WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eurofins Scientific (Ireland) Limited v. zhaojian¹

Case No. D2021-2903

1. The Parties

The Complainant is Eurofins Scientific (Ireland) Limited, Ireland, represented by IP Twins, France.

The Respondent is zhaojian, China.

2. The Domain Name and Registrar

The disputed domain name <eurofinschina.com> is registered with Xiamen 35.Com Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on September 22, 2021.

On September 13, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 22, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 English and Chinese of the Complaint, and the proceedings commenced on September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.

The Center appointed Joseph Simone as the sole panelist in this matter on October 22, 2021. 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.

4. Factual Background

The Complainant, Eurofins Scientific (Ireland) Limited, is a leading company in providing testing and support services to the pharmaceutical, food, environmental, agricultural science, consumer products industries, and to governments.

The Complainant has an international network of more than 800 laboratories across 47 countries, and a portfolio of over 150,000 validated analytical methods for testing purposes.

The Complainant has an extensive global portfolio of trade marks containing the term “Eurofins”, including the following:

- International Trade Mark Registration for EUROFINS, No. 793105A, in Classes 1, 5, 9, and 42, designating China and a number of other jurisdictions, registered on October 29, 2002;

- European Union Trade Mark Registration for EUROFINS, No. 002907848, in Classes 1, 5, 9, and 42, registered on May 12, 2004.

The disputed domain name was registered on March 14, 2018.

According to screenshots provided by the Complainant, at the time of filing the Complaint, the disputed domain name resolved to a webpage that indicates “nous ne parvenons pas à trouver ce site” (“we are unable to find this site”). At the time of this Decision, the disputed domain name still resolves to a webpage that indicates “This site can’t be reached”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has prior rights in the EUROFINS trade marks and that it is a leading player in its fields of business.

The Complainant further asserts that the disputed domain name is identical or confusingly similar to the Complainant’s EUROFINS trade marks, and the addition of the term “china”, a country name, does not affect the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.

The Complainant also asserts that it has not authorized the Respondent to use the EUROFINS mark and/or the Eurofins name, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant further asserts that there is no evidence suggesting that the Respondent has any connection to the EUROFINS mark in any way, and that there is no plausible good faith reason for the Respondent to have registered and used the disputed domain name, especially after considering the relevant circumstances. The Complainant therefore concludes that the registration and any use of the disputed domain name must be in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

In accordance with paragraph 11(a) of the Rules:

“[…] 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.”

In this case, the language of the Registration Agreement for the disputed domain name is Chinese. Hence, the default language of the proceeding should be Chinese.

However, the Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting inter alia that the Complainant is of French nationality, and it would therefore impose a burden on the Complainant if the proceeding were to be conducted in Chinese, as the Complainant would have to retain specialized translation services to translate the Complaint.

The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint, and did not comment on the language of the proceeding or submit any response on the merits of the proceeding.

The Panel has also considered the fact that the disputed domain name is in English and written in Latin letters and not in Chinese characters, and the fact that adopting Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant.

Considering the circumstances in this case, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.

B. Identical or Confusingly Similar

The Panel acknowledges that the Complainant has established rights in the EUROFINS trade mark in many territories around the world.

Disregarding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name has incorporated the Complainant’s trade mark EUROFINS in its entirety. The Panel further notes that the addition of the country name “china” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the EUROFINS trade marks and in demonstrating that the disputed domain name is identical or confusingly similar to its marks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant asserts that it has not authorized the Respondent to use its trade mark and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

Thus, the Complainant has established its prima facie case with satisfactory evidence.

The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.

As previously noted above, the disputed domain name incorporates the entirety of the Complainant’s EUROFINS trade marks with the country name “china”. Such composition carries a risk of implied affiliation, and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name.

When the Respondent registered the disputed domain name in March 2018, the EUROFINS trade mark was already widely known and directly associated with the Complainant’s activities. Further, the Complainant uses the domain name <eurofins.cn>, registered in 2005, to promote its business in China.

Given the extensive prior use and fame of the EUROFINS marks and the similarity between the disputed domain name and these marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name.

The Respondent has provided no evidence to justify its registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that at the time of the registration of the disputed domain name the Respondent was unaware of the Complainant’s trade marks, or that the incorporation of the Complainant’s trade mark and trade name EUROFINS, was a mere coincidence.

The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights.

The fact that the disputed domain name currently links to a webpage indicating “This site can’t be reached” does not prevent a finding of bad faith under the doctrine of passive holding considering the circumstances of this case. See WIPO Overview 3.0, section 3.3.

Moreover, UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

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, <eurofinschina.com>, be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: November 16, 2021

¹ The Panel notes there appears to be a discrepancy regarding the registrant name provided in the Registrar’s Verification Response dated September 6, 2021. Therefore, the Center requested the Registrar to clarify the registrant name on November 5, 2021. On November 11, 2021, the Registrar confirmed that the registrant is zhaojian (赵建 in Chinese).