The Complainant is Interpacific International Limited of Nassau, Bahamas, represented by Minter Ellison, Australia.
The Respondent is azcinc of Makati, Philippines. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2013. On October 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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. On October 25, 2013, the Center notified the Complainant by email that its Complaint was administratively deficient. On October 28, 2013, the Complainant filed an amended Complaint.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2013. On November 4, 2013, the Respondent sent an informal communication to the Center via email, but did not file a formal Response. On November 22, 2013, the Center notified the Respondent of its default, and informed the parties that the Center would proceed to appoint the Panel.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 26, 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 part of a venerable firm, founded in the Philippines in 1912, that operates in several business sectors throughout the Asia Pacific region. The Complainant owns valid registrations for its ZUELLIG mark in many countries, including the Philippines (Registration No. PH/4/2008/13312; registered April 27, 2009), Taiwan (Registration No. 00036406; registered June 16, 1989) and the United States of America (Registration No. 2,903,981; registered November 16, 2004).
The Respondent registered the disputed domain name in January 2013. The Respondent uses the disputed domain name to host a website that purports to offer gaming website development services. 5. Parties’ Contentions A. Complainant
The Complainant is a member of the Zuellig Group of companies and holds the intellectual property rights for that group. Founded in 1912, the Group is the owner and manager of market-leading businesses across the Asia Pacific region that operate in healthcare, agribusiness and agricultural equipment. The Group generates about USD 12 billion in annual revenue.
In connection with those enterprises, the Complainant has registered the trademark ZUELLIG in many countries, including the Philippines, Taiwan and the United States of America.
The Group also conducts business through websites found at many domain names that contain the ZUELLIG mark, including , , and .
The disputed domain name is confusingly similar to the ZUELLIG trademark. The disputed domain name incorporates the full mark and adds merely the generic term “group” and the gTLD “.com”. The addition of that generic term not only fails to reduce confusion, but actually adds to the confusion between the name and the mark. Moreover, the inclusion of the gTLD should not be taken into account in assessing similarity between the disputed domain name and the trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is unaware of the Respondent and has granted the Respondent no permission to use the ZUELLIG mark. The Complainant’s first use of its trademark predates the registration of the disputed domain name by 90 years.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the purported gaming website development services offered at the Respondent’s website constitute a legitimate business, and the contact links at the site appear to be false. Furthermore, such purported services are not a legitimate noncommercial or fair use of the disputed domain name.
There is no evidence that the Respondent, azcinc, is commonly known as the disputed domain name. According to the Complainant’s investigation, the firm, “azcinc”, likely does not even exist in the Philippines. Moreover, there is no evidence that the company referred to on the Respondent’s website, “Z”, actually exists. The Complainant has searched and found no such company at the listed address and no trademark registrations related to “Zuellig.Inc.” in Taiwan (or the Philippines). Furthermore, upon placing a call, the listed phone number was found not to be in service. Thus, it is very likely that the Respondent is using that company listing on said website as a ruse to imply a legitimate claim to the registration and use of . The Complainant is of the belief that the real registrant of the disputed domain name is an individual named “Ito Osamu”.
The disputed domain name was registered and is being used in bad faith. The Respondent is seeking to exploit and profit from the ZUELLIG trademark. The Respondent, domiciled in the Philippines, must certainly be aware of that mark and its ownership by the Complainant due to reputation. Moreover, the mark is inherently distinctive, so the Respondent could not have selected the disputed domain name for its generic value.
The Respondent is under the onus to make a reasonable search as to possible infringement by use of the disputed domain name. The Respondent is guilty of bad faith registration and use of the disputed domain name because the Respondent: seeks to sell the disputed domain name for a price in excess of its out-of-pocket costs directly related to the name; intends to prevent the Complainant from reflecting its mark in that domain name; and desires to disrupt the Complainant’s business.
