WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eisai R&D Management Co. Ltd v. Eisai Australia Pty Ltd, Name Redacted 1, Name Redacted 2

Case No. D2013-2227

1. The Parties

The Complainant is Eisai R&D Management Co. Ltd of Tokyo, Japan, represented by Clayton Utz Solicitors, Australia.

The Respondents are Eisai Australia Pty Ltd of South Perth, Western Australia, Australia; Name Redected 1; Name Redacted 2.

2. The Domain Names and Registrars

The disputed domain names <eisai-co.com> and <eisai-co.net> are registered with 1&1 Internet AG. The disputed domain name <eisai-finance.com> is registered with Todaynic.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2013. On December 23, 2013, the Center transmitted by email to 1&1 Internet AG Todaynic.com, Inc. (“the Registrars”) a request for registrar verification in connection with the disputed domain names. On December 24 and 27, 2013, the Registrars transmitted by email respectively to the Center their verification responses confirming that the Respondents are listed as the registrant and providing the contact details. In response to an email communication by the Center that the Registrars’ information was incorrectly reflected in the Complaint, the Complainant filed an amended Complaint on January 9, 2014.

On January 3, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding in relation to the disputed domain name <eisai-finance.com>. On January 8, 2014, the Complainant requested English be 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(a) and 4(a), the Center formally notified the Respondents of the Complaint in both Chinese and English, and the proceedings commenced on January 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2014. On January 17, 2014, the Center received an email communication from the Respondent Name Redacted 1 in which she/he claimed to “have no idea why the domain was registered under [her/his] name”. The Center acknowledged receipt of this email communication on the same day indicating that the Panel (on appointment) would consider her/his claims and address the issue in its decision. The Respondents did not submit any formal response. Accordingly, the Center notified the Respondents’ default on February 3, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 13, 2014. 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, Eisai R&D Management Co. Ltd, is a wholly owned subsidiary of Eisai Co., Ltd incorporated pursuant to the laws of Japan. The Complainant is active in the field of pharmaceutical and medicinal preparations, and is the owner of several trademark registrations for EISAI.

According to information on WhoIs, the disputed domain names appear to be registered under different Respondents. For the disputed domain name <eisai-finance.com>, the Respondent is Eisai Australia Pty Ltd and the disputed domain name was created on July 9, 2013. For the disputed domain name <eisai-co.com>, the Respondent is Name Redacted 1 and the disputed domain name was created on May 1, 2013. For the disputed domain name <eisai-co.net>, the Respondent is Name Redacted 2 and the disputed domain name was created on May 8, 2013.

5. Parties’ Contentions

A. Complainant

For the following reasons and evidence adduced in the Complaint, the Complainant submits that in this case, the same person, “Adrian Moreno”, has registered the disputed domain names, using either fictitious names or stolen identities:

(1) the Complainant has not been able to contact the listed registrants for the first and second disputed domain names, but there has been use of the first and second disputed domain names by an “Adrian Moreno” uncovered by the Complainant;

(2) the first and second disputed domain names are linked to the domain names the subject of Eisai R&D Management Co. Ltd v. Jillian Hicks, Seema Karami, Whois Privacy Protection Service, WIPO Case No. D2013-1633, in which the Complainant was successful, either by shared email addresses, or contact details highlighting a commonality between the two disputed domain names and the three domain names subject of the previous complaint;

(3) the telephone contact and address for the first disputed domain name have been used by “Adrian Moreno” to make contact with members of the public as further outlined in paragraphs 62 to 68 of the Complaint;

(4) the listed registrant of the third disputed domain name is the victim of identity theft as outlined at paragraph 15 of the Complaint; and

(5) the registration path and details for the third disputed domain name exhibits the same qualities as the other domain names used by “Adrian Moreno” leading the Complainant to conclude that it is highly likely that the third disputed domain name was also registered by “Adrian Moreno”.

Pursuant to paragraphs 3(c) and 10(e) of the Rules, the Complainant requests the Panel to consolidate multiple domain name disputes into one complaint.

The Complainant has reasonable grounds to suspect that the disputed domain names are being used by “Adrian Moreno” as an “Internet scam” to obtain personal and financial information of individuals under false pretenses.

The Complainant is concerned that the use of the disputed domain names is a “mule recruitment scam”. A mule recruitment scam is a scam which is intended to facilitate the transfer of stolen funds to different bank accounts using the victim as the transfer agent. It is often conducted through the use of job advertisements posted on recruitment websites. The criminals conducting the fraud can purport to act on behalf of a legitimate company (or an entirely fictitious company) and induce victims to apply for these jobs and undertake “work” for that company. The “work” involves the victim receiving money into their bank account and then transferring this money (often electronically) into another account. The Complainant has reported the Respondents’ conduct to the New South Wales Police.

