WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tillotts Pharma AG v. Jinsoo, Yoon

Case No. D2020-0212

1. The Parties

The Complainant is Tillotts Pharma AG, Switzerland, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Jinsoo, Yoon, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <colpermin.com> is registered with Inames Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2020. On January 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2020, 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 February 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. The Complainant filed an amended Complaint including a request for English to be the language of the proceeding on February 13, 2020. The Respondent requested for Korean to be the language of the proceeding on February 12 and 14, 2020.

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, and the proceedings commenced on February 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. The Response was filed with the Center on March 17, 2020.

The Center appointed Moonchul Chang as the sole panelist in this matter on March 27, 2020. 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, Tillotts Pharma AG, is a Swiss pharmaceutical company which was founded in the 1950s as J.B. Tillott Limited. It developed Colpermin to treat irritable bowel syndrome (IBS), a chronic condition of the digestive system. The Complainant has obtained registrations for the COLPERMIN trademarks in numerous countries including Switzerland (e.g., Registration No. 2P-321930, registered on March 22, 1983), Republic of Korea (e.g., Registration No. 4000899130000, registered on April 12, 1983) and Canada (e.g., Registration No. TMA293759, registered on August 3, 1984).

According to the publicly available WhoIs information and confirmed by the Registrar, the disputed domain name <colpermin.com> was registered on May 16, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) the disputed domain name is identical or confusingly similar to the Complainant’s trademark because it contains the COLPERMIN mark in its entirety. The Complainant is the owner of the COLPERMIN trademark.

(2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorized the Respondent to register or use the disputed domain name or the Complainant’s mark. The Respondent is not sponsored by or affiliated with the Complainant. The Respondent is not commonly known by the disputed domain name. There is no evidence in the record, including the WhoIs information, to demonstrate that the Respondent is commonly known by the disputed domain name. Moreover, the Complainant, Jinsoo Yoon, has engaged in similar practices in the past, changing the name of the registrant to a similar to the domain name in question in order to mask its identity.

The Respondent does not offer any goods or services at the website under the disputed domain name. The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party website, which directly compete with the Complainant’s business. The Respondent’s use of the disputed domain name presumably for a pay-per-click website is further evidence that it has no rights or legitimate interests in the disputed domain name. In addition the Respondent’s use of the disputed domain name for a website indicating the sale of the disputed domain name does not constitute a bona fide offering of goods or services.

(3) the disputed domain name was registered and is being used by the Respondent in bad faith. Firstly, at the time of registration of the disputed domain name, the Respondent knew or at least should have known, of the existence of the Complainant’s trademarks and that registration of the domain name containing well‑known trademarks constitutes bad faith registration. The Complainant has marketed and sold its goods and services using this trademark since 1981, which is well before the Respondent assumed the control of the disputed domain name on August 23, 2015. Secondly, the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, and/or endorsement of such website. The Respondent has demonstrated intent to capitalize on the goodwill of the Complainant’s mark for pecuniary gains in order to increase traffic to the disputed domain name’s website as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website. Thirdly, the Respondent has engaged in a bad faith pattern of “cybersquatting” in registering domain names each containing the well-known trademarks. The Respondent’s prior adverse UDRP decisions constitute further evidence of a pattern of bad faith registration. (seeEducational Testing Service v. Jinsoo Yoon, WIPO Case No. D2019-0883; Bayer AG v. Jinsoo Yoon, WIPO Case No. D2018-2675; Red Bull GmbH v. Jinsoo Yoon, WIPO Case No. D2016-2351).

Fourthly, the Respondent is offering to sell the disputed domain name which constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent demonstrated an intent to sell, rent, or otherwise transfer it for valuable consideration in excess of its documented out-of-pocket expenses. When the Complainant first attempted to contact the Respondent by sending a cease and desist letter, the Respondent replied that he was willing to sell the disputed domain name to the Complainant for a price far exceeding its registration costs. Finally, by falsely using the name of the Complainant’s trademark and product in its public Whois record, the Respondent attempts to conceal its true identity. Such falsified information is another indication of the Respondent’s bad faith.

B. Respondent

The Respondent contends that:

(1) the Respondent was not aware of the Complainant’s registration of COLPERMIN trademark because it was not used for long period of time since its registration and was not considered famous.

(2) the Respondent has rights or legitimate interests in the disputed domain name because the disputed domain name was legitimately registered and was not registered by the Respondent in bad faith.

6. Discussion and Findings

6.1. Preliminary Issue: Language of Proceedings

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the parties. In this present case the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean.

However, the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons. The Complainant is unable to communicate in Korean and the translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings.

When the Complainant previously sent email communication to the Respondent, he responded to the Complainant in English, which indicates that the Respondent is able to communicate in English. The Respondent’s website of the disputed domain name features various phrases in English including “This domain name is FOR SALE”, “Colitis Symptoms” and “Peppermint Oil Capsules”. Moreover, English was the language of the proceeding in the prior adverse UDRP decisions against the Respondent. (See Tipico Co. Ltd. v. Jinsoo Yoon, WIPO Case No. D2019-1961). On the other hand the Respondent requests to conduct the administrative proceeding in Korean because the language of the registration agreement is Korean and he does not understand English.

Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.

In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Decision in English.

6.2. Merits

Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <colpermin.com> contains the Complainant’s mark COLPERMIN in its entirety. The generic Top-Level Domain suffix “.com” can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl,WIPO Case No. D2007-1653). Numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to make the domain name “confusingly similar” within the meaning of the Policy (Section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0)

Firstly, the Complainant contends that it has never licensed or authorized the Respondent to use the Complainant’s trademark or to register any domain names incorporating the COLPERMIN mark, but that the Respondent has used the Complainant’s trademark without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case.

Secondly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent has registered and used the disputed domain name for the purpose of selling it for a profit or for operating a pay-per-click website. In the meantime the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. In addition, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.

Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.

Firstly, since the Complainant’s COLPERMIN marks are internationally well known in many countries including Switzerland and Republic of Korea, it is most likely that the Respondent registered the disputed domain name with notice of the Complainant’s trademarks. In addition, the Respondent in all likelihood registered the disputed domain name with the expectation of taking advantage of the reputation of the Complainant’s trademarks.

Secondly, the Respondent offers to sell the disputed domain name on the associated website. When the Complainant contacted the Respondent, the Respondent replied that he was willing to sell the disputed domain name to the Complainant for a price far exceeding its registration costs. It is evidence of bad faith use where a respondent has used the disputed domain name to sell the disputed domain name for the price which is in excess of its documented out-of-pocket expenses.

Thirdly, the Respondent’s use of the disputed domain name for a pay-per-click website is further evidence of bad faith use. Here, the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, and/or endorsement of such website.

Finally, having considered the Respondent’s registration of numerous domain names incorporating famous trademarks even with changing the name of the registrant to a similar to the domain names to conceal his identity, the Panel finds that these registrations constitute a typical pattern of cybersquatting.

Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.

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 <colpermin.com> be transferred to the Complainant.

Moonchul Chang
Sole Panelist
Date: April 10, 2020