The Complainants are Actavis Group PTC ehf, Iceland and Actavis Holdco US, INC., Iceland, represented by SILKA AB, Sweden.
The Respondent is Whois Agent (328792083), Whois Privacy Protection Services, Inc., United States of America / George Washere, Panama.
The disputed domain name <actavis4saleonline.com> (the “Domain Name”) is registered with eNom, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 4, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on June 7, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2021.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 10, 2021. 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 following facts are undisputed.
The Complainant Actavis Group PTC ehf, and the Complainant Actavis Holdco US, Inc. are members of the same group of companies (both hereinafter referred as the “Complainant”, unless specified otherwise).
The Complainant Actavis Group PTC ehf is a well-known pharmaceutical company with its roots in Iceland. The Complainant is the proprietor of several registered trademarks in relation to ACTAVIS, including, but not limited to:
- European Union trademark (word mark) ACTAVIS, with registration number 003615721, registered on January 16, 2006;
- International trademark (word mark) ACTAVIS, with registration number 827298, registered on March 15, 2004, designating thirty jurisdictions;
- United States of America trademark (word mark) ACTAVIS, with registration number 4694086, registered on March 3, 2015.
These trademarks will hereinafter in singular be referred to together as the “Trademark”.
The Domain Name was registered on November 23, 2020. At the time of filing the Complaint, the Domain Name resolved to a pay-per-click page containing references to products which are competing with the Complainant’s products. In addition, the Domain Name is offered for sale for USD 299 on the parking page.
Insofar as relevant for deciding this matter, the Complainant contends the following.
The Domain Name is confusingly similar to the Complainant’s Trademark, as the Trademark is recognizable within the Domain Name. The Trademark is completely incorporated in the Domain Name and only the descriptive words “4 Sale Online” are added, which indicates the intention to make the Complainant’s products available for sale.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent was not authorized, licensed or permitted to register or use the Domain Name and there is no connection between the Complainant and the Respondent. The Domain Name resolves to a website designed to lure consumers and redirect them to websites of competitors. The MX records indicate that an email account has been connected to the Domain Name, enhancing the risk of phishing, spamming or illegal activities. In addition, the Domain Name is being offered for out of pocket expenses, amounting up to USD 299.
The Domain Name was registered and has been used in bad faith. The Complainant is a globally well-known company, with commercial presence in over 100 countries. Therefore, the Respondent must have been aware of the Complainant’s Trademark. The website connected to the Domain Name resolves to a pay-per-click website. The Respondent has offered the Domain Name for sale for out of pocket expenses.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the Trademark in connection with the terms “4 sale online”, which will generally be understood as standing for “‘for sale online”. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the aforementioned elements do not prevent a finding of confusing similarity.
In addition, with regard to the generic Top-Level Domain (“gTLD”) “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD “.com” is a necessary component of the Domain Name.
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “actavis” or “4 sale online” is the Respondent’s name or that the Respondent is commonly known as such. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
The Panel notes that the Domain Name resolves to a pay-per-click website, where links to the websites of competitors of the Complainant are included. The Panel notes that for the purpose of the Policy, such use of the Domain Name cannot be considered a bona fide offering of goods and services. The Respondent has also not made any demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services, but is rather offering the Domain Name for sale.
Therefore, the Panel is satisfied that the second element of the Policy is met.
The Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the existence of the Complainant’s activities and rights at the time the Respondent registered the Domain Name.
The Panel finds that the Respondent, by using the Domain Name for pay-per-click links, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
The Panel notes that the Respondent is offering for sale the Domain Name for USD 299. In the opinion of the Panel, this suggests that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant, for valuable consideration probably in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. This is evidence of registration in bad faith under Policy, paragraph 4(b)(i). Moreover, offering a domain name for sale in such a manner is in itself evidence of use in bad faith of the domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, finding that “[b]ecause respondent offered to sell the domain name to complainant ʻfor valuable consideration in excess of any out-of-pocket costs directly related to the domain name, respondent has ʻusedʼ the domain name in bad faith as defined in the Policy.”
Finally, although the lack of a formal or substantive response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <actavis4saleonline.com> be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: August 23, 2021