Westmore · UDRP DecisionActelionpharma.com
The Panel ordered transfer of <actelionpharma.com>. It found the domain confusingly similar to the Complainant’s ACTELION mark because it incorporated ACTELION and added the pharmaceutical-related term “pharma.” The Respondent lacked rights or legitimate interests, and its prior use of the domain for a website copying the Complainant’s official site was neither bona fide nor fair use. That copying, the resulting likelihood of confusion, and the Respondent’s failures to answer a cease-and-desist letter or the Complaint supported a finding of bad-faith registration and use under Policy paragraph 4(b)(iv). The domain’s subsequent passive use did not alter that conclusion.
The timeline behind actelionpharma.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind actelionpharma.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This case illustrates the strong evidentiary significance of combining a distinctive pharmaceutical mark with an industry-specific term and then using the resulting domain for a copied official website. The copying affected both the legitimate-interest and bad-faith analyses, while the later disappearance of the site did not cure the earlier conduct.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Actelion Pharmaceuticals Ltd v. Fils James / Litemills Case No. D2015-2115 1. The Parties The Complainant is Actelion Pharmaceuticals Ltd of Allschwil, Switzerland, represented by CSC Digital Brand Services AB, Sweden. The Respondent is Fils James / Litemills of New York, New York, United States of America. 2. The Domain Name and Registrar The disputed domain name <actelionpharma.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2015. On November 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2015, 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 November 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2015. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on December 30, 2015. 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 pharmaceutical company Actelion Pharmaceuticals Ltd, with its head offices in Allschwil, Switzerland. The Complainant has affiliates around the world, including in the United States, Canada, Brazil, Australia, Japan, Switzerland and other European countries. Among other registrations in different countries for the mark ACTELION and for marks bearing the element ACTELION with other words, the Complainant owns the registrations No. 3148269, for ACTELION, in the United States, in class 5, granted on September 26, 2006, being in use in commerce since January 15, 2001, No. TMA644043, in Canada, for ACTELION CREATIVE SCIENCE FOR ADVANCED MEDICINES & design, to cover pharmaceutical products, granted on July 12, 2005, No. 008660581, in Europe (OHIM), for ACTELION & design, in classes 3, 5, 10, 16, 29 and 44, granted on June 15, 2010, and the International Registration (WIPO) No. 869683, for ACTELION, in class 5, filed on August 15, 2005. The Complainant is the owner of the domain name <actelion.com>, registered on January 15, 1998. The disputed domain name was registered on June 15, 2015. According to Annex 3 of the Complaint, the disputed domain name resolved to a website which was almost an exact copy of the Complainant’s website, but it is currently unavailable. 5. Parties’ Contentions A. Complainant The Complainant stresses that when comparing the disputed domain name to the Complainant’s trademarks, the Top-Level Domain (TLD) is irrelevant for the comparison. The Complainant cites the decision Rollerblade, Inc. v. McCrady , WIPO Case No. D2000-0429 , in which it was decided that TLDs should not be taken into account when comparing domain names and trademarks. The Complainant claims that the disputed domain name incorporates its trademark ACTELION with the addition of the generic word “pharma,” which is the abbreviation of the word “pharmaceutical”. The addition of the generic word increases the confusing similarity between the disputed domain name and the Complainant’s trademarks, since the Complainant is a pharmaceutical company. According to the Complainant, the previous use of the disputed domain name contributes to the confusion with the Complainant’s trademarks, since the disputed domain name was used to resolve to a website almost identical to the Complainant’s website “www.actelion.com”. Annexes 3 and 5 of the Complaint contain, respectively, screenshots of the previous website at the disputed domain name and the website at the Complainant’s website “www.actelion.com”. The Complainant informs that the Respondent is not sponsored by or affiliated with the Complainant in any way, and that no authorization to use the trademark ACTELION, including in domain names, has been granted to the Respondent by the Complainant. The Complainant alleges that the Respondent is not known by the disputed domain name, which evinces a lack of rights and of legitimate interests in the disputed domain name. The Complainant asserts that the previous use of the disputed domain name to resolve to a website which was almost identical to the Complainant’s website demonstrates the lack of rights and legitimate interests of the Respondent in the disputed domain name. To corroborate this assertion, the Complainant cites the decision Marino v. Video Images Prod. , WIPO Case No. D2000-0598 , among others. The Complainant argues that the disputed domain name was registered after the registration of the Complainant’s trademarks and domain name <actelion.com>. The combination of the Complainant’s trademark ACTELION with the word “pharma,” which describes the Complainant’s business, by the Respondent demonstrates the Respondent’s knowledge of the Complainant’s business and brand. This is evidence of the bad faith of the Respondent in using and registering the disputed domain name. Moreover, the Respondent has used the disputed domain name to resolve to a website which was basically a copy of the Complainant’s website. This fact is also evidence of the Respondent’s bad faith in using and registering the disputed domain name. The Complainant also mentions that the Respondent has not responded to the Complainant’s cease and desist letter and encloses a copy of this cease and desist letter in Annex 8 of the Complaint. The Complainant cites the following decisions finding that the lack of response to a cease and desist letter can be evidence of bad faith: Encyclopedia Britannica v. Zuccarini , WIPO Case No. D2000-0330 ; and RRI Financial, Inc. v. Chen , WIPO Case No. D2001-1242 . For these reasons the Complainant contends that the Respondent has been acting in bad faith by using the disputed domain name. Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainant must prove that: (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 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 evidence presented demonstrates that the Complainant is the owner of the trademark ACTELION in several countries, to cover pharmaceutical products, and of the domain name <actelion.com>. The Complainant’s trademarks and domain name <actelion.com> predate the disputed domain name. The disputed domain name comprises the Complainant’s trademark ACTELION with the addition of the word “pharma.” The main element of the disputed domain name is “actelion”, which is identical to the Complainant’s trademark ACTELION. The word “pharma” is not enough to avoid a finding of confusing similarity. The expression “pharma” is the abbreviation of “pharmaceutical” and gives the idea of a website belonging to the Complainant, which is a pharmaceutical company. The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e. , the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests The Respondent has not submitted a response to the Complaint, in accordance with paragraph 5 of the Rules. There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark ACTELION. There is no evidence that the Respondent is commonly known by the disputed domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. The Complainant argues that the previous website under the disputed domain name was a copy of the Complainant’s official website “www.actelion.com”, which can be verified by the screenshots contained in Annexes 3 and 5 of the Complaint. The Panel finds that such use of the disputed domain name does not correspond to a bona fide use of domain names under the Policy. For the above reasons, the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith The trademark ACTELION is registered by the Complainant in several countries, in different classes, for pharmaceutical products. The disputed domain name comprises the trademark ACTELION with the addition of the word “pharma,” which does not avoid confusion with the Complainant’s trademark. The Respondent has no rights or legitimate interests in the disputed domain name. The previous website at the disputed domain name was a copy of the Complainant’s official website. In view of the above reasons, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for its own commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark and misleading consumers to believe that the website under the disputed domain name is the official website of the Complainant, as described in the Policy paragraph 4(b)(iv). The Respondent has not responded to the cease and desist letter sent by the Complainant and has not responded to the Complaint, either. The Panel finds that the Respondent’s bad faith registration and use of the disputed domain name, with the intention of taking undue advantage of the trademark ACTELION, have been demonstrated. The current passive use of the disputed domain name does not alter this finding. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e ., the disputed domain name has been registered and is being used in bad faith. 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 <actelionpharma.com> be transferred to the Complainant. Mario Soerensen Garcia Sole Panelist Date: January 12, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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