WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Actelion Pharmaceuticals, Ltd v. Whois Whois Privacy Protection Service by onamae.com / yuichirou takagi
Case No. D2016-0980
1. The Parties
The Complainant is Actelion Pharmaceuticals, Ltd of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is Whois Whois Privacy Protection Service by onamae.com of Tokyo, Japan / yuichirou takagi of Yokohama, Japan.
2. The Domain Name and Registrar
The disputed domain name <tracleer.info> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2016, 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 May 20, 2016 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 amendment to the Complaint on May 20, 2016.
On May 20, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint together with the amendment to 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, in both English and Japanese, and the proceedings commenced on May 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on June 27, 2016. 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, Actelion Pharmaceuticals, Ltd, is headquartered in Allscheil/Basel, Switzerland and was founded in 1997. The Complainant is a leading biopharmaceutical company focused on the discovery, development and commercialization of innovative drugs for diseases with significant unmet medical needs.
Tracleer is the Complainant’s most important drug, generating 90 per cent of its total revenue. The Complainant has been selling Tracleer in the Japanese market since 2005.
The Complainant is the registered proprietor of the trademark TRACLEER in numerous countries all over the world including in Japan where the Respondent is located (Japan National Trademark Registration No. 4505016 registered on September 7, 2001), as well as International Trademark Registration No. 869983 registered on February 15, 2001 and United States Trademark Registration No. 751536 registered on November 12, 2002.
The Complainant has also registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the term “Tracleer” (for example; <tracleer.com> (created on October 12, 2000); <tracleer.ch> (created on October 13, 2000); and <tracleer.us> (created on June 27, 2002)).
The dispute domain name currently resolves to pages written in Japanese that provides rankings and advertisements for skin whitening products.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name is identical to its TRACLEER mark because it comprises the Complainant’s mark in its entirety coupled with the gTLD “.info”. The addition of the gTLD “.info” does not add any distinctiveness to the disputed domain name.
It is therefore identical to the Complainant’s registered trademark TRACLEER.
No rights or legitimate interests
The Complainants submits that the Respondent has not been known by the name “Tracleer”. The distinctive name “Tracleer” is not a name one would legitimately choose as a domain name without having specific rights to such name and the word “Tracleer” has no meaning in Japanese.
The Respondent has made no effort to use the disputed domain name for any purpose that might explain its choice in a manner consistent with having rights or legitimate interest in the name “Tracleer”. When entering the term in Google the returned results points to the Complainant and its business activity. The Respondent could easily perform a similar search before registering the disputed domain name and would have learnt that the trademark is owned by the Complainant and that the Complainant has been using its trademarks around the world for numerous of years including in Japan.
The Respondent was given plenty of opportunities to present some compelling arguments that it has rights in the disputed domain name but has failed to do so. The use of the disputed domain name also contributes to the confusion with the Complainant’s trademark.
Registered and used in bad faith
The disputed domain name was registered and used in bad faith: The Respondent should have been aware of the unlawful nature of the registration of the disputed domain name, since the registration of the Complainant’s trademark predates the registration of the disputed domain name and the Respondent is under a hidden name on WhoIs record. The Complainant relies on a UDRP decision involving the respondent hiding its identity to make it impossible to actually contact. The decision is Mangusta S.r.l. v. DELTA largona, WIPO Case No. D2011-1989.
The disputed domain name was used in bad faith: since the registration of the disputed domain name, the Respondent’s identity remains unpublished. The Complainant attempted to contact the Respondent twice through a cease and desist letter, but no reply was received. Relying on earlier decisions, failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. The decisions relied on by the Complainant are: News group Newspaper Limited and New Networking Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceeding
In accordance with paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement, i.e., the default language of this proceeding shall be Japanese. However, the Complainant requested proceeding should proceed in English, but with the Respondent being allowed to respond in Japanese, on the following grounds.
Below is a summary of the Complainant’s arguments on the issue of the language of proceedings.
(a) The Respondent has not responded to letters written in English to say it does not understand;
(b) There will be delay in the proceedings if they proceed in Japanese;
(c) The disputed domain name consists of Latin letters; and
(d) English is widely used in Japan.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Panel is not particularly persuaded by any reasons put forward by the Complainant. Nevertheless, there was also no objection made by the Respondent to the Center’s preliminary determination. In Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, this Panel decided that a respondent’s default in responding to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, as set out below, the merits of this case are strongly in favour of the Complainant. Translating the Complaint into Japanese would cause unnecessary cost and delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
B. Identical or Confusingly Similar
The disputed domain name <tracleer.info> is identical to the Complainant’s registered trademark TRACLEER in Japan, disregarding the gTLD.
The first element of the paragraph 4(a) of the Policy is therefore satisfied.
C. Rights or Legitimate Interests
The Complainant alleges that it has no connection with the Respondent and that the Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish its rights or legitimate interests in the disputed domain name.
“(i) before any notice to you 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 (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 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 Respondent has not responded to assert any rights or legitimate interests. Nor is it commonly known by the disputed domain name.
None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent may show its rights or legitimate interests, are present in this case.
The second element of the paragraph 4(a) of the Policy is therefore satisfied.
D. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
The disputed domain name was registered in bad faith. The Respondent should have been aware of the Complainant’s trademark rights to TRACLEER which predate the registration of the disputed domain name.
The disputed domain name has also been used in bad faith. This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
While the website under the disputed domain name does not appear to be related to the Complainant, the use of the disputed domain name can only have been intended to attract consumers to the Respondent’s website which appears to generate revenue from advertising and offering for sale beauty products.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied.
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 <tracleer.info> be transferred to the Complainant.
Date: July 14, 2016