The Complainant is Bayer Intellectual Property GmbH of Monheim am Rhein, Germany, represented by BPM Legal, Germany.
The Respondent is James H Park of GimHae-Shi, South Gyeongsang, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2019. On February 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2019, 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 March 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2019.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on April 3, 2019. 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 global company in the field of health care. The Complainant is the owner of the trademark XARELTO, which is used for goods in the field of blood-thinner medication. The trademark has been registered inter alia as an European Union Trademark under No. 002809127 on November 12, 2003.
The disputed domain name was registered on November 15, 2017. 5. Parties’ Contentions A. Complainant
The disputed domain name includes the Complainant’s trademark in its entirety added merely with the generic term “claims”. This addition is not sufficient to remove the confusing similarity between the Complainant’s trademark and the disputed domain name, because the Internet user will immediately conclude that the Respondent’s website is connected with the Complainant.
The Complainant has not licensed or otherwise allowed the Respondent to use any of its trademarks and has not permitted the Respondent to use any domain names including the trademark XARELTO. There is also no evidence of the disputed domain name in connection with a bona fide offering of goods or services, and the Respondent is not commonly known by the disputed domain name.
It is unlikely that the Respondent would have registered the disputed domain name unaware of the Complainant’s trademark. The Respondent also has a history of targeting third parties’ trademarks by registering corresponding domain names.
The disputed domain name resolves to a parking website providing sponsored links to third parties’ websites. The Respondent is using the disputed domain name to earn click-through revenues from users searching for the Complainant’s website. The disputed domain name is also offered for sale for USD 4,500, which exceeds the costs directly related to the registration of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name includes the Complainant’s trademark in its entirety combined with the descriptive term “claims”. The use of descriptive generic term does not prevent a finding of confusing similarity under the first element. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the facts of this case, the Panel also finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The Complainant has shown that the website to which the disputed domain name resolves is a pay-per-click (“PPC”) website. A PPC website is designed to generate income to the holder of the domain name or a third party based on the number of clicks it generates.
The disputed domain name is also offered for sale for USD 4,500. This is significantly more than the direct costs of registering a domain name.
Based on the above findings, it is clear that the disputed domain name has been registered primarily for the purpose of selling it to the owner of the registered trademark, and that the Respondent is attracting Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: April 17, 2019
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