WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Actelion Pharmaceuticals Ltd v. Wang Xiang

Case No. D2016-0028

1. The Parties

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

The Respondent is Wang Xiang of Chengdu, Sichuan, China.

2. The Domain Name and Registrar

The Disputed Domain Name <actelion.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016. On January 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 11, 2016, 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.

On January 13, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 18, 2016, the Complainant submitted an amended Complaint which included its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 of the Complaint in both Chinese and English, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 12, 2016.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on February 18, 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, founded in 1997, is a biopharmaceutical company focused on the discovery, development, and commercialization of innovative drugs for diseases with significant unmet medical needs.

The Complainant has produced registration information for the following trademarks, inter alia:

1. ACTELION, Chinese trademark, Registration No. 12129088 registered on July 28, 2014.

2. ACTELION, United States trademark, Registration No. 3148269, registered on September 26, 2006.

According to the WhoIs data, the Disputed Domain Name <actelion.mobi> was registered by the Respondent on January 31, 2015, and will expire on January 31, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

When comparing the Disputed Domain Name to the Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and the Complainant’s trademarks. The Disputed Domain Name <actelion.mobi> includes the Complainant’s trademark ACTELION in its entirety, and thus the Disputed Domain Name is identical to the Complainant’s ACTELION trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant states that the Respondent is not affiliated with nor authorized by the Complainant in any way. In the instant case, the pertinent WhoIs information identifies the registrant as “Wang Xiang,” which does not resemble to the Disputed Domain Name in any manner. There is no evidence, including the WhoIs record for the Disputed Domain Name, suggesting that the Respondent is commonly known by the Disputed Domain Name. The Respondent offers and attempts to sell the products of the Complainant’s competitors on the web site to which the Disputed Domain Name resolves, by using the Complainant’s ACTELION trademark in the Disputed Domain Name. This cannot be a bona fide offering of goods or services or a legitimate, noncommercial or fair use of the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant has marketed and sold its goods and services using its ACTELION trademark since 2001, which is well before the Disputed Domain Name was registered in 2015. By registering a domain name that contains the Complainant’s ACTELION trademark in its entirety, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as the Complainant’s <actelion.com> domain name. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

The Respondent creates a likelihood of confusion with the Complainant and its ACTELION trademark by using a confusingly similar domain name to direct Internet users to a web site that offers for sale products and services similar to those offered by the Complainant. As such, the Respondent is attempting to cause consumer confusion in a deliberate attempt to profit from such confusion. The impression given by the Disputed Domain Name and its web site would cause consumers to believe the Respondent is somehow associated with the Complainant when, in fact, it is not. The Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, and the Respondent is thus using the fame of the Complainant’s ACTELION trademark to improperly increase traffic to the web site at the Disputed Domain Name for the Respondent’s own commercial gain.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (see paragraph 4.3 of WIPO Overview 2.0).

The Registration Agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests that the language of the proceeding be English. For the following reasons, the Panel decides that the language of the proceeding shall be English:

(1) The Panel finds that the Complainant is not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.

(2) The Center’s communications to the Respondent have used both English and Chinese, and ample opportunity has been given to the Respondent to object to the Complainant’s request. The Respondent did not reply to the Center.

(3) According to the screenshots of the web site to which the Disputed Domain Name resolves submitted by the Complainant, the Respondent also uses English on the web site to which the Disputed Domain Name resolves to introduce its products. It thus appears that the Respondent can understand English, the language of the Complaint.

6.2 Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”.

The Complainant has established that it is the owner of the ACTELION trademark.

The Disputed Domain Name <actelion.mobi> incorporates the ACTELION trademark in its entirety and the generic Top-Level Domain (“gTLD”) “.mobi”. The only distinctive part of the Disputed Domain Name is “actelion”, which is identical to the Complainant’s trademark. As for the applicable top-level suffix such as “.mobi” in the Disputed Domain Name, it is a consensus view that it is usually disregarded under the confusing similarity test (paragraph 1.2 of WIPO Overview 2.0).

According to the above, the Panel concludes that the Disputed Domain Name is identical and confusingly similar to the Complainant’s ACTELION trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”.

Paragraph 4(c) of the Policy sets out the following circumstances “[which], in particular but without limitation, if found by the Panel […], shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making 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.”

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of WIPO Overview 2.0, which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once 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 domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The Complainant has established that it is the owner of the ACTELION trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the Complainant’s trademark in the Disputed Domain Name or otherwise.

Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. As such, 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.

The Respondent does not provide any allegation or evidence indicating that before any notice of the dispute it used or demonstrably prepared 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. According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent’s name or that the Respondent is commonly known by the name used in the Disputed Domain Name. No evidence indicates that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. From the evidence submitted it is clear that the Respondent is using the Disputed Domain Name promoting and selling its products by misleadingly diverting Internet users to a web site at the Disputed Domain Name, which cannot be considered a legitimate noncommercial or fair use.

Having considered the above, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and in the absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location”.

The Complainant’s ACTELION trademark has been registered in many countries, including China. The Respondent chose the ACTELION trademark as the only distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected “actelion” as used in the Disputed Domain Name for any reason other than the reputation of the trademark. Such intentional registration shows the bad faith of the Respondent. Thus, the Panel concludes that the Disputed Domain Name was registered in bad faith.

Moreover, the Respondent uses the web site at the Disputed Domain Name to sell pharmaceutical products. By using the Disputed Domain Name, which contains the Complainant’s ACTELION trademark in its entirety, to sell pharmaceutical products, the Respondent creates a likelihood of confusion that the Respondent is affiliated, sponsored, or endorsed by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in 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, <actelion.mobi>, be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: March 1, 2016