WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Actelion Pharmaceuticals, Ltd. v. ActelionGroup
Case No. D2016-2588
1. The Parties
The Complainant is Actelion Pharmaceuticals, Ltd. of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is ActelionGroup of South San Francisco, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <acteliongroup.com> (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 December 21, 2016. On December 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2016, 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 December 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2017.
The Center appointed Ian Lowe as the sole panelist in this matter on January 26, 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 leading biopharmaceutical company focused on the discovery, development and commercialization of innovative drugs for diseases with significant unmet medical needs. The company was founded in 1997 and has its headquarters in Basel, Switzerland. The Complainant has more than 30 operative affiliates around the world including in the United States of America (“United States”), Canada, Brazil, Australia, Japan and a number of countries in the European Union.
The Complainant is the proprietor of numerous trademark registrations around the world in respect of the mark ACTELION, including International Trademark registration number 869983 registered on August 15, 2005, designating a number of territories including the European Union and United States trademark registration number 3148269 registered on July 4, 2006. The Complainant has also registered a number of domain names comprising “actelion”, including <actelion.com> registered in 1998 and <actelion.us> registered in 2002, which it uses to resolve to a website through which it informs potential customers about its ACTELION mark and its products and services.
The Domain Name was registered on September 29, 2016 and at the time of preparation of the Complaint did not resolve to an active website. The WhoIs information falsely includes the postal address of the Complainant’s San Francisco office as the address of the Respondent. The Respondent did not reply to a cease-and-desist letter sent on behalf of the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its ACTELION trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the ACTELION mark, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its use of the mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the Complainant’s mark together with the generic word “group”. The Panel does not consider that the addition of this word detracts from the confusing similarity of the Domain Name to the Complainant’s mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has made no active use of the Domain Name. The Respondent is not authorised by the Complainant to use its mark for a domain name and the Respondent has chosen not to respond to the Complaint or to counter the prima facie case established by the Complainant. “Actelion” is a made up name that could only refer to the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of nature of the Domain Name, the Panel considers that there could be no doubt that the Respondent had the Complainant and its rights in the ACTELION name in mind when it registered the Domain Name. The use by the Respondent of the Complainant’s postal address in its registration of the Domain Name is a very strong indication of bad faith on the part of the Respondent. Although the Respondent does not appear to have made any active use of the Domain Name, by far the majority of UDRP panelists support the finding in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that the passive holding of a domain name by a respondent may amount to the respondent acting in bad faith.
Accordingly, the Panel finds that the Domain Name was 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 <acteliongroup.com> be transferred to the Complainant.
Date: February 9, 2017