Complainant is Daiichi Sankyo Company, Limited, Japan, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
Respondent is Registration Private, Domains By Proxy, LLC, United States / Name Redacted1 , United States. 2. The Domain Name and Registrar
The disputed 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 May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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 Complainant on June 7, 2019 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 June 7, 2019.
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 June 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 10, 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
Complainant is a global pharmaceutical company, traded on the Tokyo Stock Exchange, with corporate origins in Japan that was established in 2005 by joint holding company of Sankyo Co., Ltd. (founded as Sankyo Shoten in 1899) and Daiichi Pharmaceutical Co., Ltd. (founded as Arsemin Shokai in 1915).
Complainant provides innovative products and services in more than 20 countries around the world. With more than 100 years of scientific expertise, Complainant draws upon a rich legacy of innovation and a robust pipeline of promising new medicines to help patients. Through the outstanding knowledge and commitment of its 15,000 employees worldwide, Complainant creates innovative new and generic medicines, and new methods of drug discovery and delivery.
Complainant states to own at least 281 trademark registrations in numerous jurisdictions around the world, including at least 110 countries and the European Union that consist of or include the DAIICHI SANKYO sign:
- Japanese trademark DAIICHI SANKYO No. 4903408, registered on October 21, 2005 in classes 1, 3, 5, 10, 29, 30, 31, 32, 42, and 44, duly renewed.
- United States trademark DAIICHI SANKYO No. 3658129, registered on July 21, 2009, in class 5, duly renewed.
- European Union trademark DAIICHI SANKYO No. 0912536, registered on August 25, 2005, in classes 1, 5, and 10, duly renewed.
- United Kingdom trademark DAIICHI SANKYO No. UK00002576660, registered on October 7, 2011, in classes 1 and 5, duly renewed.
Complainant currently operates its activities with the domain name which was registered on February 24, 2005, and which it uses in connection with its website.
Respondent owns the disputed domain name registered on March 19, 2019. The disputed domain name resolves to an inactive website. The disputed domain name was used to send several fraudulent emails from the associated email address “[...]@” impersonating Complainant and attempting to engage multiple law firms for a matter unrelated to Complainant on March 20 and on May 15, 2019. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its DAIICHI SANKYO trademark. Complainant states that it is the registered owner of a large number of trademarks consisting in or including the DAIICHI SANKYO sign in numerous jurisdictions around the world.
Complainant is also the owner of the domain name resolving to Complainant’s web portal.
Complainant argues that Respondent has no rights or legitimate interests nor any granted right or license in respect of the disputed domain name. Furthermore, the disputed domain name is not used in connection with an active website and therefore has not been used in connection with a bona fide offering of goods or services.
Complainant claims that the disputed domain name was registered and is used in bad faith. Complainant argues that its trademark DAIICHI SANKYO is well known worldwide and that it is difficult to imagine that Respondent could have ignored its trademark DAIICHI SANKYO at the time Respondent applied for the disputed domain name.
Moreover, the disputed domain name does not resolve to an active website and the disputed domain name’s email address is used by Respondent to falsely impersonate the identity of DAIICHI SANKYO, which indicates that Respondent is likely to engage in a phishing scheme. Complainant argues that all these circumstances support the idea that the disputed domain name has been both registered and used intentionally in bad faith without any rights or legitimate interests by Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions and is therefore in default. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.
Complainant has shown rights over the trademarks DAIICHI SANKYO.
First, the disputed domain name reproduces almost identically the mark, the only difference being the omission of the letter “i” in the middle of the term “daiichi”.
Second, the generic Top-Level Domain (“gTLD”) is generally disregarded under the confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0. Thus, the Panel notes that “.com” should not be taken into account when comparing the disputed domain name with the claimed trademarks as it is only a technical and necessary part of the disputed domain name with no distinguishing feature nor legal significance (See Figaro Classifieds v. Bernard Elkeslassy,WIPO Case No. D2016-2234). It is also well established that any gTLD, including, as is the case here, the gTLD “.com”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity.
A domain name, which consists of a common, obvious or intentional misspelling of a trademark, is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. (See Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Thus, Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires Complainant to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
Complainant claims that it never granted any rights to Respondent in order to use the trademark DAIICHI SANKYO or any misspellings thereof. In addition, the disputed domain name resolves to an inactive website.
Moreover, the Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions. (See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493: “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”).
Complainant has proved that Respondent’s website is inactive by providing a document that shows that the website does not exist. Complainant has further proved that the disputed domain name has been used for sending fraudulent emails by providing copies of such emails. Respondent clearly has not used the disputed domain name “in connection with a bona fide offering of goods or services” and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, Complainant claims that Respondent violated the Policy, paragraph 4(b)(iv) by using the disputed domain name to intentionally attract, for commercial gain, Internet users.
The disputed domain name, which is a typographical variant of Complainant’s trademark, is confusingly similar to Complainant’s trademark. The Panel finds that Respondent’s motive in registering the disputed domain name was to attract Internet users and therefore disrupt Complainant’s business. This constitutes evidence of registration and use in bad faith (Pancil, LLC v. Jucco Holdings,WIPO Case No. D2006-0676).
In addition, bad faith can be inferred based on the fact that Complainant’s trademark is present in various jurisdictions, such that Respondent was aware or should have been aware of Complainant’s marks and claims of rights thereto (particularly in view of Complainant’s use of its marks on the Internet). The Panel finds it highly doubtful that Respondent would have registered the disputed domain name without having knowledge of Complainant. The registration of a domain name similar to a distinctive trademark, when a respondent has no relationship to that trademark may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
Furthermore, Complainant claims that the disputed domain name does not resolve to an active website but has been used to send fraudulent emails. UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing and identity theft, which are all present in the current proceeding. See WIPO Overview 3.0, section 3.4.
Previous UDRP panels have held that a respondent acted with opportunistic bad faith in cases in which a domain name appears confusingly similar to a complainant’s well-known trademarks (Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Min Zhi,WIPO Case No. D2013-0020; Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta,WIPO Case No. D2016-0096). Furthermore, the Panel notes that the similarity between the trademark DAIICHI SANKYO and the disputed domain name in order to attract Internet users to an inactive website cannot be regarded as use in good faith.
The conduct described above falls within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Date: July 24, 2019
1 Respondent appears to have used the name and contact details of a senior officer of Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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