Hexal Aktiengesellschaft v. junxia yang / yangjunxia
Claim Number: FA1711001757253
Complainant is Hexal Aktiengesellschaft (“Complainant”), represented by Maury M. Tepper, North Carolina, USA. Respondent is junxia yang / yangjunxia (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hexal.net> (‘the Domain Name’), registered with DropCatch.com 1300 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.
On November 6, 2017, DropCatch.com 1300 LLC confirmed by e-mail to the Forum that the <hexal.net> domain name is registered with DropCatch.com 1300 LLC and that Respondent is the current registrant of the name. DropCatch.com 1300 LLC has verified that Respondent is bound by the DropCatch.com 1300 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 November 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@hexal.net. Also on November 6, 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 November 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant and its predecessors have used the trade mark HEXAL in relation to pharmaceutical and health care products and related services since at least as early as 1986 and owns numerous trade mark registrations in Europe and other countries for HEXAL, including in China where Respondent is based. It has owned hexal.com since 1995.
The Domain Name registered in 2017 points to a landing page written in Chinese directing users to adult content.
The Domain Name is confusingly similar to Complainant’s trade mark as it is identical save for the addition of the gTLD .net which does not distinguish the Domain Name from Complainant’s mark.
Respondent has no rights or legitimate interests with respect to the Domain Name. Respondent is not known by HEXAL. Respondent has no connection or affiliation with Complainant and Complainant has not given permission for use of its mark.
Directing users to a site with adult content in order to gain click through revenue is registration and use in bad faith as Respondent is seeking to increase its profits through confusion and association of Respondent’s site and the services offered on it with Complainant pursuant to Policy 4 (b)(iv).
Further, use of a Domain Name which is confusingly similar to a trade mark and links to sexually explicit web sites constitutes bad faith registration and use. Use by Respondent of Complainant’s entire mark makes it difficult to infer a legitimate use of the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trade mark registrations for HEXAL, the earliest produced to the Panel being a registration in the EU for HEXAL in logo form registered
in 2006, although an EU registration for the word mark HEXAL registered in 2014 has also been produced. It has held HEXAL.com since 1995.
The Domain Name registered in 2017 has been linked to adult content.
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 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 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint consists of Complainant’s HEXAL mark (registered in the EU for pharmaceutical and health products and services in logo form since 2006 and as a word mark since 2014) and the gTLD .net.
The gTLD .net does not serve to distinguish the Domain Name from the HEXAL mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by HEXAL Complainant’s mark. Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
The use of a Domain Name containing a well-known mark to resolve to adult orientated material cannot constitute a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v xiazihong, FA 1732665 (Forum July 7, 2017).
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade mark in this way. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Use of a Domain Name containing a trade mark in relation to a web page hosting adult material is evidence of bad faith registration and use under Policy 4 (b)(iii). See Molson Canada 2005 v JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb 10, 2015).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy. There is, therefore, no need to consider any additional grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hexal.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 11, 2017
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