The Complainant is Biogen MA Inc. of Cambridge, Massachusetts, United States of America (“United States”), represented by Eckert Seamans Cherin & Mellott LLC, United States.
The Respondent is Privacy Protect, LLC of Burlington, Massachusetts, United States / On behalf of owner, Domain Administrator of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2018. On March 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2018, 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 March 27, 2018 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 March 29, 2018.
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 April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 25, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on May 4, 2018. 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 biotechnology company and has been active in the biotechnology field since at least as early as 1978. It is the owner of the SPINRAZA mark in many jurisdictions including the United States, Mexico, the European Union, the Russian Federation, Japan, the Republic of Korea, Argentina, Brazil and Peru. For instance, it is the proprietor of a European Union Trademark Registration for SPINRAZA (registration date: March 4, 2015; Filing date: October 21, 2014; Filing no: 013388145) and United States Registration for SPINRAZA (registration date: March 7, 2017; Application Filing date: October 20, 2014; Registration No: 5156572).
The Complainant uses the SPINRAZA trademark in connection with a pharmaceutical product indicated for the treatment of pediatric and adult patients with spinal muscular atrophy (“SMA”).
The disputed domain name (the “Domain Name”) was registered on October 8, 2015. Soon after discovering the Domain Name, the Complainant’s counsel wrote to the listed registrant setting out its position regarding its rights in the SPINRAZA trademark and seeking a transfer of the Domain Name. It received no substantive response. A follow up communication was sent and on January 31, 2018, a person suggesting he was the registrant (“Kevin” from “ES Law”) responded making various points, for instance that the Complainant’s mark was “not equal” to the Domain Name. A transfer was not forthcoming.
The Complainant has been unable to determine whether the Domain Name ever resolved to any substantive content. Presently, the Domain Name resolves to a page with a message stating “The host is not resolvable”. 5. Parties’ Contentions A. Complainant
The following is a brief summary of the main contentions of the Complainant.
General
The Complainant’s ownership of SPINRAZA trademark registrations establishes trademark rights under the Policy.
The Complainant currently uses its SPINRAZA trademark in sixteen countries in connection with its pharmaceutical product.
The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights
The Domain Name is nearly identical to, confusingly similar and incorporates the entirety of the Complainant’s SPINRAZA trademark. The addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant and does nothing to obviate confusion. Similarly, the addition of a few additional letters or terms, even if some have descriptive significance within the pertinent industry, does not distinguish a disputed domain name from a complainant’s mark. Here, the Domain Name incorporates the entirety of the Complainant’s SPINRAZA trademark along with the designation “hcp”. In the medical field, the letters “hcp” are commonly used as an abbreviation for “healthcare professional” or “healthcare provider.” The Complainant itself uses the domain name for its website directed to healthcare professionals.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent has no affiliation or connection with the Complainant or any of the products or services that the Complainant offers. The Domain Name was registered seven months after the Complainant’s CTM registration for SPINRAZA issued, and a few months after the Complainant filed applications for registration of SPINRAZA in numerous other jurisdictions. The registration of the Domain Name cannot be coincidence given the timing and the arbitrary and fanciful nature of the SPINRAZA mark. Therefore, it is clear that the Domain Name was registered with knowledge of the Complainant’s trademark rights.
Rights or legitimate interests in a domain name under paragraph 4(a)(ii) of the Policy can be demonstrated by a respondent submitting evidence, for instance (and without limitation) of 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; that the respondent is commonly known by the domain name (even if the respondent has acquired no trademark or service mark rights); or, that the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In this matter, there is no evidence that the Respondent’s registration or use of the Domain Name can be categorized under any of the justifications listed above. Moreover, there is no other evidence to support rights or legitimate interests in the Domain Name on the part of the Respondent.
The domain name was registered and is being used in bad faith
The Complainant’s European Union TM registration for SPINRAZA issued on March 4, 2015. The Domain Name was registered on October 8, 2015. Therefore, the Complainant had pre-existing trademark rights and must have been targeted by the Respondent, especially given the distinctiveness and uniqueness of the SPINRAZA mark.
SPINRAZA is an arbitrary and unique term that has no dictionary meaning. The Respondent could not innocently have registered the Domain Name without the Complainant in mind, especially given the commonly understood meaning of the abbreviation, “hcp”. Given the existence of the CTM registration and uniqueness of the SPINRAZA trademark, there can be no doubt that the Respondent targeted the Complainant’s SPINRAZA trademark in bad faith, especially since there is no evidence of any legitimate use.
