Complainant has provided no evidence in support of this claim. 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.
Adam Taylor
Sole Panelist
Date: June 28, 2017
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