The Complainant is Les Laboratoires Servier, Suresnes, France, represented by IP Twins S.A.S., France.
The Respondent is miller / JunZe zhang of Xiamen, Fujian, China.
The disputed domain names <servier.pub> and <servier.xyz> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the registrant information, the Complainant filed an amended Complaint on October 11, 2016.
On October 11, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on October 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2016. The Response was filed in Chinese with the Center on October 21, 2016.
On October 21, 2016, the Respondent also submitted a request that Chinese be the language of the proceeding. On October 24, 2016, the Center requested in Chinese and English the Respondent to confirm whether the Response of October 21, 2016 should be regarded by the Center as the final Response so that the Center would proceed to appoint the Panel, and the Panel upon appointment would decide the proper language of the proceeding. The Respondent did not reply to the Center's request for confirmation. On November 8, 2016, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Sok Ling Moi as the sole panelist in this matter on November 14, 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 one of the largest French independent pharmaceutical groups with business presence in 148 countries worldwide. It is a member of the Servier Group founded in 1954 by Dr. Jacques Servier who lent his surname to be adopted as the business name, trade mark and domain name for the Servier Group. The Servier Group has a presence in China since the late 1970's.
The Complainant is the owner of numerous trade marks worldwide for SERVIER (word mark/design mark) including:
|
Jurisdiction |
Mark |
Registration No. |
Class No. |
Registration Date |
|
European Union |
SERVIER |
004279171 |
5, 35, 41, 42 and 44 |
October 15, 2007 |
|
International |
SERVIER |
814214 |
5, 35, 41, 42 and 44 |
August 5, 2003 |
|
International |
SERVIER |
571972 |
1, 3 and 5 |
May 29, 1991 |
|
International |
SERVIER |
549079 |
1, 3, 5, 10, 16, 35, 41 and 42 |
January 19, 1990 |
The Complainant is also the owner of numerous domain names incorporating its SERVIER trade mark, including:
- <servier.com>
- <servier.org>
- <servier.fr>
- <servier.us>
- <servier.net>
- <servier.biz>
- <servier.info>
- <servier.xxx>
- <servier.online>
The disputed domain names were both registered on June 7, 2016, long after the Complainant had used and registered its trade mark SERVIER. According to the evidence submitted by the Complainant and at the date of this decision, the disputed domain names do not resolve to any active websites and appear never to have done so in the past.
The Complainant contends that the disputed domain names are identical to its trade mark SERVIER, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Complainant requests for the transfer of the disputed domain names.
The Respondent filed a Response claiming that it had originally intended to register the domain names comprising the word "service" but had keyed in "servier" instead due to a typographical error. It claims that there was accordingly no bad faith involved in registering the disputed domain names.
The Respondent claims that it registered the two disputed domain names for the purpose of learning website creation, but had since not been able to find the time to create the websites, resulting in the dispute domain names being passively held.
The Respondent contends that "Servier" is a French name and not a fanciful coined term, and hence cannot be monopolised by any single organization or person.
The Respondent also contends that the disputed domain names do not resolve to any websites related to pharmaceutical products, presumably showing a lack of bad faith use.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding citing the following reasons (among others):
(a) the Complainant is a French company with a working knowledge of English and with no knowledge of Chinese;
(b) the disputed domain names are registered in Latin characters, rather than Chinese scripts, suggesting that the Respondent has some knowledge of English;
(c) as the Respondent did not respond to the Complainant's efforts to settle the dispute amicably, carrying out the proceeding in the Respondent's native language would unfairly disadvantage the Complainant not only in terms of cost but also give the Respondent an advantage over the Complainant; and
(d) English is not the native language of either the Complainant or the Respondent, and so neither party will have a language advantage over the other.
The Respondent filed its Response in Chinese and has requested that Chinese be the language of the proceeding, citing the reason that its native language is Chinese and claiming that it has no knowledge of other languages. Despite the Respondent's claim, the Panel is satisfied that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) based on the evidence of reverse WhoIs search results submitted by the Complainant, the Respondent has registered several other domain names which consist entirely of Latin characters which are English words or a combination of English words (such as <chinacontents.com>, <chinacontents.xyz>, <sotopay.com>, <focusyummy.com>, <focusgame.xyz>, <focusgames.xyz>, <koreaboy.com>, <russiaboys.com>, <maria.pub> and <guys.bid>).
(b) the Center has notified the Respondent of the proceedings in both Chinese and English;
(c) the Respondent has been given the opportunity to present its case in this proceeding and has in fact filed its Response in Chinese; and
(d) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English as well as the Response as filed in Chinese, that English shall be the language of the proceeding, and that the decision shall be rendered in English.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in SERVIER by virtue of its use and registration of the same as a trade mark.
Both the disputed domain names incorporate the Complainant's trade mark SERVIER in its entirety. The addition of the generic Top-Level Domains ("gTLDs") ".pub" and ".xyz" does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
Consequently, the Panel finds that the disputed domain names are identical to the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974)
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names.
As the disputed domain names do not resolve to any active websites, there is no evidence to suggest that the Respondent has made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. In fact, the Respondent has admitted that the dispute domain names have been passively held since registration.
There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that it has any rights in the name "Servier" whether as a surname or otherwise. In fact, the Respondent has claimed that its choice of the word "Servier" being used in the disputed domain names, was accidental.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Panel notes that, as of the date of this decision, the disputed domain names do not resolve to any active websites. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2.
According to the Complainant, the word "Servier" is a surname in French and has no specific meaning whether in the French language or in any other language. The Complainant has submitted evidence to show its use of SERVIER as a trade mark in connection with its pharmaceutical business for more than 50 years. Hence, the Respondent's contention that a French name cannot be exclusively used in trademark terms by a single organization or person is misconceived.
By virtue of its extensive use and advertising, the Complainant's SERVIER trade mark enjoys a significant reputation at least in France. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the SERVIER trade mark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant's trade mark and related domain names when it registered the disputed domain names. Registration of a domain name that incorporates a complainant's long-established widely-known trade mark suggests opportunistic bad faith.
The Respondent's reasons for registering the disputed domain names are not convincing. Furthermore, efforts to send the written notice to the Respondent at the physical address and fax number provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
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 names <servier.pub> and <servier.xyz> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: December 7, 2016