The Complainant is F. Hoffmann-La Roche AG, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Rezzan Kiraz, Turkey.
The disputed domain name <ipaktoro.com> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 3, 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 September 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 9, 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 September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 9, 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.
The relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is one of the world’s large pharmaceutical companies.
IPAKTORO is according to the Complaint a coined name chosen by the Complainant to identify one of its products, whose International Nonproprietary Name (INN) is “ipatasertib”. “Ipatasertib” is a medicine designed to be used in treatments that seek to prevent cancer cell growth. Clinical studies are ongoing to evaluate the efficacy and safety of “ipatasertib” and the opportunity it may provide to address significant unmet needs for patients with breast and prostate cancers.
The Complainant is the owner of a number of national and international trademark registrations worldwide for the term IPAKTORO, including for example Swiss Trademark Registration No. 731264 for IPAKTORO (word mark), filed on May 15, 2019 and registered on May 17, 2019; and European Union Trade Mark Registration No. 018065600 for IPAKTORO (word mark), filed on May 15, 2019 and registered on August 27, 2019. These trademarks are referred to in this decision as the “IPAKTORO trademark”. According to the Complaint, IPAKTORO is a made-up word with no other meaning, coined by the Complainant for its product.
The Respondent registered the Disputed Domain Name on May 15, 2019. This was the same date as the Complainant filed various trademark applications for the term IPAKTORO. The Disputed Domain Name has been linked to a website where it has been offered for sale for USD 990.
The Complainant made an offer to the Respondent to buy the Disputed Domain Name corresponding to the asking price, but the Respondent refused the offer and instead increased its requested price for the Disputed Domain Name to USD 19,095.
The Complainant’s contentions are straightforward and can be summarized as follows:
The Disputed Domain Name is identical to its trademark IPAKTORO in which it clearly has rights.
The Respondent has no rights or legitimate interests in the term “ipaktoro”. There is no other meaning associated with IPAKTORO other than in relation to the Complainant’s product.
The Disputed Domain Name was registered and is being used in bad faith. It was clearly opportunistically registered as a result of the Complainant filing trademark applications for the term IPAKTORO and with a view to selling it to the Complainant, as no one else would have any legitimate use for the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
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 this is a case where one Respondent (“Super Privacy Service LTD”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be Rezzan Kiraz and references to the Respondent are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the IPAKTORO trademark.
The Disputed Domain Name is identical to the IPAKTORO 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.
It does not matter for the purposes of this element that the Disputed Domain Name was registered before the IPAKTORO trademarks were registered – the Panel agrees with the consensus approach as explained in WIPO Overview 3.0, section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.”
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP. See below as to bad faith issues.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and the first condition of paragraph 4(a) of the Policy has been fulfilled.
IPAKTORO is as far as the Panel is aware a made-up word with no other meaning save in relation to the Complainant’s product.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed 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 trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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 IPAKTORO trademark. The Complainant had clearly chosen the name IPAKTORO for its product and filed trademark applications for that term prior to the Respondent’s registration of the Disputed Domain Name.
The Complainant has therefore established a prima facie case that the Respondent has no 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 that the Respondent has no rights or 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.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s IPAKTORO trademark when it registered the Disputed Domain Name. The Panel concludes that the Respondent deliberately selected the Disputed Domain Name because of its similarity with the Complainant’s IPAKTORO trademark. It is clearly not coincidental that the Respondent registered the Disputed Domain Name the same day the Complainant filed trademark applications for the same term. The Panel infers it did so hoping to sell the Disputed Domain Name to the Complainant at a profit. Clearly the Respondent has advertised the Disputed Domain Name for sale (and indeed, raised the price upon a purchase offer from the Complainant). Given that the term IPAKTORO has no other meaning, and is unlikely to be of value or interest for any legitimate purpose other than use by the Complainant the Panel infers that paragraph 4(b)(i) above applies.
“Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
Further, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
In sum, all the evidence clearly points to bad faith on the part of the Respondent.
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 <ipaktoro.com> be transferred to the Complainant.
Nick J. Gardner
Date: October 22, 2020
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