The Complainant is Aerie Pharmaceuticals, Inc. of Bedminster, New Jersey, United States of America (“United States”), represented by Woo Allen Law LLP, United States.
The Respondent is Domain ID Shield Service, Domain ID Shield Service CO., Limited of Hong Kong, China / Domain eRegistration of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2019, 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 4, 2019, 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 March 5, 2019.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2019.
The Center appointed Alistair Payne as the sole panelist in this matter on April 8, 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 publicly listed pharmaceuticals company based in the United States. It owns various trade mark registrations for or that incorporate the marks AERIE and AERIE PHARMACEUTICALS INC. These include United States trade mark registration 4375647 for AERIE registered on July 30, 2013 and United States trade mark registration 5300379, being a combined logo mark that features the words AERIE PHARMACEUTICALS INC and that was registered on October 3, 2017.
The Respondent registered the disputed domain name on October 26, 2018. At the date of the Complaint it resolved to a website ostensibly for a company calling itself “Aerie Pharmaceuticals, Inc”. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its registered trade marks.
It submits that the website for “Aerie Pharmaceuticals, Inc.” to which the disputed domain name resolves is a fake site that has no connection to the Complainant. It has provided evidence that the main United States head office business address listed at the website is false and that the contact telephone number is not a working number. It has also provided evidence that the pharmaceutical products listed on the Respondent’s website as being in research and development, are neither protected by the United States or European trade mark registrations as is suggested on the Respondent’s website, nor listed with the United States Federal Drug Administration. In addition, the Complainant’s Internet searches reveal that the products ostensibly distributed by the Respondent are produced by a range of other companies which the Complainant suggests is untenable. The Complainant notes also that it has never received a response to the cease-and-desist letter that it sent to the Respondent prior to the commencement of these proceedings. All of these factors, says the Complainant, are indicative of the Respondent misleadingly using the disputed domain name in bad faith to divert consumers and to tarnish the Complainant’s service marks and for these reasons the Respondent has no rights or legitimate interests in the disputed domain name.
As far as bad faith is concerned, the Complainant submits that there is no question but that the disputed domain name is identical to the Complainant’s business name in circumstances that the Complainant is a widely known NASDAQ listed corporate entity. This says the Complainant is enough to create a presumption of bad faith. Further, says the Complainant, based on the circumstances outlined above and also considering the fact that the same executives or board members are listed as being with the Respondent as well as with the other drug companies involved in the development of the products sold by the Respondent, but are presented under different names on the separate companies’ websites and in addition considering the fact that the Respondent’s website improperly and illegally uses the federal registration symbol in relation to its products. It is apparent that the Respondent has not registered the disputed domain name for legitimate business purposes. It says that the Respondent is in effect seeking to confuse consumers and to divert traffic away from the Complainant in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns United States registered trade mark 4375647 for AERIE registered on July 30, 2013 and United States trade mark registration 5300379 being a combined logo mark featuring the words AERIE PHARMACEUTICALS INC which was registered on October 3, 2017. The Panel notes that the dominant element of this latter trade mark is the words AERIE PHARMACEUTICALS INC and that this is identical to the disputed domain name except for the Top-Level Domain “.com”. In addition, the disputed domain name wholly contains the word mark AERIE which is identical to the Complainant’s United States registered trade mark 4375647. As a result, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trade mark rights and that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the website for “Aerie Pharmaceuticals, Inc.” to which the disputed domain name resolves is a fake site that has no connection to the Complainant. The Panel finds that it is more likely than not the case, based on the Complainant’s submissions and the evidence put forward as noted above, including as to the false head office address, the false contact number, the lack of product regulatory or trade mark registrations and the obviously contrived photographs of corporate executives, that the Respondent’s website is fake and presents an entirely illusory business. The Panel’s view in this regard is only reinforced by the Respondent’s failure to respond to the Complainant’s cease-and-desist letter and its use of a Hong Kong, China based privacy service to hold the disputed domain name in relation of a pharmaceuticals business that is ostensibly based in New York.
Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or interests in the disputed domain name which the Respondent has failed to rebut. As a result, the Panel finds that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant’s United States registered trade marks, as noted above, were registered respectively in 2013 and 2017, well before the registration of the disputed domain name on October 26, 2018. Considering also that the Complainant is a publicly listed pharmaceutical company and that the website to which the disputed domain name resolves purports to be for a United States based pharmaceutical business under the same name, the Panel has no difficulty in finding that the Respondent must have been aware of the Complainant and its business when it registered the disputed domain name. In other words, the Respondent registered the disputed domain name in full knowledge of the Complainant’s business and name.
The Respondent has used the Complainant’s name on a website that could easily be confused as being that of the Complainant, or as having some association with the Complainant. As discussed under Section 6.B above, it appears to the Panel that the business presented on the website at the disputed domain name is entirely illusory and this assessment is only reinforced by the Respondent’s conduct in failing to explain itself, whether by response to the Complainant’s cease-and-desist letter, or in the course of these proceedings.
It is apparent that the Respondent’s objective was to use the disputed domain name to redirect Internet users to its own website for its own commercial purposes and in a manner that is little short of fraudulent. This conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy. In short this is a straight forward example of the registration and use of a disputed domain name in bad faith in order to divert Internet users to the Respondent’s own website for commercial gain. Accordingly, the Panel finds that the Complaint also succeeds under this 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 disputed domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: April 15, 2019
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