WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spirig Pharma AG v. Whois privacy services, provided by DomainProtect / Alexander Zinovjev
Case No. D2014-1612
1. The Parties
The Complainant is Spirig Pharma AG of Egerkingen, Switzerland, represented by Lombard & Geliebter LLP, United States of America (“US”).
The Respondent is Whois privacy services, provided by DomainProtect of Saint-Petersburg, Russian Federation / Alexander Zinovjev of Saint-Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <excipial.com> is registered with INSTANTNAMES LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2014, the Registrar transmitted by email to the Center its verification response disclosing 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 September 25, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 25, 2014.
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 Respondent of the Complaint, and the proceedings commenced on September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2014.
The Center appointed Petter Rindforth as the sole panelist in this matter on October 23, 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.
The Panel shall issue its Decision based on the amended Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in English, which is the language of the Registration Agreement for the disputed domain name as confirmed by the Registrar.
4. Factual Background
The Complainant is the owner of the trademark EXCIPIAL for cosmetic and pharmaceutical preparations, registered alone or in combination with other words in a number of countries around the word, including but not limited to:
International Registration No. 523919 for EXCIPIAL (word), registered on May 6, 1988
International Registration No. 684846 for EXCIPIAL (word), registered on November 20, 1997
International Registration No. 718289 for EXCIPIAL CARE (word), registered on August 27, 1999
International Registration No. 746975 for EXCIPIAL CLEAN (word), registered on November 21, 2000.
The disputed domain name <excipial.com> was registered on August 30, 2008. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant informs that the Complainant owns at least 203 trademark registrations around the world for its trademark EXCIPIAL or marks incorporating the trademark EXCIPIAL, as well as a number of domain names connected to EXCIPIAL. The Complainant has used the trademark EXIPIAL since at least 1985, which precedes the Respondent’s registration of the disputed domain name by 23 years.
No third party, regardless of the identity of the Respondent, is now or has ever been an authorized distributor, wholesaler or retailer of any of the Complainant’s products. Even if the Respondent were a distributor of the Complainant’s product, the Complainant’s distributors are not authorized to register or use domain names independently of the Complainant.
A search performed by the Complainant shows that the disputed domain name <excipial.com> has been for sale on at least February 2, 2011; April 10, 2013; April 28, 2013; May 28, 2013; July 4, 2013; July 21, 2013; July 30, 2013, and September 11, 2014. The Complainant concludes that the Respondent has never made valid use of the disputed domain name.
The Complainant states that the disputed domain name <excipial.com> is identical or confusingly similar to trademarks in which the Complainant has rights.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is unaware of any use or any 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 by the Respondent. The disputed domain name <excipial.com> has been registered since 2008 and no meaningful use has been made; except to offer the disputed domain name for sale.
The Complainant submits that the Respondent has never been commonly known by <excipial.com> or the trademark EXCIPIAL.
The Respondent did not make any bona fide (i.e., non-infringing) use of the disputed domain name. Moreover, the disputed domain name is now registered privately. As it is privately registered, there is no identifiable individual who can be commonly known by EXCIPIAL.
Further, since at least as early as February 2, 2011, the Respondent has simply offered to sell the disputed domain name <excipial.com>.
By actively offering the disputed domain name for sale for at least six consecutive years, the Respondent is making commercial use of the disputed domain name and of the Complainant’s trademark.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith. At the time that the Respondent registered the disputed domain name <excipial.com>, the Respondent had no right or legitimate interest whatsoever in the trademark or domain name, because the Complainant is the owner of the trademark EXCIPIAL in at least 50 jurisdictions around the world.
The Respondent registered the disputed domain name <excipial.com> in order to prevent the Complainant from reflecting its trademark in the corresponding domain name. This is confirmed by two facts: First, since at least as early as February 2, 2011, the Respondent has offered the disputed domain name for sale and, second, that six years after the date of registration the website does not offer any legitimate product or service by the Respondent.
