Complainant is Actelion Pharmaceuticals, Ltd Corporation Switzerland of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.
Respondent is Rsinal Indana of Lagos, Nigeria.
The disputed domain name <actelionpharmaceutical.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2016. On May 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on May 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2016.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on July 8, 2016. 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.
Complainant is a biopharmaceutical company operating under the name “Actelion Pharmaceuticals, Ltd.” and has a number of trademark registrations for ACTELION in various classes dating back to at least 2005. Complainant has registered a number of domain names that incorporate the ACTELION mark and that lead to websites relating to Complainant and its products and services. The disputed domain name was registered on May 11, 2016. Complainant attached screenshots of the “www.actelionpharmaceutical.com” website to the Complaint, which appear to be a website for “Actelion Pharmaceuticals UK Ltd.”
Complainant asserts that the disputed domain name consists of Complainant’s ACTELION mark plus the generic word “pharmaceutical” plus the generic Top-Level Domain (“gTLD”) “.com”, and that the disputed domain name therefore is confusingly similar to Complainant’s ACTELION mark because the gTLD should be disregarded for purposes of the confusing similarity test and the word “pharmaceutical” allegedly “exaggerates the confusing similarity between the Domain Name and the Complainant’s trademarks, since the Complainant is a pharmaceutical company.” Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is known as Rsinal Indana, Respondent is not known as Actelion, Actelion is not a descriptive term indicating characteristics of goods or services, Respondent is using the disputed domain name to redirect users to “a substantially similar reproduction of the content of Complainant’s website”, and Respondent has a copyright notice and email addresses on the site that allegedly “create the impression that the website is owned by and operated by Complainant” and could be used to phish for personal information. Complainant asserts that Respondent has engaged in a pattern of abusive registrations and that Respondent had actual knowledge of Complainant’s ACTELION mark based on Respondent’s website which references Complainant’s business.
Respondent did not reply to Complainant’s contentions.
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “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”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant’s trademark registrations attached to the Complaint demonstrate that Complainant has rights in the ACTELION mark.
The disputed domain name consists of the ACTELION mark plus the generic word “pharmaceutical” plus the “.com” gTLD. The addition of generic words to a trademark does not avoid confusing similarity to the mark. See Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). Indeed, the addition of a generic word that is descriptive of the complainant’s business may in some circumstances increase the confusing similarity to the complainant’s mark. See CNH America LLC v. UnderHost Networks Ltd, WIPO Case No. D2013-1252 (“This additional term does not detract from the distinctiveness of the NEW HOLLAND mark but in the view of the Panel serves to increase the likelihood of confusion with the Complainant’s trademark since it is one of the products sold by the Complainant.”); Delta Air Lines, Inc. v. Ruslan Moussaev, WIPO Case No. D2009-0718 (“Use of the word ‘flys’, which describes the service Complainant provides and which is associated with its trademark, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainant’s mark”).
Similarly, “[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. See also WRc plc v. W&R Corp., WIPO Case No. D2007-1284 (“The addition of the generic top-level domain ‘.com’ is insufficient to distinguish the domain name from Complainant’s mark”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by <actelionpharmaceutical.com>, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Rather, the only evidence of Respondent’s identity is the WhoIs record identifying Respondent as “Rsinal Indana”, and the only evidence of how the disputed domain name is being used indicates that it is being used for a website that appears to be about (and from) “Actelion Pharmaceuticals UK Ltd” (but that is not in fact a site authorized by Complainant).
These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See, e.g., Diamond Hill Investment Group, Inc. v. Richard Stroud, WIPO Case No. D2016-0510 (“Complainant asserts that the Domain Name resolves to a website that is a virtually identical copy of Complainant’s website and that this website is being operated to further a possible criminal enterprise. Respondent has not submitted any response to rebut these allegations. The Panel finds that the use of the Domain Name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services.”); LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. … Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (“No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”); Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word ‘telstra’ appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”).
Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Complainant in essence asserts that Respondent has engaged in bad faith registration and use under paragraphs 4(b)(ii) and 4(b)(iv). Complainant points to a third party website – <db.aa419.org> – which contains WhoIs records for three websites registered to Respondent and which purport to be Reserve Bank of India websites. In addition, Respondent registered the dispute domain name, which is confusingly similar to Complainant’s ACTELION mark and is being used for a website that purports to be a pharmaceutical website associated with Complainant. Further, the case file reflects the Center’s attempt to send the Complaint to Respondent at Respondent’s address reflected in the WhoIs record, and the case file indicates that Respondent’s address in the WhoIs record is “incomplete/wrong” and that the disputed domain name was subsequently put on “clientHold” by the registrar “due to an ICANN WHOIS inaccuracy action”. These facts make out a case of bad faith. See Diamond Hill Investment Group, Inc. v. Richard Stroud, WIPO Case No. D2016-0510; Mastercard International Incorporated v. MasterCard Brasil, WIPO Case No. D2009-1691; TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361.
In addition, the use of a domain name for a site that imitates a legitimate pharmaceutical site could pose a public health risk and therefore also may be indicative of bad faith. Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483; Sepracor Inc. v. Shonkin Inc., WIPO Case No. D2008-1258; Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344; Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-0682 (“The evidence is clear that the sales of the ACCUTANE product or competitive products were made possible by the use of the website of the Respondent associated with the domain name in dispute to reach online pharmacies, which is illegal in the U.S. and that such sales result from the confusion created by the domain name in dispute and the well known Trademark of the Complainant. These activities have been considered as causing harm to the public and the Complainant and are showing use of the domain name in bad faith”).
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
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 <actelionpharmaceutical.com> be transferred to the Complainant.
Bradley A. Slutsky
Sole Panelist
Date: July 18, 2016