InqPharm Europe Limited v. takesi kondou / toshikatsu awazu / masahiro katayama
Claim Number: FA1701001712217
Complainant is InqPharm Europe Limited (“Complainant”), represented by John Crosetto of Garvey Schubert Barer, Washington, USA. Respondent is takesi kondou / toshikatsu awazu / masahiro katayama (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2017; the Forum received payment on January 13, 2017.
On January 15, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org> domain names are registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 January 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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@clitramine.net, postmaster@slimxoclitramines.net, and postmaster@clitramine.org. Also on January 23, 2017, 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 February 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant operates in the pharmaceutical industry. In connection with its offerings, Complainant has registered the LITRAMINE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,573,049, registered July 22, 2014). Respondent’s <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org> are all confusingly similar to Complainant’s LITRAMINE mark because they incorporate the mark fully and merely add the letter “c,” a generic top-level domain (“gTLD”), and/or “slim” which describes the weight management focus of Complainant’s goods, and “xo” which is slang for “hugs and kisses.”
ii) Respondent has no rights or legitimate interests in <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org>. Respondent is not commonly known by the domain names, and has received no authorization from Complainant to use the LITRAMINE mark in any manner. Further, Respondent inactively holds the domain names, which all resolve to a “Forbidden” error message.
iii) Respondent registered and used <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org> in bad faith. Respondent’s registrations in this case demonstrate a pattern under Policy ¶ 4(b)(ii). Respondent’s inactive holding is representative of bad faith under Policy ¶ 4(a)(iii). Last, Respondent had at least constructive knowledge when registering and using the domain names.
B. Respondent
Respondent did not submit a Response. The Panel notes that <clitramine.net> was registered on May 25, 2016, <slimxoclitramines.net> was registered on June 2, 2016, and <clitramine.org> was registered on April 22, 2016.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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."
Preliminary Issue 1: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant provides the following support for consolidation:
-All 3 Domains previously hosted websites featuring essentially the same text and graphics.
-All 3 Domains currently host the same website content (an identically- worded error message in English text).
-All 3 Domains were registered through the same Registrar, GMO Internet, Inc.
-All 3 Domains list the same Tech Name and Tech Organization (Taro Warita at GMO Internet Inc.).
-All 3 Domains were registered within a 6-week period in 2016.
-All 3 Domains are registered to aliases owning a high volume of domains (87 by Respondent 1, 464 by Respondent 2, and 813 by Respondent 3).
-2 of the 3 Domains (<clitramine.org> and <slimxoclitramines.net>) list the same physical address for the registrant, differing solely by the placement of where unit “305” is referenced.
-2 of the 3 Domains (<clitramine.org> and <slimxoclitramines.net>) used the same private registration service (Whois Privacy Protection Service by onamae.com) to mask the registrant name before this Proceeding was initiated.
-2 of the 3 Domains (<clitramine.net> and <clitramine.org>) share the same IP Location (Tokyo – Tokyo – Fujisoft) and ASN (AS17506 UCOM UCOM Corp., JP (registered Dec 12, 2000).
-Reverse WHOIS Searches for Respondents 1, 2, and 3 revealed similar domain patterns, which highlights that each Respondent appears to be a serial cybersquatter, and each Respondent name appears to be an alias for the same party. For example, Respondents are named in the following similar domain registrations featuring the same brands.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled, and thus it finds the disputed domain names are commonly controlled by a single Respondent who is using multiple aliases.
Preliminary Issue 2: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Japanese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Japanese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Japanese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant argues that the registration agreements for the Domains are directly provided by GMO Internet, Inc., the Registrar for all Domains, in English at http://www.japanregistry.com/agreement/. Complainant also argues that it is unable to communicate in Japanese, and that Respondent has included English text in content hosted at the resolving websites.
The Panel finds that persuasive evidence has not been sufficiently adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. However, after considering the circumstances of the present case such as the absence of Response by Respondent, Respondent's no objection to the Complainant's language request, etc., the Panel decides that the proceeding should be in English pursuant to UDRP Rule 11(a).
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 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 (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.”).
Complainant operates in the pharmaceutical industry. In connection with its offerings, Complainant has registered the LITRAMINE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,573,049, registered July 22, 2014). Respondent’s <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org> are all confusingly similar to Complainant’s LITRAMINE mark because they incorporate the mark fully and merely add the letter “c,” a generic top-level domain (“gTLD”), and/or “slim” which describes the weight management focus of Complainant’s goods, and “xo” which is slang for “hugs and kisses”. The Panel agrees that Complainant has made a sufficient representation of its rights in the LITRAMINE mark through its proffered USPTO registration under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org> are all confusingly similar to Complainant’s LITRAMINE mark because they incorporate the mark fully and merely add the letter “s” and/or “c,” a gTLD, and/or “slim” which describes the weight management focus of Complainant’s goods, and “xo” which is slang for “hugs and kisses”. Such additions to a fully incorporated mark have not overcome findings of confusing similarity. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also Ancestry.com Operations Inc. v. Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev, FA 1327838 (Forum July 13, 2010) (finding the respondent’s <familytreemakers.com> domain name confusingly similar to the complainant’s FAMILY TREE MAKER trademark because the addition of the letter “s” was insufficient to distinguish the domain name from the mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); see also Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Accordingly, the Panel agrees that the weight of available precedent favors finding the domain names at issue confusingly similar to the LITRAMINE mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (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 (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 argues that Respondent has no rights or legitimate interests in <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org>. Respondent is not commonly known by the domain names, and has received no authorization from Complainant to use the LITRAMINE mark in any manner. Where a respondent has not submitted a response, WHOIS information is considered a foundation for Policy ¶ 4(c)(ii) findings. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Here, the WHOIS lists “takesi kondou / toshikatsu awazu / masahiro katayama” as registrant of the domain names. Accordingly, the Panel agrees that registrant names have no connection to the terms of the domain names, and therefore finds that Respondent is not commonly known by <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org>.
Further, Complainant argues that Respondent inactively holds the domain names, which all resolve to a “Forbidden” error message. Failure to use a domain name may evince a lack of rights and legitimate interests. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent has not demonstrated its rights or legitimate interests in the domain names in any manner through its use.
Complainant argues that Respondent registered and used <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org> in bad faith. First, under Policy ¶ 4(b)(ii), registering three confusingly similar domain names may impute bad faith. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, the Panel sees that Respondent’s registrations in this case demonstrate a pattern under Policy ¶ 4(b)(ii).
Complainant also contends that Respondent’s inactive holding is representative of bad faith under Policy ¶ 4(a)(iii). Inactive holding may indicate bad faith under a nonexclusive consideration of Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent has held the domain names at issue for over three months. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant’s trademark enjoys thorough protection through several hundred registrations worldwide, and Complainant has used Complainant’s LITRAMINE trademark (“Mark”) since at least as early as October 13, 2010 in interstate commerce in the United States of America in connection with “pharmaceutical, nutraceutical, and other preparations" goods in International Class 5 (“Goods”). Through Complainant’s extensive use and substantial investments in promoting its Mark over the course of over six (6) years, the Mark has developed substantial goodwill and a positive reputation; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Last, Complainant asserts that its trademark registration for the LITRAMINE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel infers that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clitramine.net>, <slimxoclitramines.net>, and <clitramine.org> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 28, 2017
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