The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:

(1) The Complainant is the registered owner of 813 trademarks incorporating the word “eisai” worldwide. In Australia, the Complainant is the owner of the following registered Australian trademarks incorporating the word “eisai”:

- Australian Trademark Registration No. 213941, being a composite mark of EISAI within an oval, registered since October 3, 1967 in class 5 (pharmaceutical preparations, medicines and drugs, chemical substances for medical use, veterinary products, invalids’ and infants’ foods, and disinfectants);

- Australian Trademark Registration No. 264109 being a composite mark of EISAI within an oval, registered since December 6, 1972, in class 5 (pharmaceutical and medicinal preparations; vitamins, vitamin supplements, vitamin creams and ointments; medicated cosmetics; and all other goods in this class);

- Australian Trademark Registration No. 264110 for EISAI, registered since December 6, 1972, in class 5 (pharmaceutical and medicinal preparations; vitamins, vitamin supplements, vitamin creams and ointments; medicated cosmetics; and all other goods in this class);

- Australian Trademark Registration No. 277105 for EISAI, registered since December 6, 1972, in class 3 (cosmetics with medicinal properties);

- Australian Trademark Registration No. 277106 being a composite mark of EISAI within an oval, registered since December 6, 1972 in class 3 (cosmetics with medicinal properties);

- Australian Trademark Registration No. 277997 for EISAI, registered since May 1, 1974, in class 3 (all goods in this class including bleaching preparations and other substances for laundry use; cleaning polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, hair lotions; dentifrices); and

- Australian Trademark Registration No. 277998 being a composite mark of the word EISAI within an oval, registered since May 1, 1974, in class 3 (all goods in this class including bleaching preparations and other substances for laundry use; cleaning polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, hair lotions; dentifrices).

(2) The disputed domain name <eisai-finance.com> contains the word “eisai” with only a hyphen and the word “finance”. The second and third disputed domain names <eisai-co.com> and <eisai-co.net> contain the word “eisai” with only a hyphen and the suffix “co”. It is submitted that disputed domain names are identical or confusingly similar to the word “eisai” and therefore the EISAI marks. While the disputed domain names do contain a hyphen and an additional word or suffix, in the case of the first disputed domain name, “finance”, and the second and third disputed domain names “co”, the Complainant submits that these differences are not material.

(3) With respect to the first disputed domain name, the addition of the word “finance” does nothing to dispel the confusing similarity given that the Respondents are using the disputed domain names to offer a position at Eisai Australia Pty Limited as the “Accounts Assistant”. The mere addition of common, dictionary, descriptive, or negative terms has typically been regarded as insufficient to prevent threshold Internet user confusion.

The Complainant contends that the Respondents nor “Adrian Moreno” has no rights or legitimate interests in respect of the disputed domain names on the following grounds:

(1) The Respondents have no trademark containing the word “Eisai”. To the best of the Complainant’s knowledge and belief, neither the Respondents nor “Adrian Moreno” own any trademark or service mark rights in the word “Eisai”.

(2) No license granted to the Respondents by the Complainant. The Respondents’ use of the EISAI marks, including the Australian EISAI marks, has never been authorized, sponsored, or endorsed by the Complainant, nor have the Respondents, or “Adrian Moreno” ever been affiliated with the Complainant in any way.

(3) The Respondents are not commonly known by the disputed domain names. Furthermore, the Respondents have not commonly been known by, or built up a reputation through the use of, the word “Eisai”. The WhoIs Search for each of the disputed domain names revealed that the disputed domain names were registered in 2013. This short-term use of the disputed domain names is incompatible with any claim by the Respondents that they could be commonly known by, or established a reputation under the name “Eisai”. In contrast, the Complainant has been trading under the name “Eisai” since at least 1946 when the EISAI trademark was first registered in Japan.

(4) No use of the disputed domain names in a bona fide offering of goods or services. The disputed domain names do not host any data. The only use of the disputed domain names uncovered by the Complainant involved use of the disputed domain names in the contact email for an online job advertisement, […]@eisai-co.com.

(5) The Complainant submits that the disputed domain names have been registered and used by “Adrian Moreno” to add credibility to his communications in connection with the Internet scam connected with the disputed domain names. However, as discussed at paragraph 47 of the Complaint, none of the uses made by the Respondents or “Adrian Moreno” of the disputed domain names had the authorisation of the Complainant. These uses were made without the Complainant’s knowledge. The Complainant submits that it is clear from the behavior of “Adrian Moreno” that there has been no bona fide use of the disputed domain names by the Respondents in the offering of goods and services.

