WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Takeda Pharmaceutical Company Limited v. Ryo Konno

Case No. D2020-3144

1. The Parties

The Complainant is Takeda Pharmaceutical Company Limited, Japan, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Ryo Konno, Japan.

2. The Domain Name and Registrar

The disputed domain name <takedaclinicaltrials.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 23, 2020. On November 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2020 and December 1, 2020, 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 December 2, 2020 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 amended Complaint on December 2, 2020.

The Center verified that the Complaint together with the amended 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 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021.

The Center appointed Teruo Kato as the sole panelist in this matter on January 20, 2021. 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

According to the Complainant, the Complainant is a multinational pharmaceutical and biopharmaceutical company employing more than 50,000 people worldwide in its offices across Japan, the America’s, Europe, and Asia.

The Complainant submitted evidence of various trademark registrations and owns, inter alia, the word mark TAKEDA of the United States of America Registration Number 0769053, registered on May 5, 1964, covering goods in class 5 as set out in section 6A below.

According to the Complainant, the disputed domain name <takedaclinicaltrials.com> was originally created on May 12, 2014 and was held by the Complainant’s group company in the United States of America until its registration lapsed on May 5, 2020.

On June 23, 2020 the disputed domain name was registered by the Respondent, Ryo Kondo of Japan.

According to the Complaint, the website at the disputed domain name currently resolves to an inactive site. Previously, the Complaint contends that it was used to redirect internet users to a website featuring links to third-party websites, some of which, according to the Complainant, directly competed with the Complainant's business.

The Complainant requests that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical and confusingly similar to the Complainant’s registered trademarks in Japan, Europe, the Unites States of America and worldwide, in which the Complainant has exclusive rights and has used for many years in connection with, among others, pharmaceutical goods and services.

The Complainant further contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.

The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of various TAKEDA registered trademarks, including inter alia the word mark TAKEDA of the United States of America Registration Number 0769053, registered on May 5, 1964, covering goods in class 5.

As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the TAKEDA trademark in which the Complainant has rights.

Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.

Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark TAKEDA and a descriptive term “clinical trials”. The Panel finds that the recognizable element of the disputed domain name is the Complainant’s trademark TAKEDA.

Further, the Complainant contends that the additional term “clinical trials” is “closely linked and associated with Complainant’s brand and trademark”, on the basis that “Complainant is the largest pharmaceutical company in Asia and one of the top 20 largest pharmaceutical companies in the world by revenue. As such, clinical research and trials are key functions to Complainant’s business”. The Panel accepts this contention.

In the circumstances the Panel concludes that the disputed domain name is nearly identical and confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).

In the present case, the Complainant contends that “Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Respondent is not commonly known by the Disputed Domain Name”.

The Complainant submitted to the Panel documentary materials to support its contentions as above, and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.

Furthermore, the fact that the disputed domain name comprises the Complainant’s trademark and a term closely related to the Complainant’s business carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

As to the registration in bad faith, the Panel notes and accepts that the trademark TAKEDA was registered and is known internationally, before the disputed domain name was registered on June 23, 2020. The Panel also notes that the Respondent acquired the disputed domain name only some 50 days after it became available on May 5, 2020 when its previous registration by the Complainant lapsed.

Further, the Panel acknowledge that disputed domain name is the combination of the trademark TAKEDA and the term “clinical trials”, and this confusingly corresponds to <clinicaltrials.takeda.com>, which is being used by the Complainant in its primary website at “www.takeda.com”.

In the circumstances, the Panel is satisfied that the Respondent is most likely to have known of the Complainant, its products, and trademarks prior to registering the disputed domain name and that it registered the disputed domain name in bad faith.

As to the use in bad faith, the Complainant contends that the Respondent was using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which, according to the Complainant, directly competed with the Complainant's business and that the website at which the disputed domain name resolved featured multiple third-party links for clinical trials and research, cancer treatment, and diabetes treatment, and that it also featured a link that directly references the Complainant and its business.

The Complainant submitted to the Panel a screen shot to support its contentions as above, to which the Respondent did not submit any comments.

The Panel finds the said screen shot, which does not carry a time stamp, to be not entirely conclusive in demonstrating the links to third parties as alleged. However, the Panel notes that the screen shot includes a statement at a prominent position, stating that “Interested in takedaclinicaltrials.com? Our Domain Broker Service may be able to get it for you. Find out how”. The Panel finds this to be contradictory to a use in good faith.

As to the current use, the Complainant acknowledges that the disputed domain name currently resolves to an inactive site and is not being used and contends that the word bad faith “use” in the context of paragraph 4(a)(iii) of the Policy does not require a positive act on the part of the Respondent. Citing a number of UDRP decided cases, the Complainant contends that passively holding a domain name can constitute a factor in finding bad faith registration and use for this purpose. The Respondent has not offered any comments on this. The Panel notes and accepts the contention as above submitted by the Complainant.

Having considered all the circumstances, including the alleged previous use of the disputed domain name and absence of good faith use, the Panel holds that the Respondent is using the disputed domain name in bad faith. See section 3.3 of the WIPO Overview 3.0.

In the circumstances, the third requirement of the Policy has been satisfied.

7. Decision

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 <takedaclinicaltrials.com> be transferred to the Complainant.

Teruo Kato
Sole Panelist
Date: January 26, 2021