WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Actelion Pharmaceuticals, Ltd v. VistaPrint Technologies Ltd
Case No. D2015-1788
1. The Parties
The Complainant is Actelion Pharmaceuticals of Allschwil, Switzerland, represented by BrandIT Legal AB, Sweden.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <acteiion.com> and <acteliion.com> (Domain Names) are registered with Tucows Inc (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 7, 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 October 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2015.
The Center appointed Keita Sato as the sole panelist in this matter on November 23, 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 Switzerland based biopharmaceutical company whose shares have been listed on the SIX Swiss Exchange since 2000. The Complainant owns registered trademark ACTELION as a word mark, including the International Trademark Registration No.869983 (registered on August 15, 2005), United States of America ("US") Trademark Registration No. 3148269 (registered on September 26, 2006), US Trademark Registration No. 3957047 (registered in February 22, 2011) and US Trademark Registration No. 3922607 (registered on February 22, 2011). These trademark registrations predated the registration of the Domain Names, since according to the information provided by the Registrar to the Center, the Respondent registered the Domain Name <acteliion.com> on September 15, 2014, and the Domain Name <acteiion.com> on September 24, 2015.
5. Parties' Contentions
The Complainant contends that the Domain Names should be considered as confusingly similar to the registered trademark ACTELION, since these Domain Names are typo-variants of the Complainant's mark, where the letters have been replaced with for example the letter "l" with "i" or simply adding an additional letter "i". The addition of the generic Top-Level Domain (gTLD) ".com" does not add any distinctiveness to the Domain Names. Secondly, the Complainant asserts the lack of the Respondent's rights or legitimate interests that there is no bona fide offering of goods or services where the Domain Names incorporate a trademark which is not owned by the Respondent, nor is the Respondent known by the name "Actelion". The legal entity displayed in the WhoIs record is "VistaPrint". The distinctive name "Actelion" is not a name one would legitimately choose as a domain name without having specific rights to such name. This name is certainly not a descriptive term serving to indicate specific characteristics of any goods or services. Thirdly, the Complainant contends that the Respondent's registration and use of the Domain Names was in bad faith, since the Respondent sent a fraudulent email to one of the Complainant's employee, and also contends that the Respondent committed a pattern of abusive registrations of domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:
"A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that the respondent's default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings.
Consequently, failure on the part of a Respondent to file a Response to the Complaint allows the panel to base its decision on the Complainant's supported assertions. It may also permit a panel to infer that the respondent does not deny the facts which the complainant asserts nor the conclusions, which, according to the Complainant, can be drawn from those facts (see Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027; Southcorp Limited v. Frontier Direct Pty Ltd, WIPO Case No. D2004-0949; and ACCOR v. ACCOR Tours, WIPO Case No. D2004-1001.
Under the Policy, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel agrees with the Complainant's contention that the Domain Names are typo-variant domain names which incorporate the Complainant's registered trademarks. Domain names that contain a common or obvious misspelling of a trademark are confusingly similar to the mark where the misspelled trademark remains the dominant or principal component of the domain name (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775. This constitutes typo-squatting, which many UDRP panels have found such domain names to be confusingly similar to the trademark. As Complainant contends, the disputed domain names are obvious misspellings of Complainant's mark ACTELION. It is evident that double key touch or skipping one letter "l" in addition to double key touch "ii" is a common typographical mistake.
For recognizing dominant or principal component of the Domain Names, the string showing gTLDs such as ".com" may be disregarded. It is well established consensus view in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present case, the string ".com" may be disregarded, and the Panel finds that the Domain Names are confusingly similar to the Complainant's mark.
Thus, the Complainant has proven the first factor of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The burden of production then shifts to the Respondent to come forth with evidence of its rights or legitimate interests.
The Complainant asserts that the Respondent has no legitimate interest to register domain names incorporating the Complainant's registered trademark (word mark) ACTELION, since there is no bona fide offering of goods or services, and since the Respondent is not known by the name "Actelion", "acteliion" or "acteiion". Evidently, all these word are not descriptive terms serving to indicate specific characteristics of any goods or services.
The Complainant has not authorized the Respondent to use its trademarks in domain names or in any other way. The Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests.
Thus, the second element of paragraph 4(a) of the Policy is made out.
C. Registered and Used in Bad Faith
The Complainant alleged that "at least one domain name has been used as the return email address in fraudulent correspondence sent to Complainant". As evidence, the Complainant submitted an annex which shows a record of the route by which an email was sent to a banker (email address and content redacted), and it has no contents. In the Panel's view, this evidence is not enough to make a finding as to the Respondent's bad faith stemming from the alleged fraudulent activity, since much of the evidence was redacted including email addresses and its associated contents. Several previous UDRP decisions recognized that sending fraudulent emails as such could be bad faith use of a domain name, however, in the present proceeding there is not enough evidence.
However, the Panel finds the Respondent registered and used the Domain Names in bad faith in the present case for the following reasons.
First, the Respondent knew of the Complainant's ACTELION trademark at the time of registration. As the Complainant asserted, it is evident that ACTELION is not a descriptive word but a coined trademark with strong distinctiveness and the Domain Names are obvious misspellings of the Complainant's trademark. Thus, it is reasonable to say that the Respondent had the Complainant's trademark ACTELION in mind at the time of registration of the Domain Names.
Also the Panel found that the Respondent had many UDRP decisions where transfer of the disputed domain names were ordered. The cases are for example: Koc Holding A.S. v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0886; The Net-A-Porter Group Limited v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0863; Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1949; Roper Industries, Inc. v. VistaPrint Technologies Ltd., WIPO Case No. D2014-1828; Sanofi v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0842; Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0511; and Maxim Healthcare Services, Inc. v. VistaPrint Technologies Ltd, WIPO Case No. D2009-1168. From these facts, the Panel is of the opinion that the Respondent's activity in this case falls under paragraph 4(b)(ii) of the Policy, namely that the Respondent has prevented Complainant from reflecting its mark in a corresponding domain name.
While the Domain Names do not currently resolve to active websites, the Complainant's attached annexes illustrates that the Respondent has activated the email service associated with the Domain Names. The Respondent has not come forth with any explanation, and the Panel cannot imagine any plausible use that may avoid a finding of bad faith use under these facts. Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith.
Thus, the third element of paragraph 4(a) is made out.
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 <acteiion.com> and <acteliion.com> be transferred to the Complainant.
Date: December 29, 2015