Actelionlaboratory.com

The timeline behind actelionlaboratory.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Actelion Pharmaceuticals, Ltd. v. Dungu Zeng Claim Number: FA2309002060784 PARTIES Complainant is Actelion Pharmaceuticals, Ltd. ("Complainant"), represented by Brandon M. Ress of Pirkey Barber PLLC, Texas, USA. Respondent is Dungu Zeng ("Respondent"), Singapore. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <actelionlaboratory.com>, registered with Danesco Trading Ltd. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Ho-Hyun Nahm, Esq. as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on September 7, 2023; Forum received payment on September 7, 2023. On September 11, 2023, Danesco Trading Ltd. confirmed by e-mail to Forum that the <actelionlaboratory.com> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. Danesco Trading Ltd. has verified that Respondent is bound by the Danesco Trading Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On September 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@actelionlaboratory.com. Also on September 11, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On October 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant i) Complainant is a biotechnology company, and part of the Johnson & Johnson Family of Companies. Complainant claims rights in the ACTELION mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,148,269 registered September 26, 2006). The disputed domain name is confusingly similar to Complainant's mark because it wholly incorporates Complainant's mark, merely adding the generic word "laboratory" and the ".com" generic top-level domain ("gTLD"). ii) Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not licensed or authorized Respondent to use the ACTELION mark and Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer purportedly for a pharmaceutical and biotechnology company called "Actelion Laboratory" with Complainant's former address. iii) Respondent registered and uses the disputed domain name in bad faith. Respondent capitalized on the goodwill associated with Complainant's mark for commercial gain. Respondent's use of the domain name for a website displaying the ACTELION mark in a manner that impersonates Complainant and mimics the appearance of a legitimate website demonstrates bad faith registration and use. B. Respondent Respondent did not submit a Response in this proceeding. FINDINGS 1. Complainant has established rights in the ACTELION mark through Complainant's registration of the mark with the USPTO (e.g., Reg. No. 3,148,269 registered September 26, 2006). 2. The disputed domain name was registered on May 20, 2023. 3. The disputed domain name's resolving website prominently displays Complainant's ACTELION trademark and mimics Complainant's official website. DISCUSSION 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar Complainant claims rights in the ACTELION mark through its registration with the USPTO (e.g., Reg. No. 3,148,269 registered September 26, 2006). As Complainant has provided evidence of registration with the USPTO, the Panel finds Complainant has established rights in the ACTELION mark under Policy ¶ 4(a)(i). Complainant argues that the disputed domain name <actelionlaboratory.com> is confusingly similar to Complainant's ACTELION mark because it wholly incorporates Complainant's mark and merely adds the generic term "laboratory." The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests."). Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the ACTELION mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) ("The publicly available WHOIS information identifies Respondent as 'Ilyas Aslan' and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names."). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where "the WHOIS of record identifies the Respondent as "Bhawana Chandel," and no information in the record shows that Respondent was authorized to use Complainant's mark in any way."). The WHOIS information for the disputed domain name lists the registrants as "Dungu Zeng," and nothing in the record suggests that Respondent was authorized to use the ACTELION mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to confuse consumers into believing it is related to or affiliated with Complainant when it is not. The Panel notes that passing off as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant's MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant highlights that Respondent's website prominently displays the ACTELION mark and mimics Complainant's official website with Complainant's former address. The Panel finds that the disputed domain name's resolving website impersonates Complainant and its ACTELION mark, and thus Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Registration and Use in Bad Faith Complainant contends that Respondent's use and registration of the disputed domain name constitutes bad faith because the disputed domain name resolves to a website displaying the ACTELION mark in a manner that impersonates Complainant and mimics the appearance of a legitimate website. The Panel finds that passing off as a complainant while offering to sell competing products can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (b)(iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) ("Respondent's primary offering seem to be counterfeits of Complainant's toy car products. Respondent's use of the <magictrackscars.com> domain name is thus disruptive to Complainant's business per Policy ¶ 4(b)(iii)"); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). The Panel recalls Complainant provides a screenshot of the disputed domain name's website, which prominently displays the ACTELION trademark and mimics Complainant's official website. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv). Complainant further contends that Respondent had actual knowledge of the ACTELION mark prior to registering the disputed domain name in light of the fact that the disputed domain name impersonates Complainant, even down to displaying a virtually identical address previously used by Complainant. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant's trademark rights is sufficient to establish bad faith and may be demonstrated by the respondent's use of the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) ("[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration."). The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the ACTELION mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <actelionlaboratory.com> domain name be TRANSFERRED from Respondent to Complainant. Ho-Hyun Nahm, Esq., Panelist Dated: October 4, 2023 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.