Further evidence of the Respondent’s bad faith registration and use of the disputed domain name is the faulty contact information found on the Respondent’s website. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions. On November 4, 2013, the Center received an email communication from the Respondent inquiring as to the nature of the claims asserted against it. 6. Discussion and Findings
Following the parameters set forth in paragraphs 4(a)(i) – (iii) of the Policy, the Complainant may establish its rights to, and the Panel may order a transfer of, the disputed domain name , provided that the Complainant can prove:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Evidence (Complaint Annexes 5-7) put into the record by the Complainant of its valid registrations in the Philippines, Taiwan and the United States for the ZUELLIG mark convinces the Panel that the Complainant has sufficient rights in that mark to satisfy paragraph 4(a)(i) of the Policy. See, AXA SA v. Domains by Proxy, LLC / Axagroup,WIPO Case No. D2012-2523 (“The Panel finds that the Complainant has clearly established its rights in the registered trademarks AXA GROUP SOLUTIONS, GROUPE AXA and AXA as evidenced by the trademark registrations submitted with the Complaint.”); and Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, NAF Claim No. 1217153 (“Complainant evidenced numerous trademark registrations with various governmental authorities for the CANASA mark. These trademark registrations confer rights in the CANASA mark to Complainant pursuant to Policy [paragraph] 4(a)(i).”).
The Panel discerns readily that the disputed domain name is not identical to the Complainant’s ZUELLIG mark because there are added elements in the disputed domain name. However, in the Panel’s view, the mere additions of the common English language term “group” and the generic top-level domain “.com” hardly create much dissimilarity. On the contrary, the Panel believes that the addition of “group” to the complete ZUELLIG mark incorporated into the disputed domain name fails to decrease the confusion between the name and the mark, as “group” describes exactly the various entities connected under the umbrella of the Complainant’s parent holding company. Also, as has been held in many prior Policy cases, the inclusion of a gTLD is irrelevant when examining the similarity between a disputed domain name and an established trademark or service mark. Therefore, the Panel is persuaded that the disputed domain name is confusingly similar to the Complainant’s mark. See, AXA SA, supra (finding to be confusingly similar to the AXA mark, while adding “[…] the Panel finds the addition of the generic term ‘group’ is not sufficient to exclude similarity[…]”); Amanresorts Limited, Amanresorts International Pte Ltd v. Aman Group c/o Snehasish Ghosh,WIPO Case No. D2011-1974 (finding to be confusingly similar to the AMAN mark, and reasoning that “The distinctive feature of the disputed domain name remains the AMAN trademark and the additional descriptive word does not serve to distinguish the disputed domain name from the AMAN trademark”); and FINAXA v. Managing Trustee/MeridianGlobal,WIPO Case No. D2004-0509 (“The gTLD suffixes “.com” and “.net” are of no consequence for the determination of confusing similarity.”).
As so reasoned, the Panel finds that the Complainant has met its burden of proof with respect to Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Though the Complainant bears the ultimate burden of proof pursuant to Policy paragraph 4(a)(ii), the Complainant, by sustaining a prima facie case, can shift to the Respondent the burden of coming forward with clear evidence that it has rights or legitimate interests in the disputed domain name. See, Ustream.TV, Inc. v. Vertical Axis, IncWIPO Case No. D2008-0598 (“[…] it is the consensus view of WIPO UDRP panels that the threshold for the complainant to prove a lack of rights or legitimate interests is low, and that, once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent.”); and Telex Communications, Inc. v. Jinzheng Net, NAF Claim No. 833071 (“Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii).”). The Complainant has made its prima facie case through its proof that the disputed domain name is confusingly similar to its ZUELLIG mark and its declaration that the Respondent has not been granted permission to use that mark.
Failing to file a Response beyond an informal communication inquiring as to the nature of the claims asserted against it, the Respondent has given the Panel little with which to work in rendering a finding on the Respondent’s behalf regarding this issue. Moreover, in view of the Respondent’s default, the Panel is inclined to believe all of the Complainant’s reasonable contentions that do not conflict with other evidence in the Record. See, Hyatt Corporation v. Sinichi Akiyama, NAF Claim No. 839408 (“In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations…”); and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“[…] the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.”).
