WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel

Case No. D2016-0068

1. The Parties

The Complainant is Actelion Pharmaceuticals, Ltd of Allschwil, Switzerland, represented by BrandIT Legal AB, Sweden.

The Respondent acts under the name of Jean-Paul Clozel of Mt. Pleasant, South Carolina, United States of America (“United States” or “US”) / Whois Agent, Whois Privacy Protection Service, Inc of Kirkland, Washington, United States.¹

2. The Domain Name and Registrar

The disputed domain name <acteli0n.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2016, 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 January 18, 2016 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 amendment to the Complaint on January 21, 2016.

The Center verified that the Complaint together with the amendment to 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 January 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2016.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 19, 2016. 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 the registered owner of two trademark registrations for the term ACTELION, i.e. International Trademark Registration No. 869983, registered in 2005 for goods in class 5 and US Trademark Registration No. 3148269, registered in 2006 for services in classes 42 and 44. The Complainant has also registered a number of domain names containing the term “Actelion”, for example <actelion.com> (created on January 15, 1998) and <actelion.us> (created on May 6, 2002).

The Respondent registered the disputed domain name <acteli0n.com> on January 7, 2016. It results from the Complainant’s documented allegations that no true content is displayed on the website to which the disputed domain name resolves. This website rather displays a Google “404” error-page with the following reference: “404: That’s an error. The requested URL/was not found on this server. That’s all we know”.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be a leading biopharmaceutical company. It has its corporate headquarters in Allschwil/Basel, Switzerland where it was founded in 1997. Its shares have been listed on the SIX Swiss Exchange since 2000. The Complainant has more than 30 operative affiliates around the world including the United States, Canada, Brazil, Australia, Japan, Switzerland, and a number of EU countries. Finally, the Complainant claims ACTELION is a well-known trademark in the pharmaceutical industry worldwide.

The Complainant contends that the disputed domain name is confusingly similar to its trademark ACTELION, since it directly incorporates said trademark. According to the Complainant, the disputed domain name is nothing but a typo-variant of its trademark where the letter “o” has been replaced with the number “0”. Moreover, the Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name.

The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. There is no bona fide offering of goods or services where the disputed domain name incorporates a trademark which is not owned by the Respondent, nor is the Respondent known by the name “Actelion”. The distinctive name “Actelion” is not a term one would legitimately choose as a domain name without having specific rights to such name, because it is not a descriptive term serving to indicate specific characteristics of any goods or services. In addition, the Complainant contends that the disputed domain name has been used to send emails purporting to be from the Complainant, so that the Respondent is consequently attempting to pass itself off as the Complainant. Such behavior shows that the Respondent is attempting to take undue advantage from the registration of a domain name which is confusingly similar in all aspects with the Complainant’s trademark. Such use of the disputed domain name might be hazardous for consumers as well as for the Complainant’s business and reputation.

Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, on January 12, 2016 the Complainant contacted the Respondent with a cease-and-desist letter, advising that the unauthorized use of the ACTELION trademark within the disputed domain name violated the Complainant’s rights in said trademark and requesting a voluntary transfer of that domain name. Since no response was received within the given term, the Complainant filed the present Complaint. The Complainant refers to earlier cases where failure of a respondent to respond to a cease-and-desist letter has been considered relevant in a finding of bad faith. In addition, the Complainant contends that the disputed domain name has been used to send emails in the name of the Complainant’s CFO. This communication was not bona fide but instead was an attempt to inter alia commit fraud and deceptively steal sensitive information. Moreover, the Complainant contends that the Respondent has used the disputed domain name for the purpose of capitalizing on the reputation of the Complainant. Since ACTELION is a well-known trademark in the pharmaceutical industry worldwide, it is highly unlikely that the Respondent, when registering the disputed domain name, was not aware of the Complainant’s rights in the trademark and the value of said trademark.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(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.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must establish rights in a trademark or service mark and that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of ACTELION, i.e. International Trademark Registration No. 869983, registered in 2005 for goods in class 5 and US Trademark Registration No. 3148269, registered in 2006 for services in classes 42 and 44. These trademarks predate the creation date of the disputed domain name, which is January 7, 2016. The Complainant has also registered a number of domain names containing the term “Actelion” which were registered long before the disputed domain name, for example <actelion.com> (created on January 15, 1998).

Many UDRP panels have found that a domain name is confusingly similar to a trademark where the domain name incorporates the trademark in its entirety (e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320). This Panel joins the above view and considers the Complainant’s registered trademark as being fully included in the disputed domain name. In reaching this conclusion, this Panel disregards the fact that the ACTELION trademark contains the letter “o” while the disputed domain name uses the number “0” instead because this is an irrelevant minor variation and a common typographical error when typing “actelion.com”.

In light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the Complainant’s undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

First of all, no content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor 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 in the sense of paragraph 4(c)(i) and (iii) of the Policy (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra.; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra.; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra.). In addition, this Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trade name with the intent to attract Internet users for commercial gain (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra.; VistaPrint Technologies Ltd., supra.; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The disputed domain name does not resolve to an active website. The Panel first notes that passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Consequently, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 3.2. with further references).

In particular, it is the view of this Panel that the Respondent’s failure to reply to the Complainant’s cease and desist letter and its failure to respond to this Complaint suggest that the Respondent was aware that it 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 (see America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). This finding is supported by further circumstance that the term “Actelion” is distinctive and not descriptive of any related goods or services. Taking finally into account that the Complainant has been established many years ago and its trademarks have existed for years in the pharmaceutical industry, this Panel concludes that the Respondent knew or should have known the Complainant’s ACTELION trademark when it registered the disputed domain name, and that there is no plausible legitimate active use of the disputed domain name.

In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <acteli0n.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: March 2, 2016

¹ The Panel has independently verified that “Jean-Paul Clozel” is the name of the Complainant’s CEO. As such, the Panel finds that the Respondent’s true identity remains unknown and that he or she has fraudulently adopted this name for the registration of the disputed domain name.