WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Actelion Pharmaceuticals, Ltd v. Registration Private, Domains By Proxy, LLC / 3X Domains
Case No. D2016-2393
1. The Parties
The Complainant is Actelion Pharmaceuticals, Ltd of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / 3X Domains of Las Vegas, Nevada, United States.
2. The Domain Name and Registrar
The disputed domain name <actelionclinicalresearch.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2016. On November 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 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 November 30, 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 December 2, 2016.
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, and the proceedings commenced on December 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 27, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 11, 2017. 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 Swiss biopharmaceutical company focused on the discovery, development and commercialisation of innovative drugs for diseases with unmet medical needs. The company was founded in 1997, and has been quoted on the Swiss Stock Exchange since 2000. It has 30 operative affiliates throughout the world, including in the United States, where the Respondent is domiciled, details of which have been supplied to the Panel. The Complainant has registered its ACTELION trademark widely throughout the world, and the Panel has been supplied with details of these registrations, including United States registration number 3,148,269, registered on September 26, 2006, and International Registration number 869683, registered on August 15, 2005.
The disputed domain name was registered on July 11, 2016. The disputed domain name resolves to a website featuring pay-per-click links.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its ACTELION trademark, containing the Complainant's mark in its entirety, with the mere addition of the descriptive or non-distinctive words "clinical research".
The Complainant alleges the Respondent lacks rights or legitimate interests in the disputed domain name. In particular the Respondent is not using the disputed domain name in conjunction with a bona fide offering of goods or services but rather the disputed domain name is being used in connection with a pay-per-click website with links to the Complainant's competitors, and the disputed domain name is listed for sale on the website Afternic for USD 1,699, further supporting the inference that the Respondent has no interest in the disputed domain name other than to capitalize on the goodwill associated with the Complainant's trademark..
The Complainant alleges that the disputed domain name has been registered in bad faith, and that the disputed domain name is being used in bad faith in connection with a website featuring pay-per-click links giving users access, inter alia, to the sale of products competing with those of the Complainant. The Complainant also alleges that the website is for sale, for an amount greatly exceeding the cost of registering the disputed domain name. Supporting evidence in connection with the allegations in the previous two sentences has been supplied to the Panel. The Complainant also notes that the Respondent's failure to respond to the Complainant's cease-and-desist letter, together with the Respondent's use of a privacy service to mark its identity are further indications of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a decision ordering that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that the generic Top-Level Domain ("gTLD") (e.g., ".com", ".info", ".net", ".org") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD ".com" to be irrelevant in the present case.
The Panel accepts that the Complainant has the necessary trademark rights for the purposes of these proceedings.
The disputed domain name consists of the Complainant's ACTELION trademark in its entirety, with the addition of the words "clinical research". It is well established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive elements to the Complainant's trademark is not sufficient to avoid a finding of confusing similarity. In the Panel's opinion, in the circumstances of the present case, the added words are clearly descriptive or non-distinctive, and, accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant (as outlined in section 5.A. above) as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which it can find no rational reason for the incorporation of the Complainant's ACTELION trademark (which is a coined word) into the disputed domain name other than being an attempt to take advantage of the reputation attached to that trademark, as sufficient to justify a finding that the disputed domain name has been registered in bad faith, and the Panel, accordingly, finds that the disputed domain name was registered in bad faith.
It is well established in prior decisions under the UDRP that the use of a disputed domain name in connection with a website featuring links to competing products to those sold under the Complainant's trademark would typically constitute use of the disputed domain name in bad faith. The Panel, noting the presence of links to competitors of the Complainant on the website of the disputed domain name, agrees with these prior UDRP decisions and, accordingly, finds that the Complainant has satisfied the dual 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 name <actelionclinicalresearch.com> be transferred to the Complainant.
George R. F. Souter
Date: February 1, 2017