(6) No legitimate noncommercial or fair use of the disputed domain names. “Adrian Moreno” has used the disputed domain names to impersonate the Complainant in order to obtain sensitive personal and financial data from unsuspecting Australian job seekers and conduct an Internet mule recruitment scam. This conduct has been reported to the New South Wales Police. The Respondents therefore cannot be considered to be making any legitimate noncommercial or fair use of the disputed domain names. Indeed, the Complainant has reason to believe that the Respondents are using the disputed domain names to acquire legitimacy in order to deceive consumers as to the identity of “Adrian Moreno” and induce them to take part in a mule recruitment scam.

(7) Onus of proof shifts to the Respondents. For the aforementioned reasons, the Complainant considers that it has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. Accordingly, the onus of proof shifts to the Respondents to prove the contrary.

The Complainant contends that the disputed domain nameswere registered and are being used in bad faith on the following grounds:

(1) The Complainant submits that “Adrian Moreno” has registered and continues to operate the disputed domain names in bad faith because:

a. the disputed domain names were registered and used to impersonate the Complainant, thereby causing confusion to consumers concerning the affiliation of the Respondents with the Complainant;

b. the disputed domain names were used by “Adrian Moreno” to obtain the personal and financial information of job seekers on false pretenses, or to obtain financial advantage by way of a mule recruitment scam;

c. the Respondents’ many registrations incorporating the EISAI marks constitutes a pattern of behaviour designed to inhibit the Complainant’s capacity to use the EISAI marks; and

d. the Respondents’ use of falsified WhoIs information constitutes bad faith registrations of the disputed domain names.

(2) The Complainant submits that the “Adrian Moreno” has intentionally attempted to attract Internet users by creating a likelihood of confusion with the EISAI marks as to the source or affiliation with the Complainant under paragraph 4(b)(iv) of the Policy.

(3) Since June 2013, the Respondents have used email addresses, telephone contact numbers and addresses associated with the disputed domain names to impersonate the Complainant in offering jobs to at least four separate individuals. To protect these individuals’ privacy, their personal details have been redacted. On June 5, 2013, the Complainant received an email from an individual who claimed to have been offered a job with Eisai Australia Pty Ltd by “Adrian Moreno”. On June 24, 2013, the Complainant received an email from another individual which attached an email from “Adrian Moreno”. The email attached a document which was entitled “job description” and which reproduced the composite mark protected by the Australian EISAI marks. On August 1, 2013, the Complainant received another email from another individual who had been offered by Moreno, and accepted, a job purportedly with Eisai Australia Pty Ltd. This individual was sent an employment contract, had signed it, and performed a month’s work without receiving payment from “Adrian Moreno”. That email attached a document purporting to be an “Accounts Assistant - Agreement” from Eisai Australia Pty Ltd and purportedly executed by Eisai Australia Pty Ltd. On August 20, 2013, the Complainant received another email from another individual who had been offered by “Adrian Moreno”, and accepted, a job purportedly with Eisai Australia Pty Ltd. This individual claimed that he was being investigated by his bank for possible handling of stolen money.

(4) The Complainant submits that the multiple registrations made by the Respondents in both this complaint and Eisai R&D Management Co. Ltd v. Jillian Hicks, Seema Karami, Whois Privacy Protection Service, supra show a pattern of conduct designed to prevent the Complainant from reflecting the EISAI marks in corresponding domain names. To date, the Complainant has uncovered six uses of the EISAI marks in domain names held by the Respondents:

a. <eisai-pharma.com>;

b. <eisai-au.com>;

c. <au-eisai.com>;

d. <eisai-finance.com>;

e. <eisai-co.com>; and

f. <eisai-co.net>.

(5) The Complainant submits that each of these domain names has been registered by “Adrian Moreno” to pass himself off as the Complainant and operate a mule recruitment scam. The domain names were <eisai-pharma.com>, <eisai-au.com> and <au-eisai.com>. Previous UDRP panels have found that a pattern of conduct which involves multiple UDRP cases with similar fact situations as well as multiple domain registrations by a single respondent can be grounds for a finding of a bad faith registration and use of a domain name. The Complainant submits that the Respondents’ conduct clearly shows a pattern of bad faith conduct designed to prevent the Complainant from utilising its EISAI marks in domain names.

(6) The Complainant has reason to believe that an individual named “Adrian Moreno” has registered these domain names using false information. This use of false information in the registration of the domain name constitutes a bad faith registration of the disputed domain names given that the provision of false information breaches the Respondents' obligations pursuant to the Registration Agreements for the disputed domain names to provide correct and current personal details for registration.

B. Respondent

The Respondents did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Consolidation of Disputes

Having considered the Complainant’s submissions and the evidence adduced, the Panel finds that the particular circumstances of the present case supports a consolidation of the disputes. There is evidence to indicate that the disputed domain names are controlled by a single person i.e. “Adrian Moreno” using fictitious names and there is common control being exercised over the disputed domain names. It is therefore procedurally equitable and efficient to consolidate the disputes in the present proceeding.

