WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Actelion Pharmaceuticals Ltd. v. Shanshan Huang, This domain name is for sale
Case No. D2017-1276
1. The Parties
The Complainant is Actelion Pharmaceuticals Ltd. of Allschwil, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is Shanshan Huang, This domain name is for sale of Xuzhou, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <idorsiapharma.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2017, 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 July 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2017.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 7, 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 Actelion Pharmaceuticals Ltd, a corporation based in Switzerland and acting in the pharmaceutical field. The Complaint also mentions the existence of a newly established company named “idorsia”, which results from a demerger from the Complainant. This new company will be dedicated to a specific field of pharmaceuticals. On March 15, 2017, last the Complainant informed the public worldwide that the new company would be called “idorsia”.
The Complainant is the owner of international trademark registration no. 1084309 for IDORSIA (registered on June 27, 2011), designating China (country of the Respondent). The Complainant also presented evidence of Swiss registrations for IDORSIA, which are in the process of assignment to the newly created company, as states Annex 5-5.2 of the Complaint.
The disputed domain name was registered on April 18, 2017, one month after the new company name was announced, as shows Annex 6 of the Complaint. The Complainant has included evidence to show that the disputed domain name has been parked and offered for sale for USD 950.
5. Parties’ Contentions
As stated above, the Complainant is the owner of international trademark registrations for IDORSIA no. 1084309, designated and granted to China (country of the Respondent), as well as Swiss registrations which are in the process of assignment to the newly created company.
The disputed domain name was registered one month after the new company name was announced, as shows Annex 6 of the Complaint. The disputed domain name bears the mark IDORSIA, registered at least since 2011 by the Complainant, with the addition of the generic term “pharma”, which is in fact a word that directly retakes the Complainant’s main activity, as well as the activity of the newly created company. The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s IDORSIA trademark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
(i) The disputed domain name is 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 to 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
The disputed domain name <idorsiapharma.com> is, indeed, confusingly similar to the IDORSIA trademark. It contains the entirety of the mark together with a word of common use in relation to the Complainant’s line of business.
The Complainant, on its turn, has presented evidence of ownership of the mark IDORSIA in jurisdictions around the world, as well as evidence of the publicity of the creation of a new company under the name IDORSIA, announced one month before the registration of the disputed domain name.
Given the above, the Panel concludes that the disputed domain name is confusingly similar with the registered mark of the Complainant, pursuant to the first element of the Policy.
B. Rights or Legitimate Interests
Given the clear evidence that the IDORSIA mark is registered by the Complainant, and given the fact that IDORSIA is known as identifying the Complainant’s new business, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Hence, the Panel finds that the Respondent cannot claim to have been using the trademark IDORSIA without knowing the Complainant’s rights to it.
Besides, the word “pharma”, instead of distinguishing the disputed domain name from the Complainant, makes even more confusion for Internet users, as this word is descriptive and refers to the Complainant’s business. In fact the choice of this word leaves the impression that the Respondent intended to cause confusion with the Complainant’s mark. This, among other facts, leads the Panel to conclude that the Respondent’s interests cannot have been legitimate.
The Complainant has not licensed or authorized the Respondent to use its trademark or to register it as a domain name. In the circumstances of this case, the fact that the website associated with the disputed domain name is a parking page where the disputed domain name is offered for sale, is a further indication that the Respondent has no rights or legitimate interests. The Respondent has not come forward with any evidence in support of its rights or legitimate interests in the disputed domain name.
The Panel, thus, finds for the Complainant under the second element of the Policy
C. Registered and Used in Bad Faith
The facts outlined in items A and B above can be considered as further evidence of the Respondent’s bad faith in obtaining the disputed domain name.
The Respondent did not respond to the Complaint. This behavior has been considered as a further evidence of bad faith in registering and using a domain name in several previous UDRP disputes. In this case, it also supports a finding that the disputed domain name was registered and used in bad faith.
The association of the mark IDORSIA with the descriptive word “pharma” can be seen as clear evidence that the Respondent wishes to give an overall impression that the disputed domain name leads to an official website, which is not true. The disputed domain name resolved to website where the disputed domain name was offered for sale for USD 950. In the circumstances, the Panel considers that the Respondent’s behavior falls within the language of paragraph 4(b)(i) of the Policy.
All the points above lead to the conclusion by this Panel that the Respondent must have been aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element 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, <idorsiapharma.com>, be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: August 24, 2017