WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eisai R&D Management Co. Ltd v. Jillian Hicks, Seema Karami, Whois Privacy Protection Service
Case No. D2013-1633
1. The Parties
Complainant is Eisai R&D Management Co. Ltd of Tokyo, Japan, represented by Clayton Utz Solicitors, Australia.
Respondents are Jillian Hicks of Melbourne, Victoria, Australia, Seema Karami of South Perth, Western Australia, Australia, and Whois Privacy Protection Service of Xiamen, Fujian, China.
2. The Domain Names and Registrars
The disputed domain names <au-eisai.com>, <eisai-au.com> and <eisai-pharma.com> are registered with Todaynic.com, Inc., 1&1 Internet AG and Bizcn.com, Inc. (the “Registrars”).
3. Procedural History
Complainant filed its Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 18, 2013, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On September 19, 24 and 26, 2013, the Registrars transmitted by email to the Center its verification response, confirming that Respondents are listed as the registrant and providing the contact details. On October 2, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 4, 2013, Complainant confirmed its request that English be the language of the proceeding. Respondents did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on October 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on October 31, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 19, 2013. 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
Complainant is a pharmaceutical company and it owns hundreds of trademarks incorporating the word “Eisai”, including Australian Trade Mark Registration No. 213941, registered on October 3, 1967; No. 264109 registered on December 6, 1972; No. 264110 registered on December 6, 1972; No. 277105 registered on December 6, 1972; No. 277106 registered on December 6, 1972; No. 277997 registered on May 1, 1974 and No. 277998, registered on May 1, 1974.
Respondents registered the disputed domain name <au-eisai.com> on May 7, 2013, the disputed domain name <eisai-au.com> on March 26, 2013 and the disputed domain name <eisai-pharma.com> on February 25, 2013.
5. Parties’ Contentions
Complainant asserts that Respondents, through their use of false names, which may include Adrian Moreno, have used Complainant’s EISAI marks to create confusion and thereby perpetrate an online scam to obtain financial information from unsuspecting Internet users under false pretenses.
Specifically, related to the Policy, Complainant asserts that the disputed domain names are confusingly similar to Complainant’s EISAI marks, that Respondents have no rights or legitimate interests in the disputed domain names, and that Respondents have registered and are using the disputed domain names in bad faith.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Language of the Decision
Complainant has requested that English be recognized as the language of the proceeding. Respondents have not commented regarding the language of the proceeding. Complainant has produced evidence indicating the involvement of Adrian Moreno with each of the disputed domain names; Complainant has also provided email evidence showing “Adrian Moreno” corresponding in English. The Panel concludes that English should be the language of the proceeding.
B. Consolidation of Disputes
The Panel finds that consolidation of the disputes over the three disputed domain names into one complaint is proper in light of the evidence supporting common control of the disputed domain names by one party or entity perpetrating an online scheme using the EISAI marks. It is unclear whether Adrian Moreno is a real person or a false identity used by the perpetrator of the online scam. In either case, Complainant has demonstrated sufficient commonality to justify consolidation of the actions for the three disputed domain names.
C. Standard for UDRP Proceedings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith.
D. Identical or Confusingly Similar
The disputed domain names incorporate Complainant’s EISAI mark in its entirety. The disputed domain names only differ from Complainant’s EISAI marks in that they add the suffix “au”, the suffix “pharma”, or the prefix “au”. The suffix or prefix “au” is commonly understood to designate an Australian entity, thereby offering no distinctiveness to prevent confusion. The Panel agrees with Complainant that these additions are not material and do not mitigate any potential confusion. (See Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792; F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323.) The addition of “pharma” (a contraction for the word pharmaceutical) only appears to add to the confusion by further describing the goods or services provided by Complainant. The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain names are confusingly similar to Complainant’s EISAI marks.
E. Rights or Legitimate Interests
Complainant has averred that Respondents have no rights or legitimate interests in the mark EISAI and further stated that Complainant, as the owner the EISAI marks, has never authorized, sponsored, or endorsed the use of the EISAI marks by Respondents. Respondents have not responded to Complainant’s assertions. The Panel further notes that Respondents only registered the disputed domain names in 2013, while Complainant has used the mark EISAI since at least 1946 in Japan. Further, as set forth below, Respondents have not made any good faith use of the disputed domain names—in fact just the opposite. The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
F. Registered and Used in Bad Faith
The registration and use of domain names to perpetrate an online scam wherein the registrant impersonates a trademark holder to bilk money out of unsuspecting Internet users establishes bad faith. (See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367; The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561; MasterCard International Incorporated v. Jose Carlos Bisognin Panzenhagen, WIPO Case No. D2009-0864; Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237.) Complainant provides numerous emails sent during 2013 from Internet users contacting Complainant asking about jobs offered by Adrian Moreno on behalf of Complainant. Complainant avers that it has no affiliation whatsoever with Adrian Moreno and that these job offers are a part of a “mule recruitment scam” whereby the unsuspecting Internet users are directed by Adrian Moreno to transfer money between accounts. One email provided by Complainant indicates that the money transferred may have been stolen.
Complainant also provided evidence to show that Adrian Moreno offered to sell one of the disputed domain names for “1000 dollars”, which is in excess of the out of pocket costs associated with registering the disputed domain name such that this activity falls within the scope of paragraph 4(b)(i) of the Policy.
Complainant has established that Respondents registered and are using the disputed domain names in bad faith and has satisfied the requirements of paragraph 4(a)(iii) 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 names <au-eisai.com>, <eisai-au.com> and <eisai-pharma.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: December 3, 2013