The Complainant is Zambon S.p.A. of Bresso, Italy, represented by Studio Barbero, Italy.
The Respondent is Fernando Castillo of Marbella, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2013. On May 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2013, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2013.
The Center appointed Cherise Valles as the sole panelist in this matter on June 28, 2013. 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 owner of the trademark ZAMBON which the Complainant uses in connection with pharmaceutical and chemical products. It operates in Europe, North and South America, with more than 2,600 employees in 15 different countries and production plants in Italy, Switzerland, France and China, with consolidated revenues of EUR 562 million as of December 31, 2011.
The disputed domain name was registered on June 30, 2010.
At the time of filing of the Complaint, the website at the disputed domain name included pay-per-click links. However, at the time of the notification of the Complaint by the Center, such website content changed into “Server Error. 404 - File or directory not found. The resource you are looking for might have been removed, had its name changed, or is temporarily unavailable.” 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on May 16, 2013, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, ZAMBON, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
In pre-proceedings communications, the Respondent responded to an email from a web agency instructed by the Complainant asking about the availability and conditions of assigning the disputed domain name, stating that he was willing to sell it for USD 3,000. However, he has not filed a formal response to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the ZAMBON mark. The mark has been used in commerce since 1906, when Magazzino Medicinali Zambon opened for business in Vicenza distributing chemical products, drugs and colonial products. The Complainant has submitted evidence in Annexes 3.1 to 3.7 to the Complaint demonstrating that it is the owner of multiple trademark registrations in Panama and internationally for the mark ZAMBON including the following:
- Panamanian trademark registration No. 68872-01 for ZAMBON, registered on June 27, 1995 in class 1; and
- International trademark registration No. 226434 for ZAMBON, registered on December 8, 1959 in classes 1, 3, 5, 10, 31 and 33.
The Panel finds that the Complainant’s marks are distinctive and that the disputed domain name, , is confusingly similar to the Complainant’s mark. The Panel notes that the disputed domain name entirely incorporates the Complainant’s trademark ZAMBON. The mere addition of the generic word “home” does not per se render the said disputed domain name distinctive. See, among others, Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424.
The descriptive term “home” not only does not distinguish the disputed domain name, but it is also likely to increase the confusing similarity as it may be interpreted as the start page or main web page of a website operated by the Complainant. See Dr. Ing. h.c. F. Porsche v. Lyn Davis,WIPO Case No. D2006-1098. Several URDP decisions state that confusing similarity, for purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word (see Société des Hôtels Méridien v. Mr. Cuneyt Ozarici,WIPO Case No. D2005-0201; Accor, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517).
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant submits that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable and distinctive ZAMBON trademark in any way or manner. The Respondent has not demonstrated that it has ever made any legitimate offering of goods or services under the Complainant’s ZAMBON trademark. The Respondent simply utilizes a domain name that is very similar to the Complainant’s mark, with the clear intent to confuse Internet users and improperly redirect traffic. See, e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017.
Furthermore, there is no evidence on record that the Respondent has been commonly known by the disputed domain name or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. 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 or 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 trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The Complainant submits that the Respondent is intentionally attempting to divert, for commercial gain, Internet users to a website containing offers from the Complainant’s competitors in the medical and pharmaceutical field. Some of the sponsored links published on the web site are related to this field and also contain the trademark ZAMBON. By clicking for instance on “Zambon” on the home page, Internet users are redirected to a different pay-per-click web page with links to third web sites related to services that potentially compete with services offered by the Complainant. By clicking on “Medical Research Job”, Internet users are redirected to a second pay-per-click web page with sponsored links mainly related to job research in the medical field. This creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the websites to which it redirects.
The Complainant further submits the registration and use of a domain name to redirect Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. Where a respondent is found to be diverting users to its website (and/or the websites of associated third parties) to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized by UDRP panels as constituting bad faith under the Policy. See YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013 (finding bad faith where respondent chooses a domain name similar to the complainant’s mark for a site which offers services similar to the complainant); E v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of…a company which directly competes with the Complainant, constitutes bad faith registration and use”).
The Complainant also submits that the use of the disputed domain name, which allows accessing to the websites of its competitors, causes damage to the Complainant, due to the fact that the Complainant’s current clients are likely to be misled or because it may lose potential clients. See Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500.
Furthermore, considering that the disputed domain name is almost identical to the Complainant’s trademark, the Panel finds that the Respondent registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s trademarks and thus to profit from its reputation. The registration without authorization of a domain name that is identical to a complainant’s famous mark is evidence of bad faith, and the knowledge of the mark at the time of registration of the domain name suggests bad faith. See PepsiCo, Inc. v. Paul J. Swider,WIPO Case No. D2002-0561. Moreover, the Respondent has engaged in different registrations of domain names identical to registered trademarks, also in the pharmaceutical field, including , , , , and others listed in Annex 5.3 to the Complaint.
Such conduct where the Respondent sought or realized commercial gain indicates the Respondent’s bad faith, as stated in many previous UDRP decisions such as Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690, Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413.
The Respondent also tried to sell the disputed domain name for USD 3,000, which is an amount in excess of the out-of-pocket costs directly related to the domain name. See Benetton Group SpA v Domain for Sale,WIPO Case No. D2001-1498.
The Complainant further submits that the Respondent appears to have utilized a WhoIs protection service for the registration of the disputed domain name. The Respondent has therefore intentionally hidden its true identity and contact information. Per The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”,WIPO Case No. D2008-0156, “the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’. ” In this case, the Panel draws a negative inference from the Respondent’s use of the privacy registration service.
The Panel also holds that failure to respond to a cease and desist letter can be additional evidence of badfaith. See, e.g., Bombril Mercosul S.A., Bombril S.A. v. Av. Madrid, 85, ITnet Consulting Business SL, WIPO Case No. D2009-0369.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Date: July 11, 2013
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