Complainant is Biogen MA Inc. of Cambridge, Massachusetts, United States of America ("United States"), represented by Eckert Seamans Cherin & Mellott LLC, United States.
Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States ("DBP") / Jessica Raldi, Im Raldi Adventures of Miami Beach, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (the "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 10, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 7, 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 Respondent of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 29, 2018. On June 1 and 7, 2018, a third party (purportedly "Mo Humanga" who as noted below is apparently the original registrant) sent email communications to the Center.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 11, 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
Complainant was founded in 1978 and is one of the oldest and most well-known biotechnology companies in the United States. Complainant has led innovative scientific research focusing on neuroscience and the treatment and cure for neurological diseases.
Complainant is the owner of the IMRALDI trademark in the European Union ("EU"), Registration No. 015619505. Complainant filed its application to register this mark in the EU on July 7, 2016, which is the same day that the Domain Name was registered. Complainant's IMRALDI products were approved for sale in Europe on August 24, 2017. Complainant owns numerous domain names that incorporate the IMRALDI mark, registered in various generic Top-Level Domains ("gTLDs").
The Domain Name was registered on July 7, 2016, with the original registrant listed as "Mo Humanga". At some point after April 2017, the Domain Name registration was moved to a private registration under DBP.
On October 10, 2017, after discovering the existence of the Domain Name, Complainant sent a letter (through counsel) via email to Respondent using the email address listed on the WhoIs registration record. On October 11, 2017, in reply to an email from Respondent, Complainant sent a further message requesting transfer of the Domain Name in exchange for the normal registration cost, not to exceed USD 50. In emails dated October 11 and 12, 2017, an individual purportedly named "Jessica Raldi" (the current registrant) from "Miami Beach" replied, claiming that that the Domain Name had been purchased from GoDaddy on August 31, 2016, that it was not for sale, and that it "was supposed to be a blog for my traveling adventures."
At the time these communications were exchanged, the Domain Name resolved to a GoDaddy parking page. At some point shortly thereafter, the Domain Name resolved to a blank webpage. As of the date of the Complaint, the Domain Name resolved again to a GoDaddy parking page. 5. Parties' Contentions A. Complainant (i) Identical or confusingly similar.
Complainant owns a registration for its IMRALDI trademark in the EU. Complainant's states that ownership of the mark establishes trademark rights under the Policy. Complainant further states that the IMRALDI mark is associated with Complainant and is inherently distinctive, unique, and not a generic term found in a dictionary. The first 50 references of an Internet search for the term "Imraldi" refer to Complainant's mark in some manner. Moreover, Complainant has taken steps to protect its marks, including on the Internet where it actively monitors for brand misuse.
Complainant asserts that the Domain Name is identical and confusingly similar to Complainant's IMRALDI mark. UDRP decisions have established that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark under paragraph 4(a) of the Policy. In this case, the Domain Name incorporates the entirety of Complainant's mark, without any additional matter other than the gTLD ".com".
Accordingly, Complainant contends that given the established rights in its IMRALDI mark and that the Domain Name is identical to that mark, it has met its burden under the Policy, paragraph 4(a)(i). (ii) Rights or legitimate interests.
Complainant states that neither DBP, Mo Humanga nor "Jessica Raldi" have any affiliation or connection with Complainant, or any of the products or services that Complainant offers. The Domain Name is not affiliated with or connected to Complainant. Complainant has not licensed or entered into any relationship that would give any party any right to use its IMRALDI trademark as a name or mark, or as a component of a name, mark or domain name. Moreover, Complainant states that Respondent has not been commonly known by the Domain Name. There is no apparent evidence that Respondent operates any type of legitimate business or commercial entity, or engages in any other type of legitimate activity under the Domain Name, or any name or mark corresponding to the Domain Name. As such, Respondent has not known by the Domain Name.
Complainant claims that the evidence suggests that the Domain Name may still be owned by the previously listed registrant, Mo Humanga. First, there does not appear to be any online information for an individual by the name of "Jessica Raldi" or any blog or business under the name "I'm Raldi Adventures". On October 25, 2017, shortly after the exchange of communications between the parties, there was no Facebook or LinkedIn page for any individual by that name in the United States. At some later date, a Facebook page was created for "Jessica Raldi," but that page contains no content. Complainant states that it has been unable to find any indication that "Jessica Raldi" is an actual person.
