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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Actelion Pharmaceuticals, Ltd v. Miles Richey, Richey Fixnet

Case No. D2016-1612

1. The Parties

The Complainant is Actelion Pharmaceuticals, Ltd. of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.

The Respondent is Miles Richey, Richey Fixnet of Arlington, Texas, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <actelion-com.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2016. On August 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2016, 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 August 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2016.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on September 14, 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.

4. Factual Background

The Complainant is a leading biopharmaceutical company located in Allschwil/Basel, Switzerland, where it was founded in 1997. Its shares have been listed on the SIX Swiss Exchange (ticker symbol ALTN) since 2000. The Complainant has more than 30 operative affiliates around the world including the United States where the Respondent is located, Canada, Brazil, Australia, Japan, Switzerland and a number of European countries.

The Complainant is the owner of the registered trademark ACTELION as a word mark in numerous countries all over the world including in the United States where the Respondent resides, and these registrations include International Trademark Registration No. 869983 (registered in 2005), United States Trademark Registration No. 3148269 (registered in 2006), United States Trademark Registration No. 3957047 (registered in 2011) and United States Trademark Registration No. 3922607 (registered in 2011).

The Complainant has also registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the term “Actelion”. See for example, <actelion.com> (created on January 15, 1998) and <actelion.us> (created on May 6, 2002). The Complainant is using the domain names to connect to a website through which it informs potential customers about its ACTELION mark and its products and services.

The Respondent registered the disputed domain name on July 18, 2016. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name directly incorporates the Complainant’s registered trademark ACTELION, as a typo-variant domain name, where the “.com” top level domain name has been added within the domain name.

- There is no bona fide offering of goods or services where the disputed domain name incorporates a trademark which is not owned by the Respondent, nor is the Respondent known by the name “Actelion”. The legal entity displayed in the WhoIs record is an organization called “Richey Fixnet” and the Registrant name is Miles Richney. The distinctive name “Actelion” is not a name one would legitimately choose as a domain name without having specific rights to such name. This name is certainly not a descriptive term serving to indicate specific characteristics of any goods or services.

- Evidence shows that the website connected to the disputed domain name does not resolve to an active website. The apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such indicate lack of legitimate interests in the domain name. Examples of what may be cumulative circumstances found to be indicative of non-legitimate use include the Complainant having a well-known trademark and there have been no demonstrable preparations to use of the domain name.

- There is no indication of a possible good faith use of the domain name. Additionally, the WhoIs for the disputed domain name shows that the Respondent email address [...]@exelon­corp.com includes the name of the CEO of a third party (i.e. Exelon Corporation) which demonstrates that the Respondent has engaged in a pattern of abusive registrations. The Respondent is not only affiliated with the disputed domain name but also with the domain name <exelon-corp.com>.

- The disputed domain name is a close typo-variant of the Complainant’s trademark ACTELION. When conducting a search on Google for “actelion-com.com” the results returned are related to the Complainant. Results are generated from the Complainant’s official site “www.actelion.com”, official LinkedIn profile, Facebook, Twitter and job advertisements.

- The Respondent has engaged in pattern of abusive registration and registered multiple domain names which are similar to trademarks. So far, the Respondent has registered domain names that include the trademarks ACTELION and EXELON.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of the registered trademark ACTELION as a word mark in numerous countries all over the world including the United States, and these registrations include International Trademark Registration No. 869983 (registered in 2005), United States Trademark Registration No. 3148269 (registered in 2006), United States Trademark Registration No. 3957047 (registered in 2011) and United States Trademark Registration No. 3922607 (registered in 2011) show. Therefore, the Panel is satisfied that the Complainant has rights in the ACTELION trademark.

The disputed domain name is incorporating the Complainant’s trademark ACTELION as a typo-variant domain name, where the “.com” top level domain name has been added to the disputed domain name. The Panel agrees with the Complainant that the addition of the generic Top-Level Domain (gTLD) “.com” does not add any distinctiveness to the disputed domain name. In this sense, it is worth noting the WIPO Overview on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, as well as the recent International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581 where the Panel stated the following: “In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test”.

As a consequence, the Panel finds that the Complaint succeeds under the first element of the Policy, by proving that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […]”.

The Complainant asserts that there is no bona fide offering of goods or services where the disputed domain name incorporate a trademark which is not owned by the Respondent, nor is the Respondent known by the name “Actelion”. The legal entity displayed in the WhoIs record is an organization called “Richey Fixnet” and the Registrant name is Miles Richney. The distinctive name “Actelion” is not a name one would legitimately choose as a domain name without having specific rights to such name. This name is certainly not a descriptive term serving to indicate specific characteristics of any goods or services.

Moreover, the Complainant asserts that the website connected to the disputed domain name does not resolve to an active website.

Additionally, according to the evidence submitted by the Complainant, the Respondent is not only affiliated with the disputed domain name but also with the domain name <exelon-corp.com>, and the WhoIs for the disputed domain name shows that the Respondent’s email address [...]@exelon­corp.com incorporates the name of the CEO of a third party (i.e. Exelon Corporation), which demonstrates that the Respondent has engaged in a pattern of abusive registrations.

Furthermore, the Respondent bears no relationship to the trademark and the disputed domain name has no other meaning except for referring to the Complainant’s name and trademark and there is no way in which the domain name could be used legitimately.

All these circumstances asserted and proven by the Complainant are, in the opinion of this Panel, together with the Complainant having a well-known trademark, cumulatively indicative of non-legitimate use of the disputed domain name by the Respondent.

Considering also the absence of any rebuttal from the Respondent’s side, the Panel finds the Complaint succeeds also under the second element of the Policy, by proving that the Respondent holds no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant that the disputed domain name is a close typo-variant of the Complainant’s trademark ACTELION. When conducting a search on Google for “www.actelion-com.com” the results returned are related to the Complainant. Results are generated from the Complainant’s official site “www.actelion.com”, the Complainant’s official LinkedIn profile, Facebook, Twitter and job advertisements.

Moreover, from the evidences provided by the Complainant, it appears that the Respondent may be engaged in a pattern of abusive registration, by registering multiple domain names which are similar to the trademarks of the Complainant and of third parties. So far, the Respondent has registered or is at least connected to the trademarks ACTELION and EXELON. From this pattern, the Panel infers that the Respondent is capitalizing on well-known trademarks. From the Complainant’s point of view, the Respondent intentionally chose the disputed domain name based on a registered and well-known trademark in order to only use it for commercial and non-legitimate use.

As the Complainant asserts, it is highly unlikely that the Respondent was not aware of the rights and the value of said trademark when it registered disputed domain name.

The disputed domain name resolves to an inactive website. UDRP Panels have found that the apparent lack of so-called active use of the domain name does not as such prevent a finding of bad faith.

Consequently, this Panel finds that the Complainant succeeds under the third element of the Policy, by proving that the Respondent has registered and is using the disputed domain name in bad faith.

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 <actelion-com.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Date: September 26, 2016

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