Westmore · UDRP DecisionSaizen.shop
The Panel ordered transfer of <saizen.shop>. It treated the Respondent's statement that he agreed to "relocate" the domain name as genuine unilateral consent sufficient to support transfer, notwithstanding the parties' unsuccessful settlement effort. For completeness, the Panel also found all three UDRP elements satisfied: the domain was identical to the SAIZEN mark, its pharmaceutical-related PPC use created no rights or legitimate interests, and the targeting of the Complainant and competing products for click-through revenue constituted bad faith under paragraph 4(b)(iv).
The timeline behind saizen.shop
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates two independently sufficient paths to transfer: genuine unilateral consent and a complete merits analysis. It also shows that an unsupported claim that an exact-match trademark term is a common noun will not establish legitimate interests where the actual use consists of PPC links closely related to the trademark owner's products and competitors.
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 Merck KGaA v. Yasutaka Sakatani Case No. D2018-1948 1. The Parties The Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany. The Respondent is Yasutaka Sakatani of Tokyo, Japan, self-represented. 2. The Domain Name and Registrar The disputed domain name <saizen.shop> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2018, 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 August 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 30, 2018, and filed an amended Complaint on August 31, 2018. On August 31, 2018, the Respondent submitted an email in English offering to “relocate” the disputed domain name. Accordingly, the Center informed the Parties that if they wished to explore settlement options, the Complainant should submit a request for suspension. The Complainant requested the suspension of the proceeding on the same day. The Center notified to the Parties that the proceeding was to be suspended until September 30, 2018. On September 18, 2018, the Complainant requested to reinstitute the proceeding. On September 18, 2018, the Center notified the Parties that the proceeding was to be reinstituted. 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 in English and Japanese of the Complaint, and the proceedings commenced on September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. The Respondent did not submit any substantive Response. On October 11, 2018, the Center notified the Parties that it would proceed with panel appointment. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 1, 2018. 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 pharmaceutical and chemicals company with worldwide presence through different affiliated companies in several countries, under company names including the umbrella trademark MERCK. The Complainant has been one of the leaders in its industry since 1668. The Complainant holds among others, the following trademark registrations: Trademark Registration Number Filing Date Registration Date Class Jurisdiction SAIZEN 250849 November 1, 2012 November 4, 2014 5 Israel SAIZEN IDM000359603 August 18, 2012 July 5, 2012 5 Indonesia SAIZEN IDM000339536 August 18, 2012 November 25, 2011 5 Indonesia SAIZEN 233974 November 25, 2010 October 4, 2011 5 Israel SAIZEN 40978 March 13, 2010 March 13, 2010 5 Brunei Darussalam SAIZEN 216174 October 28, 2008 June 6, 2010 5 Israel SAIZEN 796988 October 1, 2008 April 2, 2009 5 New Zealand SAIZEN 11962 September 30, 2008 October 9, 2009 5 Philippines SAIZEN 794161 April 5, 2007 April 5, 2007 5 Chile SAIZEN 188537 March 14, 2006 August 7, 2007 5 Israel SAIZEN 003416344 October 17, 2003 April 1, 2005 5 European Union SAIZEN V0047295 September 4, 2002 May 31, 2002 5 Iceland SAIZEN T0212747I July 16, 2002 July 16, 2002 5 Singapore SAIZEN 924923 July 16, 2002 July 16, 2002 5 Australia SAIZEN 002627578 March 22, 2002 August 28, 2003 5 European Union SAIZEN P-498833 March 16, 2002 May 7, 2002 5 Switzerland SAIZEN 46274 February 1, 1988 August 25, 1989 5 Philippines SAIZEN 87005731 November 30, 1987 November 26, 1993 5 Malaysia SAIZEN T8705664D November 20, 1987 November 20, 1987 5 Singapore SAIZEN 175971 November 13, 1987 November 25, 1992 5 New Zealand SAIZEN 140/1988 November 12, 1987 April 11, 1988 5 Iceland SAIZEN 445142 May 12, 1986 May 12, 1986 5 Australia SAIZEN 2P-342551 October 9, 1985 December 10, 1985 5 Switzerland SAIZEN 4418901 August 25, 2010 October 15, 2013 5 United States of America (“Unites States”) SAIZEN 4429095 June 2, 2010 November 5, 2013 5 United States SAIZEN 1820966 March 10, 1993 February 15, 1994 5 United States SAIZEN 126087 November 7, 2012 June 13, 2013 5 Jordan SAIZEN 1140775 November 2, 2012 November 2, 2012 5 International SAIZEN 1063465 December 21, 2010 December 21, 2010 5 International SAIZEN 781566 May 31, 2002 May 31, 2002 5 International SAIZEN 549335 February 6, 1990 February 6, 1990 5 International SAIZEN 507014 April 22, 1986 April 22, 1986 5 International SAIZEN 022259 June 29, 1997 January 13, 2001 5 Bahrain SAIZEN 45900 June 8, 1997 June 8, 1997 5 Jordan SAIZEN 003416344 October 17, 2003 April 1, 2005 5 European Union Also, the Complainant holds registrations for the following domain names: Domain name Creation Date saizen.us April 19, 2002 saizen.de June 14, 2016 saizen-online.de June 14, 2016 saizen.info September 20, 2001 saizen.ch June 20, 2016 saizen.com.cn February 27, 2003 saizen.cn March 17, 2003 saizen.be December 10, 2001 saizen.fr April 10, 2003 saizen.co.uk February 27, 