The Complainant is Ivaoes, LLC of Miami, Florida, United States of America (“US” or “United States”), represented internally.
The Respondent is Edward Khan of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 12, 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 company headquartered in Miami, Florida, United States. It is a supplier of veterinary healthcare products including a veterinary anesthetic product marketed under the brand name and trademark RAPANOFAL.
The Complainant has submitted evidence that a product under the brand name “Rapanofal” was approved by the United States Department of Health and Human Services (“Department of Health”) on August 15, 2016. It has also submitted evidence that it filed an application for a United States trademark for RAPANOFAL on September 22, 2016.
The disputed domain name was registered on September 29, 2016.
At the date of the Panel’s review, the disputed domain name resolved to a holding page maintained by an Internet service provider, NameB. 5. Parties’ Contentions A. Complainant
The Complainant states that it first used the mark RAPANOFAL in commerce on August 15, 2016, and refers to the product approval and trademark application mentioned above. It states that the trademark was approved on May 2, 2017, and exhibits a Notice of Allowance of that date from the United States Patent and Trademark Office.
The Complainant contends that the disputed domain name is identical to its mark RAPANOFAL in that it fully incorporates that trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not commonly been known by the disputed domain name and has not used the disputed domain name in connection with any bona fide offering of goods or services. The Complainant contends that its mark RAPANOFAL is not a generic or descriptive term and exhibits a linguistic screening analysis with respect to over 40 languages in support of its contention. The Complainant contends that the Respondent could not have stumbled upon the disputed domain name by accident and could only have arrived at it with prior knowledge of the Complainant’s trademark application.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. In particular, the Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of selling to it to the Complainant for a sum in excess of the Respondent’s costs of registration. The Complainant exhibits an email from the Respondent dated May 2, 2017, which states:
“Thank you for your interest in our domain. Actually, we bought the domain for our own business. So it is not for sale. But we had a meeting just now and decided to transfer it to you, if the price is satisfactory. Our offer price is USD 8,500. If you accept this price, we can transfer the domain to you and we will change our business name.”
The Complainant further alleges that the Respondent registered the disputed domain name to prevent the Complainant from registering that name and that the Respondent has engaged in a pattern of such conduct. The Complainant exhibits evidence that the Respondent is the registrant of over 100 domain names and that a number of those domain names correspond to registered trademarks owned by other parties.
The Complainant seeks the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Even in a case where the Respondent has failed to file a Response, it is still necessary for the Complainant to prove that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it filed a US trademark application for RAPANOFAL on September 22, 2016, and received a Notice of Allowance of that trademark on May 2, 2017. The Panel also accepts the Complainant’s submission, which the Respondent has not disputed, that it has used the name and mark RAPANOFAL in commerce since August 15, 2016, when it received the necessary regulatory approval of a veterinary product under that name. The Panel accepts the Complainant’s evidence that the mark is unique in nature and finds that the Complainant had unregistered rights in the mark RAPANOFAL pending the formalization of its trademark registration.
The disputed domain name incorporates the whole of the Complainant’s trademark RAPANOFAL in an unadorned form and is therefore effectively identical to the Complainant’s trademark. The Panel therefore finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not disputed the Complainant’s contentions. Further, the Panel finds that the contents of the Respondent’s email dated May 2, 2017 do not provide any reasonable explanation for the Respondent’s registration and use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the name and mark RAPANOFAL has no meaning in commerce other than to refer to the Complainant’s veterinary healthcare product and accepts the Complainant’s evidence that there is no reasonable prospect of the Respondent having accidentally stumbled upon that name. The Panel also notes the date of registration of the disputed domain name, which occurred shortly after the Complainant received its Department of Health authorization for the RAPANOFAL product and filed an application for a United States trademark accordingly.
In the circumstances, in the view of the Panel, it is inconceivable that the Respondent registered the disputed domain name otherwise than in the knowledge of the Complainant’s trademark and with the intention of unfairly targeting that mark. Further, in the light of the Respondent’s email dated May 2, 2017, the Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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.
Steven A. Maier
Sole Panelist
Date: June 23, 2017
Full & Egal Universal Law Academy