Alexion Pharmaceuticals, Inc. v. Nichi Iko
Claim Number: FA2009001911776
Complainant is Alexion Pharmaceuticals, Inc. (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Nichi Iko (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aloxipharmaceutical.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2020; the Forum received payment on September 10, 2020.
On September 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <aloxipharmaceutical.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aloxipharmaceutical.com. Also on September 11, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it discovers, develops, manufactures, and distributes medications for rare diseases on a global basis. Complainant has rights in the ALEXION mark through its registration in the United States in 2004.
Complainant alleges that the disputed domain name is identical or confusingly similar to its ALEXION mark as it merely changes the ALEXION mark to the word “aloxi,” which is both visually and phonetically similar, and adds the descriptive term “pharmaceutical” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its ALEXION mark in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant on the disputed domain name’s resolving website.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract internet users for commercial gain by passing off as Complainant at the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the ALEXION mark. Respondent attempts to pass off as Complainant in phishing emails.
Finally, the same respondent registered and lost the <aloxipharm.com> domain name in March 2020.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark ALEXION and uses it in connection with medications for rare diseases.
Complainant’s rights in its mark date back to at least 2004.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website is a copy of Complainant’s legitimate website and it displays a logo similar to Complainant’s logo.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name changes the ALEXION mark to the word “aloxi,” which is both visually and phonetically similar, and adds the generic term “pharmaceutical” and the “.com” gTLD. Such changes may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Indeed, Inc. v. Daniel Wood / dc motors & co, FA 1798578 (Forum Sep. 3, 2018) (finding, “Respondent’s <endeededjobs.com> disputed domain name is confusingly similar to Complainant’s INDEED mark because it is comprised of Complainant’s INDEED mark in its entirety, replacing the initial “I” with an “e” to sustain the phonetic equivalent of Complainant’s mark, adding the inconsequential letters ‘”ed” and the generic term “job” which relates to Complainant’s services identified by Complainant’s mark and adds the .”com” gTLD to Complainant’s mark, which differences are inconsequential to overcome a finding of confusing similarity.”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel also notes that ALOXI is the brand name for an anti-emetic pharmaceutical product whose generic name is palonosetron hydrochloride. The Panel finds that the <aloxipharmceutical.com> domain name is confusingly similar to Complainant’s ALEXION mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use the ALEXION mark in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Here, the WHOIS information of record identifies the registrant of the disputed domain name as “Nichi Iko.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant alleges that Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme, but presents no evidence to support that allegation. Thus the Panel will not further consider this allegation.
The resolving website is a copy of Complainant’s legitimate website and it displays a logo similar to Complainant’s logo. Using a disputed domain name’s resolving website to host strikingly similar layouts and content as a Complainant’s website is generally considered passing off, and may not be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent previously registered, and lost, the domain name <aloxipharm.com>. However, the name of the Respondent in that proceeding was not the same as that of the present Respondent. Since Complainant does not present any evidence to show that the two registrants are the same, the Panel will not consider this allegation any further.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website is a copy of Complainant’s legitimate website and it displays a logo similar to Complainant’s logo. Attempting to pass off as a Complainant by using a similar or identical resolving webpage as Complainant’s website is generally considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name for bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website is a copy of Complainant’s legitimate website and it displays a logo similar to Complainant’s logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aloxipharmaceutical.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 6, 2020
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