The Complainant is Medexus, Inc. of Ontario, Canada, represented internally.
The Respondent is Cook Creative Domain Limited of Raratonga, Cook Islands.
The disputed domain name <medexus.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2019. On January 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 11, 2019, 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 January 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 7, 2019. 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.
The relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is a Canadian pharmaceutical company.
The Complainant is the registrant of Canadian trademark number 598253 for the term “medexus” (the “MEDEXUS trademark”). It has a filing date of August 15, 2000. Contact Information provided for the Disputed Domain Name as shown on the relevant WhoIs information included an email address which appears to belong to a competitor of the Complainant.
The Disputed Domain Name was registered by the Respondent on February 12, 2004. It currently resolves to a parking page provided by the Registrar.
The Complainant says that the Disputed Domain Name is identical to its MEDEXUS trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “MEDEXUS”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name was likely effected on behalf of a competitor and is in bad faith. It says the Disputed Domain Name previously resolved to a Canadian wine supplier but was redirected to a parking page when the Complainant contacted the Respondent via a broker. It says the Respondent offered to sell the Disputed Domain Name at an inflated price which was “10 times the going rate” (it does not identify the amount). It also says the Respondent has lost a previous UDRP complaint brought by another pharmaceutical company.
No Response has been filed.
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes that the Disputed Domain Name has been held by the Respondent since 2004 without the Complainant taking any action. The Panel has considered whether that should prevent the Complaint now proceeding. The Panel in this regard agrees with the generally accepted approach of panels as set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at 4.17 as follows:
“Does ‘delay’ in bringing a complaint bar a complainant from filing a case under the UDRP?
Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.
Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.
Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.
Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.”
In the present case there is no evidence of the Respondent carrying out any business activity under the Disputed Domain Name. Although a significant period has elapsed, there is therefore no evidence at all before the Panel of any sort of detriment to the Respondent still less any evidence of detrimental reliance. The Panel therefore does not find any reason for denying the Complainant its remedy.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has rights in the MEDEXUS trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel finds the MEDEXUS trademark is a coined word and where there is no evidence of anyone else using that term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use 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 has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MEDEXUS trademark. The Complainant has prior rights in the MEDEXUS trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
The Panel concludes that on the balance of probabilities the Disputed Domain Name was registered on behalf of a competitor of the Complainant, given the contact information provided in relation to the Disputed Domain Name appears to belong to a competitor of the Complainant. The Panel considers that on the balance of probabilities the most likely reason that was done was to prevent the Complainant itself obtaining the Disputed Domain Name for its own use. Item (ii) above normally requires evidence of a pattern of such conduct, but the list provided by paragraph 4(b) is non exhaustive. In the present case a highly distinctive coined word is the Complainant’s name and trademark, and precisely that word has been registered, apparently on behalf of one of the Complainant’s competitors, and currently linked to a parking page. The Panel considers these facts raise a clear inference of bad faith registration and use.
The Panel finds that the Respondent has failed to produce any evidence to rebut that inference. As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <medexus.com> be transferred to the Complainant.
Nick J. Gardner
Date: February 19, 2019
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