Proceeding to examine the record for evidence that paragraph 4(c) of the Policy might apply in the Respondent’s favor, the Panel notices immediately that subparagraph 4(c)(iii), calling for legitimate noncommercial or fair use of the disputed domain name, is inapplicable because the Respondent’s website purports to offer Internet users gaming website development services – ostensibly a commercial endeavor. While that offer might lead the Panel to conclude that the requirements of subparagraph 4(c)(i) have been met by the Respondent, the Complainant has asserted without contradiction that the services so offered are not actually made available when accessing said website. Ergo, the Panel is compelled to conclude that the Respondent is not using the disputed domain name for a “bona fide offering of goods or services”. Since there is also no evidence elsewhere in the record that the Respondent is making “demonstrable preparations” to use the name in that manner, the Panel must find that subparagraph 4(c)(i) is inapplicable to this case as well.
With respect to subparagraph 4(c)(ii), the Panel dismisses immediately the notion that the Respondent, nominally “azcinc”, has been commonly known as the disputed domain name as there is no alphanumeric or phonetic correspondence. There is evidence (Complaint Annex 13) that a company named “Z” appears on the website attached to the disputed domain name, with the implication that that entity is somehow connected with the Respondent. However, the Complainant has submitted compelling evidence (Complaint Annexes 14 and 15) that “Z” is actually a fictional creation, and not a real company that does business or has any trademarks. Again, the Panel is inclined to accept the Complainant’s contentions in this regard and determines that the Respondent is not associated with such a company. Thus, subparagraph 4(c)(ii) fails to apply to this case. Because the Panel cannot detect any evidence in the record that yields a rebuttal to the Complainant’s prima facie case, the Panel concludes that that case is decisive as to this matter.
As so reasoned, the Panel rules that the Complainant has met its burden of proof with respect to Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
In paragraph 4(b), the Policy lays out four circumstances giving rise to a finding of bad faith registration and use of a disputed domain name, as follows:
(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 [the respondent’s] 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 [the respondent’s] website or location.
The Complainant contends that the Respondent has run afoul of the first three criteria listed above, but the Panel cannot find much support for that contention in the evidence as presented. There is no specific evidence that the Respondent has sought to sell the disputed domain name, that the Respondent has engaged in a pattern of illegitimate domain name registration, or that the Respondent’s primary intent in registering the name was to disrupt the Complainant’s business (i.e., there is no showing of lost revenue or siphoning of potential customers). Moreover, with respect to the last criterion included in paragraph 4(b) of the Policy, the Complainant has itself averred that the Respondent’s website is dysfunctional, so the Panel sees no opportunity to extract commercial gain from it.
However, the criteria cited in paragraph 4(b) of the Policy are not meant to be an exhaustive list of reasons supporting a determination of bad faith registration and use of a disputed domain name under the Policy. See, CytoSport Inc. v. MarketingExperts, Inc.,WIPO Case No. D2008-1111 (“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 from which such bad faith may be found.”); and Bloomberg L.P. v. Future Movie Name, NAF Claim No. 139664 (“[…] paragraph 4(b) is not an exhaustive list, and other circumstances may give rise to a finding of bad faith.”).
In this case, the ZUELLIG mark is so well-known in the Philippines that the Respondent, apparently a resident of that nation, should have been well aware of its reputation and ownership. Also, because the mark is fanciful and arbitrary, the Respondent cannot possibly argue that it registered the disputed domain name for its value as a common or dictionary word. Moreover, the Panel accepts the Complainant’s non-countered claim that the contact information placed on the website located at the disputed domain name is bogus, leading the Panel to believe that Respondent is engaged in some level of deception, which smacks of bad faith. Finally, the Respondent’s faulty website, while possibly not revenue generating, does strike the Panel as an intentional mal-use of the ZUELLIG mark, to which the disputed domain name was found above to be confusingly similar. Taking all of these circumstances into account, the Panel finds that the Respondent did indeed register and is using the disputed domain name in bad faith. See, Klein-Becker IP Holdings, LLC v. Client Domain,WIPO Case No. D2006-1476 (“When determining whether the Respondent registered and used the […] Domain Name in bad faith, it is proper for the Panel to consider the totality of circumstances surrounding the registration and dispute in general.”); and Bloomberg L.P., supra (“The Panel is permitted to consider the ‘totality of circumstances’ surrounding the registration and use of the domain name in determining if bad faith exists.”).
As so reasoned, the Panel rules that the Complainant has met its burden of proof with respect to Policy paragraph 4(a)(iii). 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.
Dennis A. Foster
Sole Panelist
Date: December 10, 2013
Full & Egal Universal Law Academy