6.2. Redaction of the Respondents’ names

As held in Toray Industries, Inc. v. Whois Privacy Protection Service, Inc., ALAN ONEAL, Name Redacted, SALMAN MASUD, WIPO Case No. D2013-1787; Elkjøp Nordic A/S v. Name Redacted, WIPO Case No. D2013-1285 and Saudi Arabian Oil Company v. Name Redacted, D2013-0105, this Panel finds that the disputed domain name <eisai-co.com> was registered by a third party without the involvement of the person identified in the WhoIs as the registrant of the disputed domain name. The listed registrant is Name Redacted 1 and she/he has written an email to the Center dated January 17, 2014 to state that she/he has nothing to do with the disputed domain name <eisai-co.com>. The Panel has accordingly redacted the name of this person in this Decision and has attached an Annex 1 as an instruction to the Registrar – this Annex 1 shall not be published in this exceptional case. With respect to the third disputed domain name <eisai-co.net>, this Panel similarly finds that it was registered by a third party without the involvement of the person identified in the WhoIs as the registrant of the disputed domain name. The listed registrant of the disputed domain name <eisai-co.net> is Name Redacted 2 and the Complainant has submitted in its Complaint that she/he is a victim of identity theft. This Panel accepts the Complainant’s submission. Accordingly, the Panel has also redacted the name of that person in this Decision and has attached an Annex 1 as an instruction to the Registrar – this Annex 1 shall not be published in this exceptional case.

6.3. Language of the Proceeding

According to the information received by the Center from the Registrars, the language of the Registration Agreement for two of the disputed domain names is English and for one of them is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondents to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English, to which the Respondents have not objected.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11(a) of the Rules provides:

“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.”

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language and it appears from evidence adduced that the Respondents are conversant in the English language. Furthermore, the Center has notified the Respondents of the proceeding in both Chinese and English. The Respondents had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondents had experienced difficulty with the English language, they could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondents have chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.4. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the EISAI trademark for pharmaceutical products in many countries in the world.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain names consist of the Complainant’s trademark EISAI in its entirety, the addition of the word “finance” in one of them and “co” in the other two and the generic Top-Level Domain (gTLD) suffixes “.com” and “.net” in three of them. The Panel is of the view that the most prominent and distinctive part of the disputed domain names is the term “eisai” which for all intents and purposes is identical to the Complainant’s registered trademark EISAI. It is well accepted that the addition of descriptive words as well as the addition of suffixes such as “.com” or “.net” being the gTLD are typically not distinguishing factors.

Bearing in mind the distinctive character of the Complainant’s EISAI trademark, the Panel therefore finds that the disputed domain names are identical or confusingly similar to the EISAI trademark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names:

(1) there is no evidence of a legitimate use by the Respondents of the disputed domain names or reasons to justify the choice of the term “eisai” in their business operations;

(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondents to use its trademark or to apply for or use any domain name incorporating the EISAI trademark;

(3) there is no indication whatsoever that the Respondents are commonly known by the disputed domain names and/or are using the disputed domain names in connection with a bona fide offering of goods or services.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondents to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondents] of the dispute, your 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) you [the Respondents] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondents] are 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.”

The Panel notes that the Respondents have not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondents have failed to submit a formal Response to the Complaint filed against it. In particular, the Respondents have failed to make submissions to demonstrate that they have rights or legitimate interests in the disputed domain names.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the Respondents appear to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain names.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or

(iii) the Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites or location or of a product or service of the Respondents’ websites or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondents have registered and are using the disputed domain names in bad faith is prior knowledge on the part of the Respondents of the Complainant’s rights in the trademark concerned. Evidence adduced by the Complainant in the present proceedings, in particular the use of the disputed domain names as a means to recruit employees on behalf of an entity bearing the EISAI trademark, indicates that the Respondents have prior knowledge of the existence of the Complainant and its EISAI trademark. Therefore, the Panel finds that it is not conceivable that the Respondents would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondents to provide an explanation of their choice of the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondents have chosen to register the disputed domain names that are identical or confusingly similar to the Complainant’s trademark and where there is no evidence to support that the Respondents have rights or legitimate interests in the disputed domain names, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondents to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a heavy one. There is no evidence that the Respondents have used or intend to use to the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, there is evidence that the Respondents through one individual or entity “Adrian Moreno” appears to be engaging in illegal online recruitment scams. In this regard, the Panel finds that the Respondents have not provided any plausible explanation.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites under paragraph 4(b)(iv) of the Policy.

Thus, the Panel finds for the Complainant on the third part of the test.

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 names, <eisai-co.com>, <eisai-co.net> and <eisai-finance.com>, be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: March 7, 2014