Takeda Pharmaceutical Company Limited v. Martin Freymond
Claim Number: FA1510001642008
Complainant is Takeda Pharmaceutical Company Limited (“Complainant”), represented by James J. Saul of Faegre Baker Daniels LLP, Illinois, USA. Respondent is Martin Freymond (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <takedapharmca.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2015; the Forum received payment on October 12, 2015.
On October 12, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <takedapharmca.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2015 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@takedapharmca.com. Also on October 16, 2015, 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 November 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <takedapharmca.com> domain name is confusingly similar to Complainant’s TAKEDA mark.
2. Respondent does not have any rights or legitimate interests in the <takedapharmca.com> domain name.
3. Respondent registered and uses the <takedapharmca.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TAKEDA mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 769,053, registered May 5, 1964).
Respondent registered the <takedapharmca.com> domain name on August 13, 2015, and uses it to pass itself off as Complainant and to phish for personal information from Internet users.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has rights in the TAKEDA mark through registration of the mark with the USPTO. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”)
Respondent’s <takedapharmca.com> domain name includes the TAKEDA mark and adds the generic term “pharm,” the geographic term “ca,” and the gTLD “.com.” Panels have found that the addition of generic terms does not alter a domain name when the domain includes a complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Similarly, geographic terms have failed to distinguish a domain name from a mark. See Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark). Finally, the inclusion of the gTLD “.com” is irrelevant under a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel finds that the <takedapharmca.com> domain name is confusingly similar to Complainant’s TAKEDA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent has not been authorized or licensed by Complainant to use the TAKEDA mark. The WHOIS lists “Martin Freymond “ as the registrant of the <takedapharmca.com> domain name. Panels have found that a respondent is not commonly known by a disputed domain name based on a lack of authorization and a lack of evidence in the record to indicate that a respondent is commonly known by the domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant also contends that Respondent uses the disputed domain name to pass itself off as Complainant as part of a phishing scheme, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the <takedapharmca.com> domain to operate a website that looks very similar to Complainant’s website at <takeda.com>. Respondent’s website includes a “Contact Us” page which allows for users to enter their personal information when submitting inquiries to “Takeda Pharmaceuticals.” Panels have held that a respondent passing itself off as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Thus, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent intends to capitalize commercially from the confusion created by Respondent passing itself off as Complainant and using the TAKEDA trademark prominently in the disputed domain name, and resolving website. The Panel agrees and finds that Respondent is attempting to profit from the confusion of Internet users and thus has acted in bad faith under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Respondent is also attempting to pass itself off as Complainant with a website that closely imitates Complainant’s website. Prior have found that a respondent attempting to pass itself off as a complainant demonstrates bad faith. See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name). The Panel finds that Respondent’s use of the disputed domain name constitutes further bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <takedapharmca.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 16, 2015
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