2003 saizen.cz September 12, 2003 saizen.mx September 25, 2009 saizen.nu March 14, 2003 saizen.se April 12, 2006 saizen.it March 19, 2003 saizen.es July 22, 2004 saizen.sk March 18, 2005 saizen.ca July 6, 2016 saizen.in February 16, 2005 saizen.co July 21, 2010 saizen.tw March 12, 2008 saizen.ru August 8, 2016 saizen.hk April 6, 2004 saizen.ie September 2, 2003 saizen.ae August 24, 2016 saizen.jp March 12, 2003 saizen.asia December 10, 2007 saizenus.com November 11, 2004 saizenliquid.info October 24, 2008 saizen.sg January 3, 2005 saizenresearch.com February 3, 2008 buy-saizen.com March 20, 2002 saizen.com March 17, 1997 saizen.adult March 31, 2015 human-growth-hormone-saizen.org March 20, 2002 saizen.porn March 31, 2015 saizen.eu June 4, 2006 saizenliquid.com May 13, 2008 saizen.net April 3, 2001 saizen.com.sa October 14, 2003 saizen.org April 3, 2001 saizen.kr February 1, 2012 saizen.com.ar May 5, 2017 saizen.hu May 29, 2017 saizen.co.il September 11, 2003 saizen.health July 11, 2017 The disputed domain name <saizen.shop> was registered on June 29, 2018 and resolves to a pay-per-click website. 5. Parties’ Contentions A. Complainant The Complainant states the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights That the Complainant is the owner of several registrations worldwide for the trademark SAIZEN, which covers a prescription medicine that is used to treat growth hormone deficiency (GHD). That SAIZEN is a well-known trademark in Europe and worldwide. That the disputed domain name is identical to its trademark SAIZEN, and its domain name <saizen.com>. That the inclusion of the generic Top-Level Domain (“gTLD”) “.shop” does not prevent the disputed domain name from being identical or confusingly similar to its trademark SAIZEN. (ii) The Respondent has no rights or legitimate interests in the disputed domain name That the Respondent has no rights to, or legitimate interests in the disputed domain name. That the Respondent is not a licensee of the Complainant and that the Complainant has never authorized the Respondent to use its trademark SAIZEN. That the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and/or services. That the Respondent is not commonly known by the disputed domain name. That the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name, as the website to which the disputed domain name resolves displays pay-per-click (“PPC”) advertisements that divert traffic to websites offering pharmaceutical products in direct competition with the Complainant’s products. (iii) Registration and Use in Bad Faith That it seems impossible to conceive that the Respondent was unaware of the Complainant’s trademark SAIZEN at the time of registration of the disputed domain name. That the act of using the trademark SAIZEN in connection to a website that features advertising links to products directly competing with the Complainant’s products, evidences bad faith. That the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the trademark SAIZEN as to the source, sponsorship, affiliation, or endorsement of this website. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Respondent only answered that: “Dear Sir. This domain is a common noun in Japan. But I do not intend to claim rights. I agree to relocate the domain.” 6. Discussion and Findings 6.1 Language of the Proceedings The Complaint was submitted in English. The language of the registration agreement related to the disputed domain name is Japanese. According to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified contrarily in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the appointed Administrative Panel to determine otherwise. The Complainant has requested that the language of the proceeding be English. The Respondent has not submitted a formal Response. The Respondent only sent a short communication to the Center, in English, stating the following: “Dear sir. This domain is a common noun in Japan. But I do not intend to claim rights. I agree to relocate the domain”. The website to which the disputed domain name resolves, displays some hyperlinks written in English, such as: “HGH HORMONE”, “HGH GROWTH HORMONE”, and “HGH HUMAN GROWTH HORMONE”. Taking these facts into account, it is reasonable to infer that the Respondent is able to understand, and communicate in the English language (see Zappos.com, Inc. v. Zufu aka Huahaotrade , WIPO Case No. D2008-1191 ; and MySpace Inc. v. Will Eom , WIPO Case No. D2008-0448 ). Pursuant to paragraph 11 of the Rules, and considering that both the Complainant and the Respondent can communicate in English, the Panel determines that the language of the proceedings shall be English. 6.2 Substantive Issues To succeed in this Complaint, the Complainant must prove that the three elements enumerated in paragraph 4(a) of the Policy have been met: (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 with respect to the disputed domain name; and (iii) The disputed domain name has been registered and used in bad faith. As the Respondent has failed to submit a formal Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complainant (see Encyclopaedia Britannica, Inc. v. null John Zuccarini , Country Walk , WIPO Case No. D2002-0487 ). A. Analysis of the intention of the Respondent to transfer the disputed domain name Before the commencement of this proceeding, the Respondent communicated to the Center its intention to “relocate” the disputed domain name. As a result, the Complainant requested the suspension of the proceeding. The Center issued a Notification of Suspension, and provided the Parties