Takeda Pharmaceutical Company Ltd. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2305002044765
Complainant is Takeda Pharmaceutical Company Ltd. (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <takedahelpathandpap.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 16, 2023; Forum received payment on May 16, 2023.
On May 17, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <takedahelpathandpap.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@takedahelpathandpap.com. Also on May 18, 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 June 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Takeda Pharmaceutical Company Ltd., is a pharmaceutical company.
Complainant has rights in the TAKEDA and HELP AT HAND marks through their registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <takedahelpathandpap.com> domain name is identical or confusingly similar to Complainant’s TAKEDA and HELP AT HAND marks as it combines the marks while adding the letters “pap” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <takedahelpathandpap.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its marks in the at-issue domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use, but instead hosts pay-per-click links in competition with Complainant.
Respondent registered and uses the <takedahelpathandpap.com> domain name in bad faith. Respondent disrupts Complainant’s business while attracting users for commercial gain while hosting pay-per-click links. Additionally, Respondent registered the at-issue domain name with constructive and/or actual knowledge of Complainant’s rights in the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in its TAKEDA and HELP AT HAND marks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the TAKEDA and HELP AT HAND trademarks.
Respondent uses the at-issue domain name to address a website that hosts pay-per-click links.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registration for the TAKEDA and HELP AT HAND trademarks, or any of its multiple other national registrations for such marks, is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <takedahelpathandpap.com> domain name consists of Complainant’s TAKEDA and HELP AT HAND trademark less any domain name impermissible spaces, followed by the letters or term “pap” (an initialism for Complainant’s Patient Assistance Program), and with all followed all by the “.com” top-level. The differences between Complainant’s trademarks and <takedahelpathandpap.com> fail to distinguish the domain name from Complainant’s marks for the purpose of Policy ¶ 4(a)(i). The Panel thus concludes that Respondent’s <takedahelpathandpap.com> domain name is confusingly similar to Complainant’s TAKEDA and HELP AT HAND trademarks under Policy ¶ 4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Carolina Rodrigues” and the record before the Panel contains no evidence otherwise showing that Respondent is commonly known by the <takedahelpathandpap.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <takedahelpathandpap.com> for the purposes of 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, PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Respondent uses its <takedahelpathandpap.com> domain name to address a website that offers pay-per-click links to third parties some of which compete with Complainant. Respondent presumably benefits from such activity. Using the confusingly similar domain name to promote pay-per-click links is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without being exhaustive, circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent registered and is using its confusingly similar <takedahelpathandpap.com> domain name to address a website offering pay-per-click links. Using the domain name in such manner is disruptive to Complainant’s business, takes advantage of the confusion between the at-issue domain name and Complainant’s trademark, and indicates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also, Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links); see also, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the TAKEDA and HELP AT HAND marks when Respondent registered <takedahelpathandpap.com> as a domain name. Respondent’s actual knowledge is evident given the marks’ notoriety; given the combination of two of Complainant’s trademarks in the at-issue domain name; and given Respondent’s inclusion of the term “pap”, which is suggestive of Complainant’s Patient Assistance Program, in the domain name. See, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name);
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <takedahelpathandpap.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 14, 2023
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