In the year immediately preceding the registration of the Domain Name on October 8, 2015, the Complainant (1) filed an application to register the SPINRAZA trademark in the United States, on October 20, 2014; and (2) between July 28, 2015 and August 5, 2015, filed applications to register the SPINRAZA trademark in nineteen other jurisdictions around the world, including Japan, the Republic of Korea, the Russian Federation, Brazil and Argentina. It seems unlikely that registration of the Domain Name just a few months after the Complainant’s filing of so many trademark applications is mere coincidence, which serves as additional evidence that the Respondent could only have been targeting the Complainant’s mark when the Domain Name was registered.
As to bad faith use, it appears in the circumstances that the Respondent’s intent is likely to be to confuse Internet users into thinking that the Domain Name is somehow affiliated with or related to the Complainant. While there is no apparent evidence that the Domain Name has been used to resolve to any substantive content, it can only be assumed that the Respondent’s intent is to somehow profit from or capitalize on the Complainant’s SPINRAZA trademark since there is no evidence of fair or other legitimate use. The Respondent’s intent could include the sale of the Domain Name for profit to the Complainant or someone else, or to use the Domain Name to redirect Internet users to commercial content by creating a likelihood of confusion with the Complainant’s SPINRAZA trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainant clearly has rights in the SPINRAZA trademark.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the SPINRAZA trademark, followed by the letters “hcp”. As the SPINRAZA trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between trademark and domain name.
The SPINRAZA trademark is clearly recognizable within the Domain Name. It is the first and dominant element of the Domain Name. The only issue therefore is whether the addition of the letters “hcp”, renders the Domain Name something other than confusingly similar to the Complainant’s SPINRAZA trademark. The Panel finds that it does not and hence also finds that the Domain Name is confusingly similar to the SPINRAZA trademark for the purposes of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so. The communication on January 31, 2018 referred to earlier, even if elevated to the status of a UDRP compliant Response (which it is not), providing no such argument or evidence. Accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. A non-exhaustive list of examples of circumstances which might evidence rights or legitimate interests in a domain name are listed in paragraph 4(c) of the Policy. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, the Respondent is not known by the Domain Name and appears to be making no use of it at all. Given that any noncommercial or fair use must be without intent to mislead, it is unlikely that the Respondent could avail itself of an answer to the Complaint along these lines in any event – in the absence of any alternative explanation, it seems likely that the very purpose in the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that an offering of goods or services using a confusingly similar Domain Name which so obviously takes advantage of the trademark of another (such that Internet users could readily be misled), could amount to a bona fide offering. In any event, and as already noted, there is no evidence of use, let alone in connection with any offering of goods or services.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests are clearly sound. Accordingly, the Panel finds that the Respondent lacks rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy and is satisfied that there is nothing inappropriate in such a finding. C. Registered and Used in Bad Faith
A non-exhaustive list of examples of circumstances which evidence registration and use of the Domain Name in bad faith is set out in paragraph 4(b) of the Policy. Because it is a non-exhaustive list, the Panel need not analyze the issue of bad faith by reference to the examples provided. The examples, not surprisingly, envisage use or intended use and a question sometimes arises as to whether a passive holding can amount to registration and use in bad faith for the purposes of the Policy. This very issue is dealt with in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), specifically section 3.3 which states that:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Given the uniqueness and distinctiveness of the SPINRAZA trademark and the fact that the letters that follow it in the Domain Name (“hcp”) have meaning in the medical field, (“hcp” being a common abbreviation for “healthcare professional” or “healthcare provider”), it seems inconceivable that the Respondent did not know of the SPINRAZA trademark or that it was not intending to take advantage in some way of the Complainant or its trademark rights. As already noted, the Complainant itself uses the domain name for its website directed to healthcare professionals. In these circumstances, it is difficult to conceive of any good faith use of the Domain Name by the Respondent. It seems inevitable that any use of the Domain Name could lead to confusion on the part of Internet users or otherwise unfairly disrupt the business of the Complainant.
If a UDRP proceeding is commenced in circumstances where a well-known mark (of which a respondent must have been aware) is used in a confusingly similar domain name, it is incumbent on the respondent to come forward with an explanation if it is to avoid or attempt to avoid the risk of an adverse finding. Indeed, a respondent’s non-participation is a factor that can be taken into account, along with others, in considering bad faith under the Policy.
In this case, the Respondent chose not to respond to the Complaint and its January 31, 2018 communication referred to earlier (prior to these UDRP proceedings being commenced against it), far from provides any justification for registration or use (or passive holding) of the Domain Name. The Respondent chose a well-known trademark, SPINRAZA to incorporate into a Domain Name along with an industry specific abbreviation itself used by the Complainant (in conjunction with its SPINRAZA trademark), rendering such Domain Name confusingly similar to the SPINRAZA trademark. There is no evidence that the Respondent has any rights or legitimate interests in the Domain Name and in these circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: May 14, 2018
Full & Egal Universal Law Academy