The Complainant is Amring Pharmaceuticals Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is ningdanxiu, China.
2. The Domain Name and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2021 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 November 15, 2021.
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 November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on January 19, 2022. 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 BackgroundThe Complainant is a privately held pharmaceutical company that provides value brands and niche generic products. It is part of Sever Life Sciences, BV and partners with well-established global biopharmaceutical companies to bring biotechnology derived medicines, sterile manufacturing and other state-of-the-art technologies to the marketplace.
In 2020, the Complainant entered into an agreement with Ferring International Center S.A. to acquire global rights to Lysteda (tranexamic acid), a first-in-class, non-hormonal therapy indicated for treatment of women with cyclic heavy menstrual bleeding. The Complainant has marketed the authorised generic version of Lysteda in the United States since March 2016. By virtue of the assignment from Ferring International Center S.A. the Complainant owns various trade mark registrations for LYSTEDA including United States trade mark registration 3931482 registered on March 15, 2011.
The disputed domain names were all registered on July 23, 2021 and each of them resolves to a website showing pornographic material in the Chinese language.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it owns trade mark registrations for its LYSTEDA mark as noted above and that each of the disputed domain names wholly incorporates its registered trade mark and that as a result each of them is confusingly similar to it. The Complainant says that the inclusion of the terms “info”, “offers”, “rx”, and “site” (as a pharmaceutical abbreviation for “prescription”) in the disputed domain names does not prevent a finding of confusing similarity.
The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorised by the Complainant to make any use of its LYSTEDA trademark, in a domain name or otherwise. It notes that the disputed domain names all resolve to Chinese language websites displaying content of a pornographic nature. The Complainant therefore submits that the Respondent cannot assert that prior to any notice of this dispute it was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
Neither says the Complainant is there any evidence to suggest that the Respondent is commonly known by any of the disputed domain names. It notes that while the identity of the Respondent is largely redacted from the publicly available WhoIs records, it has been identified as “Ningdanxiu”, which bears no resemblance to any of the disputed domain names. It also notes that there is no comprehensive Respondent contact information on the websites to which each of the disputed domain names resolve. The Complainant also contends that there is no evidence of the Respondent having acquired or applied for any trade mark registrations for “lystedainfo”, “lystedaoffers”, “lystedasite”, “lstedarx”, or any variation thereof.
Nor says the Complainant is the Respondent making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers, within the meaning of paragraph 4(c)(iii) of the Policy. It contends that the Respondent’s use of the disputed domain names to resolve to a pornographic site has the effect of tarnishing the Complainant’s trade mark. It says that the composition of each of the disputed domain names in the format LYSTEDA plus one or other of the terms “info”, “offers”, “rx”, and “site”, carries a high risk of implied affiliation. It suggests that Internet users viewing the disputed domain names as a search result, as a hyperlink, or as part of an email address are likely to be misled into believing that the disputed domain name in question is one of the Complainant’s official domain names.
As far as registration in bad faith is concerned, the Complainant says that its rights in the LYSTEDA trade mark substantially predate the registration of each of the disputed domain names and that the Complainant’s LYSTEDA trademark is distinctive and is well known as the brand name under which tranexamic acid is marketed. As a result, it submits that the Respondent could not credibly argue that it did not have knowledge of the Complainant and its rights in the LYSTEDA trade mark when registering the disputed domain names in 2021.
Rather, says the Complainant, the Respondent’s intent to target it may be inferred from the disputed domain names themselves, which include English language terms, particularly the disputed domain name that includes the suffix “rx” which has particular relevance in the pharmaceutical industry as an abbreviation for “prescription”. By registering four disputed domain names, each of which creates confusion with the Complainant’s LYSTEDA trade mark, the Respondent has engaged in an abusive pattern of bad-faith registration targeting domain names that carry with them a high risk of implied affiliation with the Complainant.
