1.1 The Complainants are Shionogi & Co. Ltd. Of Osaka, Japan, and Shionogi Inc. of Florham Park, New Jersey, United States of America (“United States”), represented by LECLAIRRYAN, United States.
1.2 The Respondent is WhoisGuard Protected of Panama, Panama / Seedy Loveth of New Delhi, India. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 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 to the Complainant on September 24, 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 amended Complaint on September 27, 2018.
3.2 The Center verified that the Complaint together with the amended 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2018.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 23, 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
4.1 The Complainant is a pharmaceutical company with headquarters in Japan. It was founded in 1878 and uses the name “Shionogi” in respect of its business activities. The term “Shionogi” is derived from the name of its founder, Gisaburo Shiono, Sr. It is a leader in the development of treatments for infectious diseases and pain, including anti-viral and anti-bacterial medications.
4.2 The complainant is the owner of United States registered trade mark 3,944,828 for SHIONOGI as a standard character mark. It was registered on April 12, 2011 in classes 5 and 35 and claimed a first use in commerce in the United States of February 2008.
4.3 Information provided by the Registrar in response to the Center’s verification request would suggest that the Respondent is an individual located in India.
4.4 The Domain Name was registered on March 16, 2018. It has been used since registration to display a website that appears to be that of “Shionogi Dublin”, providing details of various products and giving an address for “Shionogi Dublin”, in Dublin, Ireland.
4.5 The Complainant was initially successful in having that website taken down, but it would appear that the website reappeared when it was then hosted by another entity. However, by the time of the formal commencement of these proceedings, the website had again ceased to operate and no website operates from the Domain Name as at the date of this decision. 5. Parties’ Contentions A. Complainant
5.1 The Complainant refers to the history of its business and to its United States registered trade mark. It contends that the Domain Name is “virtually identical” to its trade mark as it “incorporates [that mark] in its entirety”.
5.2 So far as rights and legitimate interests is concerned, the Complainant states that it has no physical presence in the Republic of Ireland and operates no website directed specifically to consumers in that country. It claims that the Respondent has copied aspects of the Complainant’s own website, with the only change made being to add an Irish address. In this way it is said that the Respondent had created an “imposter site” in order to “falsely convince visitors that [the] Complainant possesses a physical business presence in the Republic of Ireland”. The Complainant also claims that the Respondent has profited from this use of the Domain Name, but how the Respondent is said to have profited is not really explained.
5.3 These claims of the operation of an “imposter” site are also advanced in support of the Complainant’s contentions that the Domain Name was registered and has been used in bad faith. B. Respondent
5.4 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name is confusingly similar to the Complainant’s registered United States registered trade mark. The only sensible reading of the Domain Name is as the Complainant’s SHIONOGI mark combined with the city name “Dublin” and the “.com” Top-Level Domain. As such the trade mark is clearly and unambiguously recognisable in the Domain Name’; as to the sufficiency of which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”).
6.5 In the circumstances the Complaint has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Bad Faith Registration and Use
6.6 It is the usual practice for panels under the Policy to consider separately the issues of rights or legitimate interests and registration and use in bad faith. However, in a case such as this it is more convenient to consider those issues together.
6.7 The reason for this is that the Panel accepts the Respondent’s contention at the Domain Name has been used without the Complainant’s consent to falsely impersonate the Complainant and so as to suggest that the website operating from the Domain Name is the website of an Irish division or subsidiary of the Complainant. In this respect, although there is no direct evidence before the Panel that demonstrates that the webpages that operated from the Domain Name copied parts of the Complainant’s website, the Panel is prepared to accept the Complainant’s undisputed assertions in this respect.
6.8 Further, the allegation of impersonation would be made out, even if the website had not copied from the Complainant’s website. The web pages displayed from the Domain Name clearly sent, and were intended to send, the message that this was a website controlled by the Complainant when that was factually untrue. For example, there is the use of the phrase “our products”, in the following passage:
“Shionogi strives to supply the best possible medicine to protect the health and well-being of the patients we serve. Our products, Including dolutegravir and rosuvastatin - both Inhouse and in partnership - are providing solutions for patients worldwide”
6.9 The exact reason for that false impersonation is not entirely clear. The Complainant contends that the Respondent has profited from the use that has been made of the Domain Name, but how he has so profited is not really explained. However, whatever the Respondent’s exact motives for falsely impersonating the Complainant, do not really matter. There is no right or legitimate interest in a domain name that is being used to falsely impersonate another. Further, the registration and use of a domain name for the purposes of false impersonation of another’s business and mark, also constitutes bad faith registration and use.
6.10 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
6.11 It is perhaps worth adding that even had this not been a clear case of false impersonation so far as the website operating from the Domain Name is concerned, the Domain Name itself is likely to have involved an impermissible impersonation of the Complainant (as to which see the reasoning in Johnson & Johnson v. Ebubekir Ozdogan,WIPO Case No. D2015-1031, where one of the disputed domain names in issue also involved a combination of a trade mark and a geographical term). However, it is not necessary to explore this issue any further in this decision. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: November 5, 2018
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