The disputed domain name is registered privately by a Whois privacy service, as the Respondent seeks to conceal its identity. Moreover, if the disputed domain name holder’s actual name is not Alexander Zinovjev, this amounts to further efforts by the domain name holder to conceal its identity and breaches its agreement with the Registrar because the domain name holder furnished false or inaccurate about its identity. The disputed domain name has been registered privately for six years. These efforts to conceal its identity amount to bad faith.
Pursuant to ICANN regulations, a domain name registrant undertakes not to register a domain name which infringes the rights of a third party and in this regard, registration of the disputed domain names by the Respondent is subject to the legitimate rights of third party trademark owners. Since a cursory review of the trademark records of any of 50 plus jurisdictions would have revealed the Complainant’s prior rights in EXCIPIAL, the Respondent violated this term of its agreement with its registrar. Given the Complainant’s prior rights, even the “to your knowledge” clause cannot save the domain name holder. In so doing, the Respondent acted in bad faith. By registering the domain name with actual or constructive notice of the Complainant’s rights, the Respondent registered the disputed domain name in bad faith.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant Spirig Pharma AG.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark EXCIPIAL, registered alone or in combination with other words, in a number of countries.
The relevant part of the disputed domain name is <excipial>, as it is a well-established practice that the generic Top-Level Domain (“gTLD”) suffix (i.e., “.com”) may be disregarded for this purpose.
The Panel concludes that the disputed domain name <excipial.com> is identical to the Complainant’s trademark EXCIPIAL.
B. Rights or Legitimate Interests
Once the complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden of production shifts to the respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
This Panel is satisfied that the Complainant has established a prima facie case. By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the prima facie case that the Complainant has established under this paragraph of the Policy.
There is no evidence in the case file that the Respondent is an authorized agent or licensee of the Complainant’s goods. There is also no evidence of any other permission to apply for any domain name incorporating the trademark EXCIPIAL. See Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”)
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The only use of the disputed domain name is an offer to sell. Considering that that <excipial.com> is clearly referring to a distinctive trademark and not a common word, such “use” cannot be considered as legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <excipial.com>.
C. Registered and Used in Bad Faith
As shown by the Complainant, the trademark EXCIPIAL is registered in a number of countries around the world, and must be considered as a distinctive trademark with no obvious second descriptive meaning.
Although the Complainant has not shown any specific use or trademark registration in the Russian Federation, the home country of the Respondent, the trademark is generally well-known and distinctive.
Thus, it is clear to this Panel that the Respondent had the Complainants trademark in mind when the Respondent registered the disputed domain name.
As to the question of bad faith use, the Complainant refers to the fact that <excipial.com> is registered privately by a Whois privacy service, making the conclusion that the Respondent seeks to conceal its identity. The Complainant also indicates that the Respondent has further concealed its identity by using a name that refers to a prominent Russian logician and dissident writer of social critique, who died on May 10, 2006 – two years before the registration of the disputed domain name.
Here, the Panel notes that using a Whois privacy service does not as such indicate bad faith use, as there may be several personal good faith reasons for a domain name holder to not expose its identity in a free and official Whois search.
Further, although Alexander Zinovjev (also spelled: Aleksandr Aleksandrovich Zinovyev) is a famous Russian writer, the male name combination Alexander Zinovjev is rather common in the Russian Federation, the home country of the Respondent.
The Panel can therefore not make any conclusions regarding bad faith, related only to the Whois privacy service and/or the registered name of the disputed domain name holder.
However, <excipial.com> was registered more than six years ago, and the only use are links to a website informing that the disputed domain name is for sale. In fact, the disputed domain name may give the Internet user the initial impression that it relates to a website legally offering the Complainant’s goods for sale. Instead, it leads to the website offering the domain name as such for sale.
As stated in Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066, “there is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent’s offer of the Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.”
In this case, the disputed domain name clearly relates to a distinctive and well-known trademark, the Respondent has not provided any reply or information related to legitimate interests or good faith registration and use, and the only use throughout the years is a continuous offer to the public to sell <excipial.com>.
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements of 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 <excipial.com> be transferred to the Complainant.
Date: November 4, 2014