In terms of use in bad faith, the Complainant notes that each of the disputed domain names resolve to Chinese language websites of a pornographic nature. It says that the use of a domain name comprising a well-known trade mark to drive Internet users to websites displaying pornography constitutes evidence of bad faith for purposes of the third element of the Policy (see Caesars World, Inc v. Alaiksei Yahorau,WIPO Case No. D2004-0513). It notes also that the Respondent has been named in a prior UDRP decision, as having made similar use of a domain name comprising a third-party trade mark (see True Value Company, L.L.C. v. ningdanxiu, Forum, Claim NumberFA2109001964977). Accordingly, says the Complainant, the Respondent has also used each of the disputed domain names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns various trade mark registrations for LYSTEDA including United States trade mark registration 3931482 registered on March 15, 2011. Each of the disputed domain names wholly incorporates the Complainant’s LYSTEDA trade mark and as a result each of them is confusingly similar to it. The inclusion of the terms “info”, “offers”, “rx”, and “site” (the “rx” being a pharmaceutical abbreviation) does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate InterestsThe Complainant has submitted that the Respondent is not a licensee of the Complainant and has not been authorised by the Complainant to make any use of its LYSTEDA trade mark. In circumstances that each of the disputed domain names resolves to a Chinese language website displaying content of a pornographic nature and that there is no evidence of any other use of the disputed domain names, the Panel accepts the Complainant’s submission that the Respondent cannot assert that prior to any notice of this dispute it was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
The Complainant has also submitted that there is no evidence to suggest that the Respondent is commonly known by any of the disputed domain names or of the Respondent having acquired or applied for any trade mark registrations for “lystedainfo”, “lystedaoffers”, “lystedasite”, “lstedarx”, or any variation thereof. The Panel notes in this regard the Complainant’s contention that there is no comprehensive Respondent contact information on the websites to which each of the disputed domain names resolve.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers, within the meaning of paragraph 4(c)(iii) of the Policy. To the contrary it appears that the Respondent has sought to use the disputed domain names to mislead Internet users who are seeking the Complainant’s website into thinking that a domain name in the format LYSTEDA plus one or other of the terms “info”, “offers”, “site” or “rx” is associated or is connected with the Complainant with a view to driving further traffic to the pornographic sites to which each of the disputed domain names resolve.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in each of the disputed domain names. As the Complainant’s case has not been rebutted by the Respondent the Panel finds that the Complainant has successfully made out its case and that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain names were all registered on July 23, 2021, many years after the registration of the Complainant’s United States trade mark registration 3931482 which was registered in 2011. The LYSTEDA trade mark is highly distinctive coined term and appears to have developed a reputation in relation to its use as a brand name for tranexamic acid.
It appears that the Respondent has targeted the Complainant’s mark by registering the disputed domain names, which include additional English language terms together with the suffix “rx” that has particular relevance in the pharmaceutical industry as an abbreviation for “prescription”. The Panel agrees with the Complainant that by registering four disputed domain names, each of which creates confusion with the Complainant’s LYSTEDA trade mark, the Respondent has engaged in an abusive pattern of bad faith registration targeting domain names that carry with them a risk of implied affiliation with the Complainant. Accordingly the Panel finds that the Respondent registered each of the disputed domain names in bad faith.
Each of the disputed domain names resolves to Chinese language website of a pornographic nature. The use of a domain name comprising a well-known trade mark to drive Internet users to websites displaying pornographic images has been held by previous panels to constitute evidence of bad faith for purposes of the third element of the Policy (see Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513). Regardless as to whether the LYSTEDA mark can be regarded as “well known” or not (on which the Panel makes no finding), the Panel finds that the Respondent’s blatant use of the disputed domain names containing the Complainant’s highly distinctive and reputed trade mark for the purposes of redirecting Internet users to graphic pornographic images and in the manner described amounts to use of each of the disputed domain names in bad faith.
The Panel notes that the Respondent has previously misleadingly used a domain name to redirect Internet users to a pornographic website in a similar manner to this case (see True Value Company, L.L.C. v. ningdanxiu, Forum, Claim NumberFA2109001964977). This example, together with the four examples of such conduct in this case, is indicative of the Respondent having engaged in a pattern of conduct that sought to prevent the Complainant reflecting its trade mark in a corresponding domain name. The Panel finds that this is evidence of registration and use in bad faith under paragraph 4(b)(ii) of the Policy.
Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain names in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website. In circumstances that each of the disputed domain names featuring the LYSTEDA mark has been used to mislead or confuse Internet users into thinking that they would reach a site connect with the Complainant’s LYSTEDA product, but instead Internet users have been re-directed in each case to a Chinese language pornographic site and that the Respondent’s conduct appears more likely than not to be commercially motivated (noting that certain of the websites feature advertisements), the Panel also finds that the circumstances of paragraph 4(b)(iv) of the Policy are fulfilled in relation to all of the disputed domain names.
As a result, the Panel finds that each of the disputed domain names have been registered and used in bad faith and the Complaint also succeeds under this element of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Alistair Payne
Sole Panelist
Date: February 2, 2022