with the Center’s Standard Settlement Form. The Respondent did not reply to the Center’s Notification. On September 18, 2018, the Complainant requested the proceeding to be reinstated, stating that the Respondent had not accepted the Complainant’s settlement proposal. Therefore, the proceeding continued. Previous UDRP panels have decided that when a respondent has expressed an intention to conclude the proceeding by transferring the disputed domain name at hand, said domain name should be transferred on the basis of the respondent’s request (see section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0)). In such cases, UDRP panels have held that a genuine unilateral consent to transfer a domain name issued by a respondent provides a basis for an immediate order for transfer without consideration of the elements of paragraph 4(a) (see The Cartoon Network LP, LLLP v. Mike Morgan , WIPO Case No. D2005-1132 ). The Respondent’s email communication expressly says that the Respondent agrees to relocate the disputed domain name. This communication can be deemed to be a genuine unilateral consent to the transfer of the disputed domain name. That the Parties did not reach settlement within the suspension period granted by the Center does not affect the fact that the Respondent has consented to the transfer of the disputed domain name (see Pierre Balmain S.A. v. Domains By Proxy, LLC / Daniel Phillips , WIPO Case No. D2015-0189 ). These circumstances are sufficient to order the transfer of the disputed domain name to the Complainant. However, for the sake of completeness, the Panel will analyze the elements of the Policy. B. Identical or Confusingly Similar The disputed domain name <saizen.shop> is identical to the Complainant’s trademark SAIZEN because it incorporates said trademark in its entirety. The addition of the gTLD “.shop” is immaterial for the purpose of assessing confusing similarity (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services , WIPO Case No. D2015-0565 ; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc. , WIPO Case No. D2014-1919 ). The first requirement of the Policy has been met. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if you have 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 Complainant argues that it has not licensed or authorized the Respondent to use the trademark SAIZEN. (see Beyoncé Knowles v. Sonny Ahuja , WIPO Case No. D2010-1431 ; Six Continents Hotels, Inc. v. IQ Management Corporation , WIPO Case No. D2004-0272 ). The disputed domain name resolves to a PPC website that displays the following hyperlinks: “HGH HORMONE”, “HGH GROWTH HORMONE”, and “HGH HUMAN GROWTH HORMONE”. These advertising hyperlinks are directly targeting the Complainant and its products. They divert Internet users to sites that promote the products of a competitor of the Complainant. This fact increases the potential for confusion or wrongful association among Internet users (see AltaVista Company v. O.F.E.Z. et al. , WIPO Case No. D2000-1160 ; Expedia, Inc. v. Dotsan , WIPO Case No. D2001-1220 ; CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc. , WIPO Case No. D2000-0071 ). The use of the disputed domain name to collect click-through revenue as a result of the implementation of a PPC mechanism to take advantage of the reputation of the Complainant cannot be catalogued as fair, legitimate, or noncommercial (see Chanel, Inc. v. Estco Technology Group , WIPO Case No. D2000-0413 ). Even if the Respondent did not file a formal Response, it did say that the disputed domain name “is a common noun in Japan”. According to section 2.10.1 of the WIPO Overview 3.0 , the mere registration of a domain name comprised of a dictionary word does not by itself automatically confer rights or legitimate interests on the respondent. Mere arguments that a domain name corresponds to a dictionary term will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the disputed domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off the Complainant’s rights. That is not the case here. The disputed domain name has unequivocally targeted the Complainant’s trademark SAIZEN, and the products covered by it. Since the Respondent has not proven to have rights or legitimate interests in the disputed domain name, the second element of the Policy has been met. D. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The Respondent’s adoption of a PPC scheme that targets the Complainant and its trademark SAIZEN, creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, with the purpose of attracting Internet users to the Respondent’s website, to obtain click-through revenue from advertising links, for commercial gain. This constitutes bad faith conduct under paragraph 4(b)(iv) of the Policy (see Produits Berger v. Romana Go, WIPO Case No. DPH2005-0001 ). The fact that the website to which the disputed domain name resolved featured several hyperlinks promoting the products of a competitor of the Complainant, evidences the Respondent’s attempt to profit from the disputed domain name at the expense of the Complainant, its reputation, and its trademarks (see Molmed S.p.A. v. Prof. Asif Ahmed , WIPO Case No. D2002-0177 ; Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd , WIPO Case No. D2011-0315 ). The third element of the Policy has been met. 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 <saizen.shop> be transferred to the Complainant Kiyoshi Tsuru Sole Panelist Date: November 19, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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