WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0059
The Petitioner is Eisai R&D Management Co., Ltd ofJapan, represented by Roschier Advokatbyrå AB., Sweden.
2. Domain Holder
The Domain Holder is H. V., of Sweden.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the disputed domain name <eisai.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on November 6, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default on December 12, 2018.
The Center appointed Bengt Eliasson as the sole Arbitrator in this matter on December 21, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner, Eisai R&D Management Co.,Ltd, is a pharmaceutical company operating globally in terms of R&D, manufacturing, distribution and marketing, that was established in 1941. The company is listed on the Tokyo stock exchange and employs more than 10,000 employees worldwide. The Petitioner´s Swedish subsidiary, Eisai AB, has been operating on the Swedish market since 2005,
An application for Alternative Dispute Resolution for the disputed domain name <eisai.se> was filed by the Petitioner on October 23, 2018. The domain Holder has been given an opportunity to submit a reply, but no reply has been filed within the given deadline by the Domain Holder.
The Petitioner have invoked the following trademark rights in Sweden for or including the word EISAI. Swedish registrations No. 125576 registration date 1968-12-06, 214104 registration date 1989-09-16, 225032 registration date 1991-07-12, 217964 registration date 1990-07-13 and 338272 registration date 2000-06-09 as well as European Union trademark registration (“EUTM”) No. 003488137 registration date 2005-04-12, 003488202 registration date 2005-04-12 and 004800165 registration date 2007-01-24.
In addition the Petitioner has referred to the Swedish trade name Eisai AB established in 2005.
The disputed domain name <eisai.se> was registered by the Domain Holder on January 10, 2018 and is today linked to a website used to provide general information about pharmaceuticals.
The Petitioner claims that the disputed domain name shall be transferred to the Petitioner. Furthermore, the Petitioner elects to have the dispute decided as an Accelerated Proceeding if the Domain Holder does not respond to the Petition.
6. Parties’ Contentions
The Petitioner is the owner of the above mentioned trademark registrations for the trademark EISAI as well as the trade name Eisai AB, that are valid in Sweden. In addition to registrations the trademark EISAI has also obtained a reputation due to extensive use in commerce since 1968 in the European Union. In 2017 the annual revenue of the company exceeded EUR 4 billion and Eisai was listed on Forbes list of the world's 50 most sustainable companies in 2015, and is also included in the Forbes list Global 2000: The World's Largest Public Companies in 2018.
The disputed domain name is identical to or interchangeable with the Petitioner´s trademark registrations and Swedish trade name.
The Petitioner claims that the disputed domain name <eisai.se> has been registered in bad faith by the Domain Holder.
The Domain Name <eisai.se> was first registered by the Petitioner in 2006 and has been used by the Petitioner at least between the years 2008 and 2016. However, due to an administrative oversight the Domain Name was not renewed in 2017, where after it was registered by the Domain Holder. It should be noted that the Petitioner holds many other country code Top-Level Domains (“ccTLDs”) to the disputed name, inter alia <eisai.co.uk>, <eisai.de>, <eisai.it>, <eisai.fr> and <eisai.es>.
In the light of the Petitioner's reputation in combination with its many domain names and trademarks, it is clear that the Domain Holder has registered the Domain Name with knowledge of the Petitioner's interest in the name, and that the website has been created by the Domain Holder with the sole purpose of giving the appearance of a legitimate interest to the Domain Name. The Domain Name is linked to a website used to provide very basic and general information about pharmaceuticals and the pharmaceutical market, which is near identical to the Petitioner's core business, and there is no other commercial purpose for the Domain Holder than to attract traffic to its website and to eventually sell the Domain Name to the Petitioner.
Other than the disputed domain name and the logotype in the upper left corner on the website, there is no indication or reference to the name EISAI throughout the webpage that would suggest that the Domain Holder has any legitimate interest in the name, as a trademark or a trade name.
