The Complainant is Indivior UK Limited of Atlanta, Georgia, United States of America (“United States”), represented by Troutman Sanders, LLP, United States.
The Respondent is Xu Jing of Beijing, China.
The disputed domain name <indivior.info> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2018, the Registrar transmitted by email to the Center its verification response providing 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 June 15, 2018 providing the registrant and contact information disclosed by the Registrar. On the same day, the Complainant filed an amended Complaint.
On June 15, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 19, 2018. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 19, 2018. 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.
The Complainant is a pharmaceutical company that, along with its affiliates, sells pharmaceuticals for addiction treatment and control. It owns trademark registrations for INDIVIOR in multiple jurisdictions including Chinese trademark registration number G1214595, registered on June 27, 2014, specifying goods and services in classes 5, 10, and 44 including pharmaceutical preparations, medical apparatus, and medical services. That trademark registration remains current. The Complainant has also registered the domain name <indivior.com> that it uses in connection with its official website where it provides information about itself and its products.
The Respondent is an individual ostensibly resident in China. His contact street address in the Registrar’s WhoIs database is manifestly false. The disputed domain name was registered on May 4, 2018. It does not resolve to any active website; rather, it is passively held.
The disputed domain name is confusingly similar to the INDIVIOR trademark because it incorporates that mark in its entirety without change.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The INDIVIOR mark is a coined, fanciful term which has no meaning outside its use as a means to identify the Complainant as a source of certain products and services. The Respondent is not a licensee of the Complainant nor is the Respondent otherwise authorized to use the INDIVIOR trademark for any purpose. Upon information and belief, the Respondent is not commonly known as “Indivior”. The disputed domain name does not resolve to an active website.
The disputed domain name was registered and is being used in bad faith. Upon information and belief, the Respondent knowingly registered the disputed domain name, a near-exact reproduction of the Complainant’s unique and inherently distinctive INDIVIOR trademark. There is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Top-Level Domain (“TLD”) “.info” is an English-language formative; the Complainant is a United Kingdom limited company and its primary advertising, promotional literature, and website are in English while the disputed domain name is an exact copy of the Indivior name from which it is reasonable to infer that the Respondent is able to understand and communicate in English. The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. The Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
Based on the evidence provided, the Panel finds that the Complainant has rights in the INDIVIOR trademark.
The disputed domain name wholly incorporates the Complainant’s INDIVIOR trademark. The only additional element is the TLD suffix “.info”. A TLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s INDIVIOR trademark. The Complainant states that the Respondent is not a licensee of the Complainant nor is the Respondent otherwise authorized to use the INDIVIOR trademark for any purpose. The disputed domain name does not resolve to any active website. These circumstances show that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services for the purposes of the Policy, and there is no evidence that he has made any demonstrable preparations to do so. Nor is this a legitimate noncommercial or fair use of the disputed domain name. The Panel does not find that the Respondent’s use falls within the first or third circumstance of paragraph 4(c) of the Policy.
According to the Registrar’s WhoIs database, the Respondent’s name is “Xu Jing”, not “Indivior”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the Panel observes that the disputed domain name incorporates the Complainant’s INDIVIOR trademark in its entirety, with no additional element besides a TLD suffix, which is a technical requirement of registration. The Respondent registered the disputed domain name years after the Complainant registered its trademark, including in China. INDIVIOR is a coined word with no apparent meaning besides being the Complainant’s trademark. The Respondent gives no explanation for his choice of the disputed domain name. Therefore, the Panel considers it likely that the Respondent was aware of the Complainant and its trademark at the time that he registered the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in bad faith.
With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, INDIVIOR is a coined word with no other meaning other than as the Complainant’s trademark. The Respondent’s contact street address in the Registrar’s WhoIs database is manifestly false which indicates an attempt to conceal his whereabouts. The Respondent gives no explanation of any proposed use of the disputed domain name. Given these circumstances, the Panel finds that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <indivior.info> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 22, 2018