WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Actelion Pharmaceuticals Ltd v. Intdomain / Apexed
Case No. D2015-1426
1. The Parties
The Complainant is Actelion Pharmaceuticals Ltd of Allschwil, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Intdomain / Apexed of Burgenland, Austria.
2. The Domain Name and Registrar
The disputed domain name <opsumit.biz> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2015. On August 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 21, 2015. 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 is a leading biopharmaceutical company, founded in 1997 and headquartered in Allschwil/Basel, Switzerland, which focuses on the discovery, development, and commercialization of innovative drugs for diseases with significant unmet medical needs.
The Complainant owns a number of word marks and device marks, consisting of or containing the name OPSUMIT, including international trade mark no. 1084328, registered on June 27, 2011, community trade mark no. 009982588, registered on October 24, 2011 and United States of America trade mark no. 4056510, registered on November 15, 2011 (together hereafter the “Trade Marks”).
The Complainant has over 30 operative affiliates around the world including in the United States, Canada, Brazil, Australia, Japan, Switzerland, and a number of European Union countries, which provide distribution, sales, and marketing services.
The Domain Name was registered on April 25, 2015.
5. Parties’ Contentions
According to the Complainant, the Domain Name contains the Trade Marks in their entirety and is therefore identical to the Trade Marks.
The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Trade Marks in any manner, including in domain names. The Complainant submits that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests.
The Complainant points out that the Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, which change on a regular basis, some of which contain information on health conditions and thereby directly compete with the Complainant's business. The Complainant alleges that the Respondent receives pay-per-click fees from the linked websites and that this does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, which could otherwise constitute a right or legitimate interest under the Policy.
The Complainant submits that its Trade Marks are well known and that the Respondent admitted in pre Complaint correspondence that it registered the Domain Name because it is a famous trade mark that it tried to sell, which demonstrates a knowledge of and familiarity with the Trade Marks and the Complainant’s business. The Complainant states that it first tried to contact the Respondent on July 1, 2015, through a cease-and-desist letter sent by email, requesting a voluntary transfer of the Domain Name.
In response, the Respondent offered the Domain Name for sale for an amount of USD 1,590. In addition, the Complainant submits, in response to a further email from the Complainant, the Respondent replied by stating, “[a]ll domains we registered are trademark of some famous companies, and for sale. So they need to buy it or dispute it, no other way.”
According to the Complainant, this shows that the Respondent offered the Domain Name for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the Domain Name. The Complainant further submits that the Respondent creates a likelihood of confusion with the Complainant and the Trade Marks by using the Domain Name, which contains the Trade Marks in their entirety, to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and the website to which it connects.
Finally, the Complainant points out that the Respondent has previously been involved in a number of UDRP cases, which provides evidence of the pattern of cybersquatting in which the Respondent is engaging, while the Respondent has registered over 200 other domain names containing famous trade marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trade Marks. The Trade Marks consist of the name OPSUMIT which is included in its entirety in the Domain Name. The addition of the generic Top-Level Domain (“gTLD”) “.biz” does not change the overall impression, as the gTLD suffix in the Domain Name may be disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).
Therefore, the Panel finds that the Domain Name is identical or, in any case, confusingly similar to the Trade Marks.
B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Complainant has not given the Respondent permission to use the Trade Marks in the Domain Name and that the Respondent is not commonly known by the Domain Name.
Furthermore, the use of the Domain Name for a pay-per-click website, containing links to websites with information on goods competing with those of the Complainant does not constitute a “bona fide offering of goods or services”, nor a “legitimate noncommercial or fair use” (see Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829 and the cases cited in WIPO Overview 2.0, paragraph 2.6).
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the correspondence provided by the Complainant, the Panel concludes that at the time of registration of the Domain Name the Respondent was been aware of the Trade Marks as it has stated that all the domain names it has registered “are trademark of some famous companies”. This statement is supported by the long list of domain names containing well-known third party trade marks and by other UDRP cases in which the Respondent has been involved, such as Pfizer Inc. Wyeth LLC v. Intdomain, Apexed, WIPO Case No. D2015-0187, and Tyson Foods, Inc. v. Intdomain / Apexed, WIPO Case No. D2014-1316. This also evidences that the Respondent has engaged in a pattern of domain name registrations to prevent trade mark owners from reflecting their marks in a corresponding domain name.
Furthermore, the statement that all the domain names are for sale and the offer to sell the Domain Name for USD 1,590, which amount is well in excess of initial registration costs, shows that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or a third party.
On the basis of all of the above, the Panel concludes that the Domain Name has been 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 <opsumit.biz> be transferred to the Complainant.
Wolter Wefers Bettink
Date: October 6, 2015