Second, Complainant conducted research concerning "Jessica Raldi's" claim that the Domain Name was purchased at auction on or around August 31, 2016. According to WhoIs records, the Domain Name was registered on July 7, 2016 by Mo Humanga. A WhoIs record from December 17, 2016 does not support the claim that the Domain Name was purchased on or around August 31, 2016. Instead, that WhoIs record shows that the registrant name and email address remained unchanged, corresponding to Mo Humanga, while the only apparent update was that the mailing address for the Domain Name was changed from an address in Hawaii to one in China. The WhoIs records show that the registrant information for the Domain Name was not changed again until sometime after April 20, 2017: at some point between April 20, 2017 and October 5, 2017, the registrant information for the Domain Name was changed from Mo Humanga to a private registration with DBP.
Complainant claims that Mo Humanga is likely still the actual registrant of the Domain Name. A reverse WhoIs search conducted by Complainant in October 2017 shows that Mo Humanga registered approximately 90 domain names during the summer 2016, most if not all of which reflect names or trademarks used for pharmaceutical products. It appears that Mo Humanga monitors trademark filings in order to register corresponding domain names, similar to what happened in regards to the Domain Name in this case.
Complainant used a WhoIs history tool to conduct searches for 10 of the domain names associated with Mo Humanga:
; ; ; ; ; ; ; ; ; .
The results of these searches show that each of these domain names was registered shortly after trademark applications had been filed for corresponding marks for goods and services related to the pharmaceutical or medical industries. In addition, historical WhoIs records show that the registration listing for each of these domain names, as well as the Domain Name, was updated after August 30, 2016. Similar to the Domain Name, the only apparent change to the listings for these domain names is that Mo Humanga's mailing address was changed from one in Hawaii to one in China. Further, WhoIs records from October 2017 for all of these domain names now show that DBP is the registrant, with such change apparently occurring sometime after April 2017.
In line with this analysis, Complainant observes that the Domain Name was registered on the same date that Complainant filed its trademark application, which cannot be a coincidence given evidence that Mo Humanga registered numerous other domain names corresponding to pharmaceutical names or marks, close in time to when corresponding trademark applications were filed. Therefore, Complainant contends that it is clear the Domain Name was registered with knowledge of Complainant's IMRALDI trademark application filing.
Complainant also contends that before notice of this dispute, Respondent made no use of, nor any 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. Complainant contends that use of a domain name that contains a complainant's mark to resolve to a registrar parking page, blank page, or other non‑substantive content is not used in connection with a bona fide offering of goods or services. Here, there is no evidence that the Domain Name ever resolve to any substantive content since it was registered. It has been 21 months since the Domain Name was registered, and there is still no substantive content. There also appears to be no reliable evidence of any intent to use the Domain Name in connection with any bona fide goods or services. The only reliable evidence reveals that the Domain Name was in one of many domain names that were registered with the intent to target pharmaceutical related brands.
Complainant states that as to "Jessica Raldi's" explanation for the future use of the Domain Name for a blog, a questionable explanation for the intent of a domain name, without some level of reliable evidence, should not be given weight by the Panel. There is no evidence to support that the Domain Name was either sold by Mo Humanga or intended to be subsequently used as a blog. Instead, the evidence suggests that the Domain Name is likely still owned and/or controlled by the original registrant, and that such registrant's intent is to profit in some way from the widespread registration of domain names that correspond to pharmaceutical related trademarks. Therefore, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
In addition, Complainant states that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The only reliable evidence indicates that the Domain Name was registered along with other pharmaceutical related domain names for the purpose of somehow profiting off of these domain names. Complainant's arbitrary IMRALDI mark has no dictionary meaning, so any use of the term can only logically be referring to Complainant and/or it's mark. Even the questionable statement from "Jessica Raldi" about a travel blog, without more evidence, is not enough to support a legitimate use.
Complainant concludes that based on the arguments and evidence presented, Respondent has no right or legitimate interest in respect of the Domain Name. (iii) Registered and used in bad faith.
Complainant contends that Respondent registered the Domain Name in order to profit in some way off of the goodwill in Complainant's IMRALDI mark, while preventing Complainant from reflecting it's mark in a corresponding domain name. Moreover, Respondent appears to have engaged in a pattern of such conduct with other marks in the pharmaceutical/medical industries.
The Domain Name was registered on the same day that Complainant applied for its IMRALDI mark. This fact, combined with evidence that numerous other domain names corresponding to pharmaceutical related brands were also registered by Mo Humanga (who is believed to be the actual Respondent) close in time to corresponding trademark applications, make it clear that Respondent's intent was to profit off of the future goodwill of those marks as well as Complainant's IMRALDI mark. Therefore, Complainant urges that this is a situation where the exception to the prior trademarks rule should apply, and the Domain Name should be deemed to have been registered in bad faith.
As to bad faith use, Complainant argues it is clear that the Domain Name was registered in order to prevent Complainant from using its IMRALDI mark in the most relevant and valuable ".com" gTLD. The fact that other valuable domain names corresponding to pharmaceutical related brands were also registered demonstrates a pattern of bad faith behavior.
