Genzyme Corporation v. Wang Hui Min
Claim Number: FA1707001739824
Complainant: Genzyme Corporation of Cambridge, Massachusetts, United States of America.
Complainant Representative: Marchais Associes of Paris, France.
Respondent: Wang Hui Min of tai yuan shi, China.
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: July 13, 2017
Commencement: July 13, 2017
Default Date: July 28, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is inter alia registered owner of the United States trademark registration no. 1859429 “GENZYME”, which was registered on October 25, 1994 for goods in class 5 (hereinafter referred to as the “GENZYME Mark”), as well as documents to show that the trademark is in current use.
The disputed domain name fully incorporates the Complainant’s GENZYME Mark and is identical to such mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the GENZYME Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain name.
The Complainant contends that the Respondent has no legitimate right or interest to the disputed domain name as the disputed domain name resolved to an inactive page. The Complainant states that the Respondent has evidenced no rights or legitimate interest in the disputed domain name as he is not making a legitimate noncommercial or fair use of the domain name, nor is he using the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, the disputed domain name is not used in connection with an active website.
The Examiner finds that the Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the GENZYME Mark is well-known and that the Respondent was aware of such mark when it chose and registered the disputed domain name. It further contends that the Respondent also received a notification that the disputed domain name matched a mark registered with the Trademark Clearinghouse. With regard to bad faith use, the Complainant argues that the disputed domain name was registered for the illegitimate purpose of attracting Internet users to visit Respondent’s website, by creating a likelihood of confusion between the GENZYME Mark. Furthermore, the Complainant states that the disputed domain name resolved to an inactive website, which disrupts the Complainant’s business.
First of all, the Examiner notes that the disputed domain name was registered on April 6, 2017 and that the registrar’s claims notification period, in which the registrar provided notice to potential domain name registrants that the domain they are seeking to register matches a label in the Trademark Clearinghouse, ended on November 17, 2015. Therefore, the Respondent has not, as contested by the Complainant, received knowledge of the GENZYME Mark by virtue of the Complainant’s registration of the GENZYME Mark in the TMCH. However, given that the GENZYME Mark is highly distinctive the Examiner accepts that the Respondent was most likely aware of the Complainant’s GENZYME Mark at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith.
However, the Complainant has not provided sufficient evidence that the disputed domain name is being used in bad faith as well. At present, the disputed domain name is inactive. The Complainant stated that the disputed domain name was registered for the illegitimate purpose of attracting Internet users to visit Respondent’s website, by creating a likelihood of confusion between the GENZYME Mark and that the disputed domain name resolved to an inactive website which disrupts the Complainant’s business. The Complainant failed to provide any evidence in support to its allegations. Previous URS decisions have held that the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith. However, passive holding does not per se lead in a finding of bad faith use. See Netflix, Inc. v. Masterclass Media et al., FA 1639527 (Forum Oct. 2, 2015); Allianz SE v. Registrant of xn--49s296f.xn--3ds443g / Rich Premium Limited / Domain Administrator, FA 1579170 (Forum Oct. 1, 2014). On the contrary, passive holding is equal to active use in bad faith only under specific circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
In sum, after carefully considering the evidence, the Examiner finds that the evidence is not clear and convincing that the domain name is being used in bad faith. Given that the URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse, the Examiner finds that the Complainant has not satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<genzyme.online>
Mr. Peter Müller, Examiner
Dated: August 2, 2017
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