WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Myovant Sciences GmbH v. Domains by Proxy, LLC / Karen Merz, Domain Administrator
Case No. D2020-2673
1. The Parties
The Complainant is Myovant Sciences GmbH, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States”).
The Respondent is Domains by Proxy, LLC, United States / Karen Merz, Domain Administrator, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <jepsago.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 October 13, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) confirming that the Respondent is listed as the registrant and the contact details are correct;
(c) indicating the disputed domain name was created on February 26, 2020;
(d) indicating the language of the registration agreement is English;
(e) confirming the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 11, 2020. 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 global pharmaceutical company with headquarters in Switzerland. Its focus is developing and commercializing therapies for women’s health diseases and endocrine-related disorders.
On February 26, 2020 at 5:06 GMT, it filed with the Swiss Intellectual Property Institute an application to register JEPSAGO as a trademark in respect of pharmaceutical products in International Class 5. The Complainant’s trademark was published on the same day, shortly after it was filed. The trademark is now registered, Swiss Trademark No. 743472.
At 17:36 GMT on February 26, 2020, the Respondent registered the disputed domain name.
The disputed domain name resolves to a website
“Jepsa|Go (under a coloured 'infinity' loop)
Jepsago.com – Beta site
A project that inspires and fulfills your curiosity.”
Although the page is headed “Home”, it then states “About Us (Additional Comments:[ ]At the moment all information on the front page and article pages is just a test page)” in all capital letters.
Then follows a Contact Form under the text “Get in touch and we’ll get back to you as soon as we can. We look forward to hearing from you!”. This is followed by a placeholder images and text.
Other tabs or pages for Services, Blog, FAQ, Portfolio and Gallery contain the same “About us” text and other placeholder images and text. The “Contact Us” page, in addition to the contact form, includes an embedded Google Map for an address in Beverly Hills, California in the United States of America. This may also be a “placeholder”.
The Complainant contacted the Respondent, Ms Merz, through an inquiry agent. The response stated:
“We register this domain for our own project.
If we consider the asking price. It is available for $25,000.”
This response was sent via an email from the email account confirmed by the Registrar as the email address for the registrant of the disputed domain name.
After further formal correspondence, the Respondent further stated by email that:
“4, We register this domain for our own project and launched a beta site with JepsaGo.com, My domain name is just a combination of two letters Jepsa and Go.
Due to the effects of COVID-19,at the moment we are only testing the beta front page and article pages.”
The email also stated, incorrectly, that the Complainant’s trademark was not registered. In addition, she had refused an offer of USD 20,000 for the disputed domain name in March 2020 and cited some decisions under the Policy in support of her claim that the Complainant had no rights in the disputed domain name.
After some further, inconclusive communications, the Complainant filed the Complaint.
In addition to its Swiss registered trademark, the Complainant also has an International Registration for JEPSAGO, No. 1550853, which was registered on August 20, 2020 and designates a number of jurisdictions under the Madrid Protocol including Australia, Brazil, Canada, the European Union, the United Kingdom, Israel, Mexico, Norway, New Zealand, the Russian Federation, and Ukraine. The status of the national applications flowing from the International Registration is not indicated.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present her or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the Swiss registered trademark for JEPSAGO.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists simply of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name.
The disputed domain name is not being used in connection with any business or other activity.
An email from the Respondent quoted above does claim that the Respondent adopted the disputed domain name as the combination of two characters “Jepsa” and “Go” in connection with a project. The email further claims that the effects of COVID-19 have disrupted development of the business and the website.
The Panel is not familiar with what characters are being referenced by the names, or words, “Jepsa” and “Go”. There is no indication of what their meaning may be. Nor is there any indication of why one would think to combine them in the one composite phrase.
The Respondent’s email does not explain these matters. Nor has the Respondent submitted a Response seeking to advance those claims in this proceeding.
A Google search did not shed any further light on these matters although, of course, the Panel is familiar with the word “go” as a verb in English and the name of a strategy game.
It cannot be denied that COVID-19 has had and is continuing to cause heavy loss of life, illness, and disruption to business and social activities around the world. In this case, however, the Respondent has not given any indication of the nature of the business allegedly to be carried on or provided any objective corroboration of preparations to use the disputed domain name in connection with any business.
There is of course the website to which the disputed domain name resolves. It does not provide a concrete indication of any particular thing. It is essentially a number of placeholders. It is of course a straightforward exercise for someone with even modest Internet skills to set up a rudimentary website. UDRP Panels have not been prepared to accept websites as evidence of good faith action where the website appears to have been merely pretextual. See e.g. BBY Solutions, Inc. v. [Unknown / "Domain Administrator"], WIPO Case No. D2017-1169, and Türk Ticaret Bankası A.Ş. v. Seda Celik, WIPO Case No. D2019-3155. In this case, the website is merely a placeholder for some very vague and unparticularised activity. Accordingly, the Panel does not consider the website in this case sufficient to constitute evidence of demonstrable preparations to engage in a good faith offering of goods or services or some other legitimate noncommercial or fair use.
(a) where the disputed domain name contains two elements, “jepsa” and “go”, which do not have any apparent meaning individually or, even more so, in combination;
(b) the composite expression “jepsago” appears to be an invented or fancy term and does not appear to be a descriptive term, name of a place or person or otherwise in ordinary use;
(c) the disputed domain name was registered a few hours after the Complainant’s trademark was published on the Swiss Intellectual Property Institute’s website;
(d) there is no evidence about the nature of the claimed business or project; and,
(e) the Respondent has not actually sought to claim in this proceeding that the disputed domain name was registered in connection with some putative business,
the Panel is not prepared to infer that the Respondent registered the disputed domain name without notice of the Complainant’s trademark and in pursuit of some good faith business or other noncommercial activity.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent has not rebutted. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As discussed above, there does not appear to be any particular reason for the Respondent to have adopted the term “jepsago” in the disputed domain name, apart from its registration as a trademark by the Complainant.
The timing of the registration of the trademark and then the disputed domain name after the trademark was published on the Swiss Intellectual Property Institute’s website in circumstances where the term does not appear to have any meaning – other than as a trademark adopted by the Complainant – supplies the inference that the Respondent opportunistically sought to register the disputed domain name on discovering the Complainant’s registration of its trademark.
The offer to transfer the disputed domain name for USD 25,000 is far in excess of what would normally be the out-of-pocket costs for registering such a domain name. That shows an attempt to capitalise on the value of the term “jepsago” as a trademark.
Admittedly, the Respondent did claim in an email that in March 2020 she had rejected an offer of USD 20,000. However, no evidence supporting that claim has been submitted. Moreover, the Respondent has not actually advanced that claim in this proceeding. Accordingly, the Panel does not regard it.
As the term “jepsago” appears to be an invented or coined term and not descriptive, it appears that the Respondent has adopted the disputed domain name because of its trademark significance. In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith.
Accordingly, the Complainants have established all three requirements under 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 <jepsago.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: November 25, 2020