WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shire Human Genetic Therapies, Inc. v. Domain Admin / IT-Department
Case No. D2017-0795
1. The Parties
The Complainant is Shire Human Genetic Therapies, Inc. of Lexington, Massachusetts, United States of America, represented by Crowell & Moring LLP, Belgium.
The Respondent is Domain Admin of Queensland, Australia / IT-Department of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <kogthero.com> 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 April 20, 2017. On April 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2017, 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 April 24, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 28, 2017.
The Center verified that the Complaint together with the amended Complaint (the Complaint and the amended Complaint are hereinafter referred both together as 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 May 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2017.
The Center appointed Kaya Köklü as the sole panelist in this matter on May 31, 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 biotechnology company with its registered seat in Massachusetts, United States of America. It is active worldwide in the field of offering medical products for the treatment of mainly rare diseases.
The Complainant is the registered owner of the fictional word mark KOGTHERO. It was first filed with the United States Patent and Trademark Office ("USPTO") on March 15, 2016 (No. 86940722) in international class 5 and U.S. classes 6, 18, 44, 46, 51 and 52. On March 19, 2016, KOGTHERO was registered as an International Trademark (No. 1296232) and on July 20, 2016 as a European Union Trademark (No. 015250228).
The disputed domain name was registered on March 19, 2016.
The Respondent is composed of a domain name privacy registration service and probably a company from Bejing, China, whose true identity remains unclear due to incomplete contact details provided to the Registrar (both of them jointly referred to as the "Respondent" in the following decision).
As evidenced in the Complaint, the disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to the Complainant's trademark KOGTHERO.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and must have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") and, where appropriate, will decide consistent with the WIPO Overview 3.0.
A. Identical or Confusingly Similar
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of various KOGTHERO trademarks.
The disputed domain name is identical to the Complainant's KOGTHERO trademark as it incorporates the Complainant's trademark in its entirety without any additions or amendments.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that in the absence of a Response, the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's trademark KOGTHERO in the disputed domain name.
In the absence of a Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. The Respondent has also failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Finally, the Panel does not see any indication in the record for assessing a bona fide offering of goods or services by the Respondent.
Consequently, 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 further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take advantage of the Complainant's trademark, probably for commercial gain or some other illegitimate benefit.
The Panel is particularly convinced that the Respondent must have been aware of the Complainant's KOGTHERO trademark when it registered the disputed domain name on March 19, 2016. In view of the Panel, it is likely no coincidence that at the date of registration of the disputed domain name, the Complainant's United States Trademark Registration was just recently published and the International trademark was registered.
Bad faith registration and use is further indicated by the fact that the Respondent did not include any amendments or additions to the disputed domain name in order to prevent confusion among Internet users.
The Panel also notes that the Respondent used a privacy service when creating the disputed domain name. Although privacy services might be legitimate in many cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain name (which is identical to the Complainant's fictional trademark KOGTHERO), rather indicates that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.
Finally, the Panel also takes into consideration that the Respondent preferred not to respond to the Complainant's contentions in these administrative proceedings.
The fact that the disputed domain name does not resolve to an active website does not change the Panel's findings in this respect.
All in all, the Panel cannot conceive of any good faith use of the disputed domain name which is not related to the trademark owned by the Complainant.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 <kogthero.com> be transferred to the Complainant.
Date: June 14, 2017