The Complainant is Otsuka Pharmaceutical Co., Ltd. of Tokyo, Japan, represented by Sheppard, Mullin, Richter & Hampton, United States of America (“United States”).
The Respondent is Mau Lio of Guangdong Sheng, China. 2. The Domain Name and Registrar
The disputed domain name (the “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 March 27, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 28, 2018, 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 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 Willem J. H. Leppink as the sole panelist in this matter on May 2, 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 following facts are undisputed.
The Complainant is a healthcare company involved in the research and development of medication. The Complainant’s business focuses on medication to help cure psychiatric diseases, neurologic diseases and oncology. Other research and development is in the fields of cardio-renal and nephrology, gastrointestinal, infectious diseases, ophthalmology and dermatology. The Complainant opened its first drug discovery research institute in 1971.
The Complainant is currently, through a subsidiary, conducting Phase 3 clinical studies for a pharmaceutical drug intended for the treatment of aggressive hematological malignancies under the name Cydenitor.
The Domain Name was registered by the Respondent on January 3, 2018. The Domain Name resolves to a parking page which shows the text “ is coming soon” (the “Website”). 5. Parties’ Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Complainant is the owner of several registrations for the word mark CYDENITOR, e.g. International Registration No. 1395857 registered on December 26, 2017 (the “Trademark”).
The Domain Name reproduces the Trademark in its entirety. Therefore, the Domain Name is identical to the Trademark.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. According to the Complainant, the Respondent has neither received a license nor been permitted by the Complainant to use the Trademark, including registering any domain names incorporating it. The Complainant also alleges that the Respondent is not an authorized reseller of the Cydenitor product. Moreover, for the Complainant, there is no indication that the Respondent is commonly known by the name or trademark CYDENITOR. The Domain Name resolves to a parking page. The Complainant contends displaying a parking page does not constitute a bona fide offering of goods or services. Therefore, the Respondent has no rights or legitimate interests with respect to the Domain Name.
The Complainant indicates that the Respondent registered the Domain Name two weeks after the Complainant filed its first application for the Trademark. Since the Trademark is a highly distinctive term invented by the Complainant, the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The Complainant also contends that the Respondent is passively holding the disputed domain name and should be found using the disputed domain name in bad faith.
In addition, the Complaint brought forward that the Complainant is engaged in a pattern of such conduct, evidenced by prior WIPO and FORUM complaints in which the Respondent was found to have acted in bad faith. Although the Respondent is passively holding the Domain Name, the use of the Domain Name is in bad faith. Given the totality of the circumstances, bad faith can be given due to the highly distinctive nature of the Trademark and the implausibility of any good faith use with regard to the use of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the domain name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark in its entirety.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Name. See cases Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903: “[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
Thus, the Panel finds that the Domain Name is identical to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might have concluded that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Cydenitor” is the Respondent’s name or that the Respondent is commonly known as “Cydenitor”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s Trademark and activities are well known.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark. This is emphasized by the fact that the Respondent registered the Domain Name shortly after the Complainant filed its first application for the Trademark.
In accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the panel finds that the use of the “coming soon” page by the Respondent does not prevent the finding of bad faith.
In addition, the Panel has ascertained that the Respondent has been the respondent in two other abusive domain name registrations. See Pfizer Inc. v. Mau Lio,WIPO Case No. D2017-0242 and WBC Group, LLC v. mau lio, FA 1606001678469 (FORUM July 21, 2016). Based on the foregoing, and in accordance with WIPO Overview 3.0, the conclusion may be justified that the Respondent is engaged in a pattern of registering domain names to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
Finally, although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was 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.
Willem J. H. Leppink
Sole Panelist
Date: May 15, 2018
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