Given the clearly distinctive nature of the name EISAI it is highly unlikely that the Domain Holder's registration of the disputed domain name is coincidental. The Petitioner's trademark EISAI dates back to the 1940s. The background to the name is that Eisai’s founder planned to manufacture sanitary materials or sanitary supplies, which in Japanese translates into "Eisei Zairyo". Eisei Zairyo was abbreviated to "Eizai" when he named his company, Nippon Eizai Co., Ltd. This company name was originally written in Chinese characters, but when written in Roman characters the name"Eisai" was used instead of "Eizai" and the company name was subsequently changed to Eisai Co.,Ltd., and the trademark EISAI was born.
There is no reasonable explanation to the Domain Holder’s registration of the disputed domain name, other than to use the goodwill and reputation of the trademark EISAI, and to make a profit from eventually selling the disputed domain name to the Petitioner. The Domain Holder has been fully aware of the Petitioner and has registered the disputed domain name intentionally to disrupt the Petitioner's business, and it is obvious that the Domain Holder has registered and is using the disputed domain name in bad faith.
The Petitioner holds through its trademark registrations for EISAI and its trade name registration an exclusive right to the name. Consequently the Petitioner has a legal and commercial interest to enforce its rights and to ensure that they are respected and not used by others without permission.
Although the Domain Holder has begun to use the disputed domain name by publishing the content on the website early 2018, from legitimate websites providing general information to the public about healthcare, medical care and pharmaceuticals. It is clear that it is not used with any commercial purpose, such as sales of goods and/or services. This further strengthens the Petitioner's assumption of a registration made in bad faith, with no intention of real commercialization or other justified interest in the disputed domain name.
According to the Petitioner's information and belief, the Domain Holder did not have rights to or legitimate interest in the disputed domain name and did not register it as a trademark, service mark or company name anywhere in the world at the time of applying for registration of the disputed domain name. The Petitioner has not been able to verify any rights to the disputed domain name held by the Domain Holder. Nor has the Petitioner been able to contact the Domain Holder as its identity is not disclosed. As is clear from the printout from <eisai.se> there is no other contact details or information about the sender of the information on the website than a blank contact form on the website.
Given the circumstances in the present case it is clear that the Domain Holder lacks rights to or a justified interest in the disputed domain name. The disputed domain name <eisai.se> shall therefore be transferred to the Petitioner.
B. Domain Holder
The Domain Holder has not filed any reply or comments to the Petition.
7. Discussion and Findings
A domain name may, in accordance with the .se Policy paragraph 7.2, be deregistered or transferred to the party requesting dispute resolution proceedings if all of the following three conditions are fulfilled:
1. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the Domain Name.
All three conditions must be met in order for a petitioner to succeed in its action.
A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Petitioner is the owner of several registrations for the trademark EISAI, including Swedish registration No 217964 (word) dated 1990 as well EUTM registration No 003488137 (word) dated 2005, which are identical to the disputed domain name <eisai.se>.
B. The Domain Name has been registered or used in bad faith
The Arbitrator concludes that the disputed domain name has been registered by the Domain Holder long after the first registration of the Petitioner’s trademark. The disputed domain name was initially registered by the Petitioner in 2006 and has been used by the Petitioner at least from 2008 until 2016. The Domain Holder on the other hand obtained the registration of the disputed domain name when the Petitioner in 2017 did not renew its registration of the same due to an administrative mistake. The Petitioner’s trademark has been used extensively for several years and it is therefore not likely that the Domain Holder by coincidence came up with the domain name <eisai.se>. In the absence of any facts or comments in the case contradicting the claims presented by the Petitioner, it may be considered that the Domain Holder has registered and used the disputed domain name in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
The Domain Holder has not submitted any reply to the Petition and there is nothing else in the case stating that the Domain Holder has a right or justified interest in the disputed domain name. Linking of the disputed domain name to a website presenting basic information about pharmaceuticals, mainly consisting of publicly available information, without presenting any motives for such use, is not sufficient for the Arbitrator to consider the Domain Holder to have any right or justified interest in the disputed domain name. The Arbitrator therefore concludes that the Domain Holder has no right or justified interest in the disputed domain name.
The disputed domain name <eisai.se> shall be transferred to the Petitioner.
Date: December 28, 2018