Complainant states that while there is no apparent evidence that the Domain Name has been used to resolve to any substantive content, which can alone be evidence of bad faith use, it can only be assumed that Respondent's intent is to somehow profit or capitalize off of Complainant's IMRALDI mark, since there is no evidence of fair use or other legitimate use. Respondent's intent could include the sale of the Domain Name for profit to Complainant or someone else, or use of the Domain Name to redirect Internet users to commercial content by creating a likelihood of confusion with Complainant's IMRALDI mark.
Based on the above, Complainant urges that Respondent registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its IMRALDI trademark, based on its EU trademark registration. Further, the Panel determines that the Domain Name is identical to the Complainant's mark, as the Domain Name incorporates the mark in its entirety and adds no other element. See, Philip Morris USA Inc. v. Kat Doe / Whoisguard protected / Whoisguard, Inc.,WIPO Case No. D2014-1583.
Accordingly, the Panel finds that that the Domain Name is identical to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), states that "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 Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use its IMRALDI mark for any purpose; that Respondent is not commonly known by the Domain Name ; and that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the evidence indicates that Domain Name has been linked to a parking page, or for a short time, to a blank webpage. There is no evidence in support of the use of the Domain Name for a travel blog, as Respondent indicated in its correspondence with Complainant's lawyer. Further, on the balance of the probabilities, the evidence suggests that the Domain Name was registered by Mo Humanga and remained in his possession (and not in the possession of someone called Jessica Raldi) in an effort to target the brand name of a pharmaceutical product or service, just as he did with other domain names that he registered.
The Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. In the Panel's opinion, there is nothing in the past and present use of the Domain Name by Respondent or more generally in the circumstances of its registration and use, which indicates that Respondent has any rights or legitimate interests in the Domain Name.
The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark". Here, the Panel finds that the Domain Name was registered and is being used in bad faith.
The evidence indicates, as noted above, that the Domain Name, which is identical to Complainant's IMRALDI trademark, was registered on the same day that Complainant filed its application for its IMRALDI trademark. Mo Humanga, who originally registered the Domain Name, did so while also registering the names or marks of the products or services of numerous other pharmaceutical companies. He registered all of these names or marks close in time to when those companies had filed for their trademarks, just as was the case for the Domain Name. This evidence shows a clear pattern of targeting pharmaceutical company trademarks in his domain name registrations. Moreover, the evidence supports a finding that it is more likely than not that Mo Humanga remains in the possession of the Domain Name, and not in the possession of someone called Jessica Raldi. There is no evidence that a person named Jessica Raldi exists. Further, Respondent has had a chance in this case to respond to the allegations made by Complainant in this regard, but has chosen not to submit any Response.
Given the facts in this case, the fact that Mo Humanga registered the Domain Name before Complainant's trademark registration was finalized does not preclude finding bad faith registration in this case. See, Aveva Group Plc. v. Edward Kim,WIPO Case No. D2015-2349 ("Although Complainant's AVEVA ENGAGE Marks were not yet registered at the time the disputed domain name was registered, the Panel finds it likely that Respondent was aware of and intended to exploit Complainant's imminent launch of its new product when he registered the disputed domain name on October 20, 2015, thereby evidencing bad faith"). The Panel concludes that the Domain Name, which incorporates Complainant's distinctive and unique IMRALDI mark in its entirety, was registered in an effort to target Complainant. There is no other plausible reason for why the Domain Name was registered by Mo Humanga, along with the domain names of many other pharmaceutical products or services.
The Domain Name has also been used in bad faith. Patterns of abuse have been found where a respondent registers multiple trademark-abusive domain names corresponding to the distinctive trademarks of separate owners. WIPO Overview 3.0, section 3.1.2; See also, Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi,WIPO Case No. D2017-0391 (panel found the respondent had engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, where a "Reverse WhoIs" search showed that the respondent had registered more than 150 domain names corresponding to the names or marks of complainant and "numerous other famous or well-known third party marks"). In the present case, Mo Humanga, who is believed to be the actual owner of the Domain Name, registered approximately 90 domain names during the summer 2016 (during the same period when the Domain Name was registered), most if not all of which reflect the names or trademarks used for pharmaceutical products. The fact that other valuable domain names corresponding to pharmaceutical related brands were also registered demonstrates a pattern of bad faith behavior. Further, the Domain Name, as noted above, has not been used to resolve to any substantive content. The Panel finds, on the balance of the probabilities, that Respondent's intent was to somehow capitalize off of Complainant's mark, since there is no evidence of any other fair use or any legitimate commercial use.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy. 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.
Christopher S. Gibson
Sole Panelist
Date: July 1, 2018
Full & Egal Universal Law Academy