The Complainant is Pfizer Inc. of New York, New York, United States of America (“United States” or “USA”), represented by Kaye Scholer, LLP, United States.
The Respondent is Yang Kyung Won of Seoul, Republic of Korea.
The disputed domain name <sayana.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2015. On November 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
On November 19, 2015, the Center sent a communication to the Parties, inviting the Complainant to provide evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, to submit the Complaint translated into Korean, or to submit a request for English to be the language of the administrative proceeding, and inviting the Respondent to make submissions in this regard. On November 19, 2015, the Center notified the Parties that language of the Registration Agreement was Korean, and on the same day, the Complainant filed a request for English to be the language of the administrative proceeding. On November 26, 2015, the Respondent filed a request for Korean to be the language of the administrative proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On November 24, 2015, prior to the commencement of the proceedings, the Respondent submitted a request for the Center to transmit to it information regarding the proceeding. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint both in English and Korean, and the proceedings commenced on November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. The Respondent did not file a formal Response.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 11, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is the company Pfizer Inc., a corporation existing under the laws of the State of Delaware, USA, with its principal place of business in the State of New York, USA.
The Complainant is one of the world’s largest pharmaceutical manufactures and sellers, with global operations in over 150 countries, and owns over 100 trademark registrations worldwide for the mark “Sayana”. Among the Complainant’s numerous worldwide registrations for the mark “Sayana,” it owns the trademark “Sayana” registered in the Republic of Korea, No. 40-900002, registered on January 17, 2012, as well as trademark under the same name, No. 558686 also registered in the Republic of Korea on September 5, 2003 (collectively the “Trademarks”).
The Complainant uses its Trademarks in connection with an injectable contraceptive. This Complainant’s products have been heavily marketed throughout the world, and especially in the United Kingdom of Great Britain and Northern Ireland and the European Union.
The Respondent is Yang Kyung Won, an individual who has been repeatedly involved in previous UDRP proceedings.
The disputed domain name was registered by the Respondent on or about August 9, 2011, and resolved to a parking page with sponsored links where the disputed domain name is offered for sale.
The Complainant contends that the disputed domain name is identical or confusingly similar to its Trademarks in which the Complainant has rights.
The Complainant alleges that the disputed domain name is identical to the Complainant’s Trademarks, and that the disputed domain name is likely to generate a risk of confusion in the public.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent is in no way affiliated with the Complainant, and that the Complainant has never authorized the Respondent to register or use the disputed domain name. The Complainant further notes that its adoption and registration of the mark “Sayana” precedes the Respondent’s registration of the disputed domain name by nearly 10 years. The Complainant additionally notes that the disputed domain name is not used in connection with a bona fide offering of goods or services, but rather redirects to a parking page with sponsored links in which the disputed domain name is for sale.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. As evidence of this bad faith, the Complainant notes that the disputed domain name does not in fact operate, but instead only leads to a landing page with sponsored third-party links in which the disputed domain name is offered for sale.
The Respondent did not reply to the Complainant’s contentions.
Preliminary Issue: Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the Panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and the Complainant submitted its Complaint in English.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise its discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
First, the Panel notes that the Respondent has been involved in numerous UDRP proceedings in the past in which English was chosen as the language of the proceeding. Further, although the Respondent filed a request on November 26, 2015 that Korean be the language of the proceedings, the Panel notes that the Respondent has chosen not to participate further in this proceeding. Finally, the Panel notes that the website to which the disputed domain name resolves displays text in English, and based on the evidences submitted by the Complainant, it appears that the Respondent is able to communicate in English and understand English.
While the Panel can fully understand the present record in English and Korean, for the above-mentioned reasons, the Panel concludes that it will issue a decision in English.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a complainant prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has demonstrated that it holds several trademark registrations for the term “Sayana” which are closely associated with its business activities around the world.
The disputed domain name wholly incorporates the Complainant’s Trademarks with the addition of the generic Top-Level Domain (“gTLD”) “.com”. It is well established that the addition of the gTLD “com” is typically without legal significance when comparing the disputed domain name to the Complainant’s trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603; cf, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Further, the disputed domain name wholly incorporates the Complainant’s existing Trademarks. The disputed domain name is identical to Complainant’s Trademarks and is therefore, in the Panel’s view, confusingly similar to the Complainant’s Trademarks. See Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464.
For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to the Complainant’s Trademarks, and the first element has been established.
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of production, several past UDRP decisions have held that “once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has clearly articulated that the Respondent is in no way affiliated with the Complainant, and that the Complainant has never authorized the Respondent to use its trademarks
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent in the present case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established.
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(i), includes “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of paragraph 4(b)(i) of the Policy. In the present case, the disputed domain name is linked to a domain parking service in which the disputed domain name is offered for sale. Further, the Respondent, who does not appear to use the disputed domain name in connection with a bona fide offering of goods or services, offered to sell the disputed domain name to the Complainant for a price of USD 17,500. The Panel finds that offer to sell the disputed domain name sufficient evidence of bad faith. See, among others, Lockheed Martin Corporation v. Allen Jarosz, WIPO Case No. D2005-0361 (“The fact that Respondent offered to sell the domain name registration to Complainant is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy paragraph 4(b)(i).”).
For the reasons given above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that the third and final element of the Policy has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sayana.com> be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Date: January 27, 2016