WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Actelion Pharmaceuticals Ltd. v. Intdomain, Apexed

Case No. D2015-2294

1. The Parties

The Complainant is Actelion Pharmaceuticals Ltd. of Allschwil, Switzerland, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Intdomain, Apexed of Burgenland, Austria.

2. The Domain Name and Registrar

The disputed domain name <veletri.biz> (the “Domain Name”) 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 December 16, 2015. On December 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 December 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2016.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 21, 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 following facts are undisputed.

The Complainant is founded in 1997 and headquarted in Basel, Switzerland and is a biopharmaceutical company focused on the discovery, development, and commercialization of innovative drugs for diseases with significant unmet medical needs.

Veletri is an intravenous prostacyclin and is available in the United States of America since 2010 and in some European markets since 2013. The Complainant is the owner of the domain name <veletri.com>.

The Complainant owns several registrations of the trademark VELETRI (“Trademark”), such as an International registration (Madrid) for the word mark VELETRI with registration number 760333, a Community Trade Mark (Union Mark) with registration number 002302610, and United States Trademark registrations with registration numbers 0760333 and 2720582, all for goods in class 5.

The Domain Name was registered on August 17, 2015 and is redirecting Internet users to a website featuring links to third-party websites.

5. Parties’ Contentions

A. Complainant

The Complainant has submitted an extensive Complaint. Insofar as relevant, the Complainant contends the following.

The Domain Name contains the Complainant’s Trademark in its entirety, thus resulting in a domain name that is identical to the Trademark. Where, as here, a disputed domain name encompasses and captures a complainant’s trademark in its entirety, past UDRP panels have established that the disputed domain name should be found confusingly similar to that trademark. Thus, the Domain Name should be considered identical and confusingly similar to the Trademark.

The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given Respondent permission to use the Trademark in any manner, including in domain names. The Respondent is not commonly known by the Domain Name which evinces a lack of rights or legitimate interests.

The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business.

Furthermore, the Domain Name is offered for sale for an amount that likely far exceeds the Respondent’s out-of-pocket expenses in registering the Domain Name, which serves as further evidence of the Respondent’s lack of rights and legitimate interests.

The Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. VELETRI is a coined term related specifically to the Complainant and the Respondent’s registration for a domain name consisting of the exact same term should be viewed as more than a mere coincidence. It is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the Domain Name was registered.

The Respondent creates a likelihood of confusion with the Complainant and the Trademark by registering a domain name that contains the Trademark in its entirety, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and website to later sell to the trademark owner.

By creating this likelihood of confusion between the Trademark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Trademark in order to increase traffic to the Domain Name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website.

Previous UDRP panels have concluded that evidence of prior UDRP panel decisions in which domain names have been transferred away from a respondent to complaining parties supports a finding that the respondent has engaged in bad faith pattern of “cybersquatting”. Furthermore, this is the second time that the Respondent has targeted the Complainant and the Respondent admitted in a pre-complaint correspondence that “arbitration is normal”.

The Respondent’s offer to sell the Domain Name constitutes bad faith, because the Respondent has admitted registering the Domain Name for the sole purpose of selling it for valuable consideration in excess of its out-of-pocket expenses. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith.

The Respondent does currently hold registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact, along with the Respondent’s own admission, demonstrates bad faith registration and use of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.

The Domain Name is identical to the Trademark in which the Complainant has rights.

The Panel also takes into account that Internet users considering the Domain Name without awareness of its content may believe that the Domain Name is in some way connected and associated with the Complainant (see Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988).

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making 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.

There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.

The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Veletri” is the Respondent’s name or that the Respondent is commonly known as “Veletri”. There is also no evidence that the Respondent is, and has ever been, a licensee of the Complainant and that the Respondent has ever asked, and has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.

Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services as the Respondent is using the Domain Name for the sole purpose of misleading Internet users.

It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. andGiorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name; or

(ii) circumstances indicating that the Domain Name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Domain Name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Domain Name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Panel finds that the Domain Name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s Trademark is well-known throughout the world. In addition, the Domain Name is redirecting Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name and must have been aware when using the Domain Name.

This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 the Respondent’s website or location.

Furthermore, the Complainant contends and has proven that after having received a summons in the name of the Complainant, the Respondent offered the Domain Name for sale to the Complainant. The Panel agrees with the Complainant that the Domain Name was registered or acquired primarily for the purpose of selling which is further evidence that the Domain Name was registered and is being used in bad faith.

Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.

Such registration and use in bad faith is emphasised by the fact that the Panel has assessed by means of a simple Internet search that the address of the Respondent in Burgenland, Austria, seems to be a fictitious address.

There are also various decisions under the UDRP in which the Respondent had not replied to the complaint and where the panel ordered a transfer of the domain name. See e.g., Tyson Foods, Inc. v. Intdomain / Apexed, WIPO Case No. D2014-1316 and an earlier case between the Complainant and the Respondent, Actelion Pharmaceuticals Ltd v. Intdomain / Apexed, WIPO Case No. D2015-1426.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was 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 <veletri.biz> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: February 1, 2016