Sprout Pharmaceuticals, Inc. v. Yuuki Tsuda
Claim Number: FA2202001984348
Complainant is Sprout Pharmaceuticals, Inc. (“Complainant”), represented by William S. Fultz of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Yuuki Tsuda (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <addyi.xyz>, 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2022; the Forum received payment on February 15, 2022. The Complaint was received in English.
On February 15, 2022, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <addyi.xyz> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. 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 February 17, 2022, the Forum served the English language Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of March 9, 2022 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@addyi.xyz. Also on February 17, 2022, the Japanese and English language 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 March 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement relating to the disputed domain name is written in Japanese, thereby making the language of the proceedings in Japanese. However, the Panel has a discretion, pursuant to UDRP Rule 11(a), to determine that the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding, will be a language that is different from the language of the Registration Agreement. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant contends that the proceedings should be conducted in the English language. It argues that this should be so because Respondent is capable of understanding English since the website to which the <addyi.xyz> domain name resolves identifies the contact person as “Cherry” in English, not Japanese, characters. Moreover, Exhibit 8, which is Respondent’s website to which the domain name resolves states, in Japanese but translated into English for the purposes of this proceeding, states that Respondent had examined Complainant’s official website to see where Complainant’s products could be bought; the address of that website is in evidence and the Panel notes that the website is solely in the English language, so presumably Respondent was able to read it. It is also apparent from the phraseology of Respondent’s website that it was aiming its sales campaign, at least in part, at the English speaking United States market. Accordingly, it is apparent that the Respondent must have facility with the English language and that it is an appropriate language in which to conduct the proceeding. Finally, if the proceeding were conducted in Japanese, the documents would have to be translated into English, which would only add to the time and cost of the proceeding. In all the circumstances, therefore, the Panel determines that the proceeding will be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, Sprout Pharmaceuticals, Inc., is a pharmaceutical company. Complainant has rights in the ADDYI mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,860,061, registered Nov. 24, 2015). See Compl. Ex. 6. Respondent’s <addyi.xyz> domain name is identical to Complainant’s ADDYI mark since the disputed domain name includes the entire mark and simply adds the “.xyz” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <addyi.xyz> domain name. Respondent has no connection or affiliation with Complainant.
Respondent registered and uses the <addyi.xyz> domain name in bad faith. Respondent uses the disputed domain name purportedly to offer Complainant’s ADDYI branded drug product for sale. Additionally, Respondent had constructive and actual knowledge of Complainant’s rights in the ADDYI mark based on the registration of the mark and Respondent’s use of the domain to sell Complainant’s product.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the pharmaceutical industry.
2. Complainant has established its trademark rights in the ADDYI mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,860,061, registered Nov. 24, 2015).
3. Respondent registered the disputed domain name on November 27, 2021.
4. The evidence shows that Respondent has no right or legitimate interest in the domain name as it consists of Complainant’s trademark appropriated by Respondent without permission and used purportedly to sell Complainant’s branded product.
5. The evidence shows that Respondent has registered and used the disputed domain name 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ADDYI mark based on registration of the mark with the USPTO (e.g., Reg. No. 4,860,061, registered Nov. 24, 2015). See Compl. Ex. 6. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Phusion Projects, LLC vs. Ferg / Ferg Ferg, FA 1912001874943 (Forum Jan. 8, 2020) (“Complainant’s USPTO registration of its FOUR LOKO mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the ADDYI mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ADDYI mark. Complainant argues that Respondent’s <addyi.xyz> domain name is identical to Complainant’s ADDYI mark since the disputed domain name includes the entire mark and simply adds the “.xyz” gTLD to form the disputed domain name. When a disputed domain name differs from a mark merely by the addition of a gTLD it may be found identical to the mark under Policy ¶ 4(a)(i). See Kellog North America Company v. Private Registration, FA 1613347 (Forum June 2, 2015) (finding that the <kelloggs.xyz> domain name is identical to the complainant’s KELLOGG’S mark under Policy ¶ 4(a)(i)). Thus, the Panel finds that the disputed domain name is identical to Complainant’s ADDYI mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ADDYI trademark and to use it in its domain name in its entirety;
(b) Respondent registered the disputed domain name on November 27, 2021;
(c) Respondent has used the domain name to sell Complainant’s branded product;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have rights or legitimate interests in the <addyi.xyz> domain name because Respondent has no connection or affiliation with Complainant. When no response is submitted, WHOIS information and a lack of affiliation with a complainant can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies “Yuuki Tsuda” as the registrant and Complainant submits that Respondent has no affiliation with it. See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Additionally, while not argued by Complainant, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Use of a disputed domain name to offer a complainant’s goods for sale does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot showing Respondent uses the disputed domain name purportedly to offer Complainant’s drug product for sale. See Compl. Ex. 8. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
‘All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <addyi.xyz> domain name in bad faith because Respondent uses the disputed domain name purportedly to offer Complainant’s ADDYI branded drug product for sale. Using a disputed domain name to offer a complainant’s product for sale may be 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). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). The Panel notes that Complainant provides a screenshot showing the disputed domain name resolves to a website purportedly offering Complainant’s ADDYI drug product for sale. See Compl. Ex. 8. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had constructive and actual knowledge of Complainant’s rights in the ADDYI mark based on the registration of the mark and Respondent’s use of the domain to sell Complainant’s product. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. 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.”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). Thus, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the ADDYI mark and therefore registered the disputed domain name in bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ADDYI mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <addyi.xyz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 15, 2022
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