Complainant is Zambon S.p.A., Italy, represented by Studio Barbero, Italy.
Respondent is Wills Sylace, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 8, 2021. The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 21, 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 More than one hundred years after its inception, Complainant is a multinational pharmaceutical company that is present in 87 countries and has nearly three thousand employees worldwide. It has an integrated organizational structure: Zambon Company SpA is the holding company of the Zambon Group, made up of the fine chemicals division Zach System, the pharmaceutical multinational Zambon SpA and Z-Cube, the corporate venture of the Zambon Group, which achieved the launch of start-up ventures PharmEste, SuppreMol GmbH, and ProtAffin Biotechnologie AG. Complainant owns a number of worldwide trademark registrations for the ZAMBON Mark (or “the Mark”) and variations of it, including International Trademark Registration Nos. 509634 and 620243 for ZAMBON registered on January 26, 1987 and June 20, 1994 respectively. Complainant also owns various domain names with which it does business on the Internet integrating the Mark and variations of it such as: Respondent registered the Domain Name on February 18, 2020. The Domain Name does not point to an active website. On June 29, 2020, Complainant sent a cease and desist letter to Respondent, requesting the transfer of the Domain Name to it. Respondent did not reply to the correspondence so Complainant sent a reminder communication on July 16, 2020. Respondent did not reply to that communication so on August 12, 2020, Complainant sent an email to the Registrar, notifying it about the Domain Name registration and highlighting the possible fraudulent use of the Domain Name, based on how the MX records associated with the Domain Name had been configured. Complainant requested the suspension of the Domain Name. That same day, the Registrar sent an automatically generated response, indicating that complaints should be submitted through the abuse-report form available on its website. Due to technical issues with the Registrar’s website, Complainant was unable to submit their request online. On October 28, 2020, Complainant again contacted the Registrar via email, informing it that the abuse report form on its website was not working, reiterating the request for a suspension, and requesting a reply on the merits. In absence of a response from the Registrar on December 4, 2020, Complainant submitted an additional abuse report through the Registrar’s website, which was delivered. As a result, on December 5, 2020, the Registrar sent via email a communication to Complainant, confirming the suspension of the Domain Name. The status of the Domain Name in the WhoIs records is indicated as “client Hold,” and the suspension is reflected also in the nameservers. 5. Parties’ Contentions A. Complainant The Domain Name is confusingly similar to the ZAMBON Mark because it entirely incorporates the Mark with the addition of the term “qroup” – which is a misspelling of “group” with the intent to form a Domain Name that looks like “zambongroup.com”. The addition of the misspelled term “group” is not sufficient to prevent a finding of confusing similarity, since the term “group” is commonly used in business to identify a holding company which usually consists of a number of legal entities which are controlled by a parent company. Complainant and its subsidiary companies form a multinational group and the obvious inference to be drawn from the combination of those elements is that the addition of the term “qroup” – visually nearly identical to “group” – to the ZAMBON Mark does not avoid confusion, but rather reaffirms it. Adding the country-code Top-Level Domain “.com” is instrumental to the use on the Internet and therefore the Domain Name is confusingly similar to the Mark. Respondent is not a licensee, authorized agent of Complainant, or otherwise authorized to use the ZAMBON Mark. Respondent is not commonly known by the Domain Name as an individual, business, or other organization, and “zambon” is not its family name, which, according to the WhoIs database, is “Wills Sylace”. Moreover, the word “zambon” is not an ordinary word in the English language and does not have a meaning in any other language. Since registering the Domain Name, Respondent has not pointed the Domain Name to an active website. By incorporating in the Domain Name the famous ZAMBON Mark, Respondent cannot have any possible right or legitimate interests in the Domain Name. Before the suspension of the Domain Name, although the corresponding website was inactive, Respondent had configured the following MX records for the Domain Name: 100 us2.mx2.mailhostbox.com 208.91.199.202 (no glue); 100 us2.mx3.mailhostbox.com 208.91.199.226 (no glue); and 100 us2.mx1.mailhostbox.com 208.91.199.205 (no glue). Doing this, considering that the Domain Name reproduces the ZAMBON Mark in its entirety, leads to the conclusion that the Domain Name was registered most likely for use in connection with fraudulent purposes – sending fraudulent emails pretending to come from Complainant. Furthermore, Respondent’s email address listed in the WhoIs database in connection with the Domain Name does not correspond to Respondent’s name (which is “Wills Sylace”), rather it is a third party banking institution. Furthermore, Respondent did not reply to the cease and desist letters sent by Complainant. In light of the prior registration and extensive use of the ZAMBON Mark, and the existence of Complainant’s domain name Additional evidence of bad faith are: (1) Respondent registered the Domain Name by using inaccurate contact information because the postal address indicated in the WhoIs is clearly incomplete; and (2) Respondent’s email address has been apparently associated with several additional domain name registrations consisting of misspellings of third-party distinctive trademarks and corresponding domain names. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar There is no dispute over Complainant’s rights in the ZAMBON Mark as evidenced by two of Complainant’s trademark registrations mentioned above. The Domain Name incorporates in its entirety Complainant’s ZAMBON Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Berlitz Investment Corporation v. Marcus Santamaria,WIPO Case No. D2006-1082. Adding the misspelled word “qroup” (for “group”) and the generic Top-Level Domain (“gTLD”) “.com” after the Mark does not prevent a finding of confusion similarity. See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138; See also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). With regard to the gTLD “.com” in the Domain Name, it is common practice under the Policy to disregard gTLDs such as the “.com”, “.net”, and “.org” for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. kara tara,WIPO Case No. D2010-1184. For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests On the record evidence, it is uncontested that Respondent has no rights or legitimate interests in the ZAMBON Mark. Complainant maintains that Respondent is not a licensee or authorized agent, nor is Respondent authorized to use the ZAMBON Mark for any purpose. Furthermore, upon information and belief, Complainant represents that Respondent is not commonly known by the Domain Name as an individual, business, or other organization, and “Zambon” is not its family name, which, according to the WhoIs database, is “Wills Sylace”. Moreover, Complainant points out that the word “zambon” is not an ordinary word in English and does not have a meaning in any other language. Complainant also argues that Respondent has not provided any evidence of his use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute. In this regard, Complainant maintains that Respondent has not pointed the Domain Name to an active website as long as Respondent has owned the Domain Name. And Complainant points out that before the Domain Name was suspended, MX records were configured in connection with the Domain Name such that Respondent could have used the Domain Name for sending fraudulent emails. Complainant argues that this possibility is strengthened by the fact that Respondent’s email address listed in the WhoIs database does not correspond to Respondent’s name (which is “Wills Sylace”) and it incorporates in its entirety to the name of a banking institution. Furthermore, the composition of the Domain Name, comprising the Mark and a misspelling of the term “group”, carries a risk of implied affiliation with Complainant and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview 3.0, section 2.5.1. Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Respondent registered the Domain Name on February 18, 2020, scores of years after Complainant began using the Mark and obtained the aforementioned trademark registrations. Given Complainant’s widespread and long-standing use of the Mark worldwide, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the fact that the Domain Name: (1) was formed by adding the word “group” (misspelled) to Complainant’s well-known Mark. As indicated above, “group” is a widely-used term in business and it applies to Complainant’s organizational structure here – Complainant refers to itself as the “Zambon Group”; (2) is exactly the same as one of Complainant’s registered domain name There is also no evidence Respondent actually used or contemplated a good faith use of the Domain Name. Respondent is passively holding a Domain Name that incorporates Complainant’s well-known ZAMBON Mark. There is no plausible reason for Respondent’s selection of a confusingly similar Domain Name in which Respondent has no rights or legitimate interests other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”). Furthermore, the evidence on the record provided by Complainant shows that Respondent set up MX-records for the Domain Name, indicating that the Domain Name may be being used for fraudulent email communications. Given the Respondent’s lack of rights or legitimate interests in the Domain Name and the confusing similarity of the Domain Name with Complainant’s ZAMBON Mark, any use of the Domain Name by Respondent for email communication would carry a risk of implied affiliation with Complainant and be a use in bad faith. Furthermore, given Complainant’s substantial reputation in the Mark and Respondent’s failure to submit a Response to the Complaint, it is not possible to conceive of any good faith use to which Respondent could put the Domain Name. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name Harrie R. Samaras
Sole Panelist
Date: January 27, 2021
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