Takeda Pharmaceutical Company Ltd. v. Regery Ukraine
Claim Number: FA2303002034486
Complainant is Takeda Pharmaceutical Company Ltd. (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Regery Ukraine (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baxaltapharmaceutical.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to Forum electronically on March 3, 2023; Forum received payment on March 3, 2023.
On March 8, 2023, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <baxaltapharmaceutical.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 March 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2023, 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@baxaltapharmaceutical.com. Also on March 13, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Takeda Pharmaceutical Company Ltd., develops and manufactures pharmaceutical products and related medical devices and services. Complainant has rights in the BAXALTA mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 4,961,987, which was registered on May 24, 2016). See Compl. Exhibit B. Respondent’s <baxaltapharmaceutical.com> domain name is confusingly similar to the BAXALTA mark as it includes the entire mark, merely adding the generic term “pharmaceutical” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <baxaltapharmaceutical.com> domain name since Respondent is not licensed or authorized to use Complainant’s BAXALTA mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate use. Rather, Respondent is passing off as Complainant. In addition, the BAXALTA mark is well-known.
Respondent registered and is using the <baxaltapharmaceutical.com> domain name in bad faith by seeking to deceive consumers through a confusingly similar domain name and impersonating Complainant for commercial gain. Respondent also knew of Complainant’s rights in the BAXALTA mark.
B. Respondent
The <baxaltapharmaceutical.com> domain name was registered on February 11, 2023. Respondent did not submit a response in this matter.
1. Complainant, a Japanese multinational pharmaceutical and biopharmaceutical company, founded in 1781, through a series of acquisitions, owns the rights and trademark registrations for the “BAXALTA” mark.
2. The <baxaltapharmaceutical.com> domain name is confusingly similar to the BAXALTA mark in which the Complainant has rights.
3. Complainant has not licensed or otherwise authorized Respondent to use its Mark, nor is Respondent commonly known by the Marks. In addition, Respondent is not using the domain name in connection with a bona fide offering of goods or services under the Policy.
4. Complainant has established that the Disputed Domain Names have been registered and used 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."
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”).
Complainant claims rights in the BAXALTA mark through its registrations with multiple trademark organizations including the US Patent and Trademark Office (USPTO) (e.g. Reg. No. 4,961,987, registered on May 24, 2016). See Compl. Ex. B. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Complainant provides evidence of approximately 150 trademark registrations obtained globally for the Mark. Although the BAXALTA marks are still registered by one of the Complainant’s predecessors in interest, Baxalta, Incorporated, the Panel is able to infer from the evidence submitted that the Complainant is in fact the current owner of the trademark registrations despite there being no record of any official trademark assignments. Such evidence includes links to articles and public filings describing several acquisitions of Baxalta, Incorporated since 2016 which culminate in the Complainant ultimately owning the marks. Based on the submitted evidence, the Panel finds that Complainant has rights in the BAXALTA mark under Policy 4(a)(i).
Complainant argues that the <baxaltapharmaceutical.com> domain name is confusingly similar to its BAXALTA mark since it uses the entire mark and then simply adds the term “pharmaceutical,” which related to Complainant’s pharmaceutical business, and the “.com” gTLD. When a disputed domain name wholly incorporates another’s mark, additional terms have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). See also Takeda Pharmaceutical Co. Ltd. v. Damien Miller / Takeda pharmaceuticals Ltd., FA 2015796 (Forum Nov. 11, 2022) (finding <takedapharmaceuticalsltd.com> confusingly similar to TAKEDA); Takeda Pharmaceutical Co. Ltd. v. Rejeev Venkayya, FA 1666755 (Forum Apr. 20, 2016) (finding <takedapharmaceuticalsusa.com> confusingly similar to TAKEDA); Teva Pharmaceutical Industries Ltd. v. Amy Kinjo, No. 101161 (Czech Arb. Ct. Jan. 27, 2016) (finding <tevapharmaceuticalslimited.com> confusingly similar to TEVA).
Given that Respondent only adds the generic term “pharmaceutical” and the “.com” gTLD to Complainant’s BAXALTA mark, the Panel finds <baxaltapharmaceutical.com> confusingly similar to the mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <baxaltapharmaceutical.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the BAXALTA mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA 1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for <baxaltapharmaceutical.com> lists the registrant as “Regery Ukraine.” See Registrar Email Verification; Compl Exhibit A. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the BAXALTA mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent seeks to deceive consumers with a domain name confusingly similar to the BAXALTA mark and by passing off as Complainant on the resolving site. At the time of the drafting of this decision, the Disputed Domain Name appears to resolve to a site indicating the domain name has been suspended. However, Complainant provides screen shots purporting to be from the website associated with the Disputed Domain prior to its suspension.[i] The screenshots depict content related to Complainant’s products prominently featuring the BAXALTA design mark. In addition, the screenshots provide a history of the Complainant’s predecessor Baxalta, Incorporated copied nearly word for word from the Wikipedia entry on “Baxalta” provided by Complainant as Exhibit D. It is clear to the Panel that Respondent attempted to pass itself off as the Complainant to users that landed at that site.
Previous Panels have found that use of a domain name to confuse and divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). In addition, Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that imitates or passes itself off as a complainant. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
For the reasons set forth above, Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <baxaltapharmaceutical.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <baxaltapharmaceutical.com> domain name in bad faith by intending to deceive consumers through registering a confusingly similar domain name and by impersonating Complainant on the resolving site.
The domain name <baxaltapharmaceutical.com> was registered on February 11, 2023. Shortly thereafter content was placed on the website prominently featuring the Complainant’s mark and containing information directly copied from the BAXALTA Wikipedia page. The Panel infers from this that clearly the Respondent had actual knowledge of the Complainant and its ownership of the BAXALTA mark at the time it registered the Disputed Domain Name. Although UDRP precedent has generally declined to find bad faith on the basis of constructive knowledge, where it is clear on its fact that the Respondent had actual knowledge, such actual knowledge is sufficient to establish a respondent’s bad faith. See 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.”).
Where the respondent uses a disputed domain name to pass themselves off as a complainant, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). 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.”). see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). As noted above, Respondent uses the BAXALTA mark on the resolving site and copies information from Complainant’s Wikipedia page. The Respondent’s deception of users and passing off as Complainant, are clear indicia of bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baxaltapharmaceutical.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: April 24, 2023
[i] The screenshots provided unfortunately do not contain depictions of the address bar. Counsel is reminded that when it provides screenshots, it really needs to also include the address bar or some other indicia on the page itself whereby a Panel can confirm that the screenshots provided are from the Disputed Domain Name. This is especially important in a case such as this one where the Disputed Domain Name has been suspended at some point in time in between the submission of the Complaint and when a Panel reviews those materials. In this case, however, the screenshot does contain a reference to an e-mail address containing the disputed domain name as well as in very small letters near the footer a separate reference to the Disputed Domain Name.
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