WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zentiva Group, a.s. v. Wangxuesong, wang xuesong

Case No. DCC2016-0002

1. The Parties

The Complainant is Zentiva Group, a.s. of Prague, Czech Republic, represented by Selarl Marchais & Associés, France.

The Respondent is Wangxuesong, wang xuesong of Chongqing, China.

2. The Domain Name and Registrar

The disputed domain name <zentiva.cc> is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2016. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 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.

On January 19, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 22, 2016, 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 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 of the Complaint in both Chinese and English, and the proceeding commenced on January 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2016.

The Center appointed Sok Ling MOI as the sole panelist in this matter on February 18, 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.

4. Factual Background

The Complainant is the generics business arm for the Sanofi Group, a French multinational pharmaceutical company headquartered in Paris. The Sanofi Group is one of the largest multinational pharmaceutical companies in the world by prescription sales.

The Complainant is one of the largest producers of pharmaceuticals, by volume, in Europe. Its key product groups are anti-invectives and medicines for cardiovascular disease, pain, central nervous system disorders, female healthcare and gastrointestinal disease. The Complainant operates in 50 markets and has three key production plants in central and eastern Europe, employing more than 2,000 people.

The Complainant is the owner of the following trade mark registrations:

The Complainant also owns the following domain name registrations:

The disputed domain name <zentiva.cc> was registered on September 23, 2015, long after the Complainant has registered the trade mark ZENTIVA in China. Although the Complainant provided evidence showing that the disputed domain name resolved to a parking page containing an offer to sell the domain name for an agreed price, as of the date of this decision, the disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Sanofi Group is a major player on the global pharmaceutical market and has a worldwide reputation. The Complainant is a key element of the Sanofi Group’s strategy, delivering affordable and trusted medicines to patients and healthcare providers across Europe. The trade mark ZENTIVA has been considered to be a well-known mark by previous UDRP panels.

A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The trade mark ZENTIVA does not have any particular meaning and is therefore highly distinctive. The disputed domain name is identical with or at least confusingly similar to the Complainant’s registered trade marks ZENTIVA.

The addition of the country code Top-Level Domain (“ccTLD”) “.cc” is insufficient to alleviate the likelihood of confusion, but instead increases the inherent risk of confusion. The disputed domain name may be perceived as one of the Complainant’s websites designed to provide details on ZENTIVA’s activities in the Coco Islands.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Respondent’s name “Wangxuesong” does not bear any resemblance to the word “zentiva”.

The Complainant has never licensed or otherwise authorized the Respondent to use its trade mark ZENTIVA or to register any domain name incorporating the trade mark ZENTIVA. There is no relationship whatsoever between the parties.

The Respondent is not making legitimate noncommercial or fair use of the disputed domain name, nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a parking website which offered it for sale. The Respondent has clearly sought to profit from using a domain name that adopts the Complainant’s trade mark, by offering to sell to the highest bidder. This does not constitute a bona fide offering of goods or services.

A3. The disputed domain name was registered and is being used in bad faith:

The Complainant and the Sanofi Group enjoy a worldwide reputation in their SANOFI and ZENTIVA trade marks. Given the fame and distinctive nature of the ZENTIVA trade mark, the Respondent’s choice of domain name cannot be a mere coincidence but instead reflects opportunistic bad faith. The Respondent has at least constructive, if not actual, notice of the Complainant and its trade mark when it registered the disputed domain name. Previous UDRP panels have decided that bad faith registration may be inferred from the registration of a well-known mark.

The Respondent had registered the disputed domain name for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion and/or association with the Complainant, in order to gain a commercial benefit or to disrupt the Complainant’s business. It is clear that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the highest bidder for valuable consideration. The passive holding combined with an offer to sell the domain name to the highest bidder is likely to cause irreparable prejudice to the Complainant’s reputation and goodwill as Internet users may be led to believe that the Complainant is out of business.

The Respondent’s failure to respond to the Complainant’s cease and desist letter sent via email on December 18, 2015 reinforces the inference of bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain name 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.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) The disputed domain name <zentiva.cc> is registered in Latin characters, rather than Chinese script;

(b) According to the evidence submitted by the Complainant, the website to which the disputed domain name resolved was partially in English words, for example “This domain name (zentiva.cc) is for sale”, “welcome to zentiva.cc” and “All Rights Reserved”;

(c) A reverse WhoIs search conducted independently in March 2016 by the Panel using the Respondent’s email address shows that the Respondent has registered several other domain names consisting of Latin characters, for example <freedomlab.net>, <flybear.com>, <dedicatedtv.com>, <windgenerator.net> and <ihospital.net>;

(d) the Center has notified the Respondent of the proceeding in both Chinese and English;

(e) The Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and

(f) the Center informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds 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 his or her 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 re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Discussion and Findings

Paragraph 4(a) of the Policy directs that the 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 registered by the Respondent 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 evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in ZENTIVA by virtue of its use and registration worldwide of the same as a trade mark. The disputed domain name incorporates the Complainant’s trade mark ZENTIVA in its entirety. The addition of the ccTLD “.cc” does not serve to distinguish the disputed domain name from the Complainant’s trade mark, and may be disregarded for the purpose of the similarity assessment.

Consequently, the Panel finds that the disputed domain name is identical with the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the 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), 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 caseshowing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has confirmed that the Respondent is not in any way related to or affiliated with the Complainant or otherwise authorized or licensed to use the ZENTIVA trade mark or to seek registration of any domain name incorporating the trade mark. The disputed domain name resolved to a parking page listing the disputed domain name for sale. In the Panel’s opinion, this is sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence to rebut the presumption.

The Respondent has however failed to respond. The Panel therefore finds that the Respondent has failed to establish its rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

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 registrations 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 websites or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product.

The Complainant and its trade mark ZENTIVA enjoy a cross-border reputation. A cursory Internet search would have disclosed the ZENTIVA trade mark and its extensive use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant’s ZENTIVA trade marks and related domain names when it registered the disputed domain name.

The Respondent has also failed to provide any evidence of bona fide use of the disputed domain name. Instead, the disputed domain name resolved to a parking page listing the disputed domain name for sale. This suggests that the Respondent had registered the disputed domain name primarily for the purpose of selling it for valuable consideration and/or to disrupt the Complainant’s business.

The Panel notes that as of the date of this decision, the disputed domain name does not resolve to any active website. 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 the respondent is acting in bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2). The Panel finds the current passive holding of the disputed domain name to be further evidence of bad faith.

The Panel finds therefore that, taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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, <zentiva.cc>, be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: March 5, 2016