UDRP result: Transfer domain.
A company that owned the domain Idenix.com between 2000 and 2017 and allowed it to lapse, regained it via the UDRP process.
Forget about the domain expiration cycle!
The mere fact that someone at Idenix Pharmaceuticals LLC of Cambridge, Massachusetts, dropped the ball with renewing domains, didn’t matter in the end.
This should serve as a lesson to bidders on expired domain auctions that do not perform due diligence on existing trademarks; in this case, IDENIX is a trademark owned by the Complainant.
The sole panelist at the WIPO, Adam Taylor, delivered a finding favoring the Complainant and ordered the domain Idenix.com to be returned to them.
Full details of this decision follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Idenix Pharmaceuticals LLC v. Privacy Administrator, Anonymize, Inc. / Jacob Seal
Case No. D2018-20281. The Parties
The Complainant is Idenix Pharmaceuticals LLC of Cambridge, Massachusetts, United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Privacy Administrator, Anonymize, Inc. of Bellevue, Washington, United States / Jacob Seal of Obadin, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <idenix.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2018, 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 7, 2018 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 13, 2018.
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 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on October 18, 2018. 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 is a pharmaceutical company trading under the name “Idenix”, principally in the field of research and development. It is a wholly-owned subsidiary of the Merck pharmaceutical group. The Complainant’s predecessor, Idenix Pharmaceuticals, Inc., was incorporated and started trading in 1998. At an unspecified point thereafter, the business was switched to the Complainant as part of a corporate reorganisation.
Idenix Pharmaceuticals, Inc., owns registered trade marks for IDENIX in a number of countries including United States trade mark no. 4506546, filed October 17, 2012, registered April 1, 2014, in class 5.
The disputed domain name was first registered on May 5, 2000. For reasons explained in section 6C below, it is likely to have been acquired by the Respondent no earlier than 2017.
The Complainant sent a cease and desist letter to the Respondent on June 5, 2018. No response was received.
At around that time, the disputed domain name was being used for a website branded IDENIX PHARMACEUTICALS, which effectively impersonated the Complainant including the provision of information about the activities and products of the Complainant, but which also provided purported reviews and promotions for competing products. The address given on the website was false and the phone number was not operational.
5. Parties’ Contentions
A. Complainant
A summary of the Complainant’s contentions is as follows:
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark, which is a coined, fanciful term. The disputed domain name incorporates the Complainant’s trade mark in its entirety.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has never authorised the Respondent to use its mark.
The disputed domain name resolves to a fake website which trades off the Complainant’s distinctive mark. There is no evidence that it has ever been used for a bona fide offering of goods or services or for legitimate noncommercial fair use.
The Respondent is not commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent operates a “pirate” website which impersonates and diverts web traffic from the Complainant by creating initial interest confusion and which seeks to profit from advertising for other products.
The use of privacy services and false contact information, including in relation to the previous registrant Sussan Petersons, is further evidence of bad faith. The fact that the Respondent is located in Nigeria whereas a (false) United States address appears on the website is also indicative of an intent to deceive.
It is inconceivable that a domain name which exactly represents the Complainant’s distinctive trade mark could have been registered or used in good faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark IDENIX by virtue of the registered trade mark mentioned in section 4 above. In the circumstances set out in section 4, the Panel considers it reasonable to infer that the owner of the mark, Idenix Pharmaceuticals, Inc., is part of the same group as the Complainant. Section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that a trade mark owner’s affiliate is considered to have rights in a trade mark under the UDRP.
In any case, the Complainant has established unregistered trade mark rights deriving from its extensive use of the name “Idenix”.
Disregarding the suffix, the disputed domain name is identical to the trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was first registered in 2000, not long after the Complainant’s predecessor apparently started trading. However, the Complainant alleges that the Respondent acquired the disputed domain name far more recently. While the Complainant has not provided any supporting archive WhoIs records, the Panel is prepared to accept the Complainant’s assertions in the absence of a Response from the Respondent contesting them.
According to the Complainant, the Complainant itself owned the disputed domain name between 2004 and around June 16, 2017, by which date it passed out of the Complainant’s hands for reasons which have not been explained and thereafter became registered in the name of a company called Mandello Investments & Holdings LLC, and then to a Sussan Petersons, before finally being moved into a privacy service by May 26, 2018. Following the filing of the Complainant, the underlying registrant was revealed to be a Jacob Seal of Nigeria.
On this basis, even if the current registrant is connected with the two previous registrants, the Respondent’s effective ownership could not have started before June 2017, when the disputed domain name apparently fell out of the Complainant’s hands. By this date, the Complainant had been trading under its distinctive name for many years.
In these circumstances, the Panel has little difficulty in concluding that the disputed domain name was registered and used in bad faith.
The disputed domain name has been used for a website which deliberately impersonates the Complainant while at the same promoting products competing with those of the Complainant. Furthermore, there is evidence that false contact information has been used on the website.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, which exactly reflects the Complainant’s distinctive trade mark, in the manner described above, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <idenix.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: November 1, 2018
