ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Zambon S.p.A. v. Mei Wang Case No. D2024-2066 1. The Parties The Complainant is Zambon S.p.A., Italy, represented by Studio Barbero S.p.A., Italy. The Respondent is Mei Wang, China. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2024. On May 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2024, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2024. The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 21, 2024. 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.
page 2 4. Factual Background The Complainant’s pharmaceutical business was founded in 1906, with its first retail store in Vincenza, Italy. Currently headquartered in Bresso (near Milan), the Complainant now operates across four continents - Europe, North and South America and Asia - with nearly three thousand employees throughout the world and manufacturing facilities in Italy, Brazil, Switzerland, France and China. Its subsidiary Hainan Zambon Pharmaceutical Co., Ltd is a wholly-owned pharmaceutical company established in China by Zambon Group in 1998. Its management center in China is in Shanghai and other offices are located in Beijing, Guangzhou, Jinan and other major Chinese cities, with nearly 500 employees located in 24 provinces and 45 cities across the country. The Complainant has a website dedicated to China at “www.zambon.com.cn”. The Complainant is the owner of a number of national and international trademark registrations around the world for ZAMBON (or variations thereof), including the following: - International Trademark Registration No. 509634 for ZAMBON (word mark), registered on January 26, 1987; - International Trademark Registration No. 620243 for ZAMBON (word mark), registered on June 20, 1994, in classes 1, 3, 5, 10, 16, 31 and 34, designating, amongst others, European Union and China (Annex 3.2 of the Complaint); - International Trademark Registration No. 849410 for ZAMBON (figurative mark), registered on December 28, 2004, in class 5, designating, amongst others, China. With respect to domain names, the Complainant has registered multiple ZAMBON-formative domain names, dating back as far as December 6, 1999, for its website at “www.zambon.com” which is the Complainant’s primary web portal for global promotion of ZAMBON products. The disputed domain name was registered by the Respondent (who apparently resides in China) on December 15, 2023, and was originally redirected to the webpage “dan.com/buy-domain/zambon.shop” where it was offered for sale for USD 1450. The Complainant’s representative sent an email communication to the “support” email address at “www.dan.com”, requesting the deletion of the disputed domain name from their platform. On January 31, 2024, the Complainant’s representative received a reply from the previously mentioned email address, which confirmed that the disputed domain name was removed from the platform. However, the Complainant subsequently ascertained that the Respondent had begun to use the service of the domain marketplace at “www.sedo.com”, where the disputed domain name was offered for sale for the amount of USD 1450. Email correspondence was exchanged between the Complainant’s representative and the Respondent, but no resolution of the dispute was reached. At the time of the drafting of the Complaint, the disputed domain name was redirected to a pay-per-click page with commercial links, also related to the pharmaceutical field, i.e. the sector in which the Complainant is active. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the Respondent has engaged in a pattern of bad faith conduct, by wrongfully registering at least three other domain names which are confusingly similar to well-known trademarks, and which have been subject to UDRP remedies.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark 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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Complainant’s evidence establishes that its ZAMBON mark is well-known internationally, including in China. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. As to the applicable Top-Level Domain (“TLD”) “.shop”, many decisions as well as WIPO Overview 3.0, Section 1.11.1, conclude that the Top-Level Domain is merely instrumental to Internet use and shall be disregarded for the determination of confusing similarity. See L’Oréal v. Andrey Osipov, WIPO Case No. D2021-0531: “The inclusion of the word ‘shop’ as the TLD in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s … mark”. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Complainant has established a plausible prima facie case by bringing forward evidence and submissions on the following points: (1) the Respondent has never been licensed or otherwise authorized by the Complainant to use the ZAMBON mark; (2) the disputed domain name prominently features and
page 4 reproduces the distinctive ZAMBON mark; (3) the registration of a domain name incorporating another’s famous mark does not confer or create any rights or legitimate interests in the disputed domain name (see PRL USA Holdings, Inc, v. Vivienne Westwood/Contact Privacy Inc. Customer 016347680, WIPO Case No. D2011-1292); and (4) hosting a parked page with hyperlinks to competing third party websites does not evidence rights or legitimate interests in that domain name (see Les Parfumeries Fragonard v. Thanh Van Pham, WIPO Case No. D2020-2920). Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel finds that under paragraph 4(b)(ii) of the Policy, the Respondent has engaged in a pattern of conduct designed to prevent the trademark owner from reflecting its mark in a corresponding domain name, based on the following evidence provided by the Complainant: - The Respondent has been subject to three different proceedings in recent years involving abusive registrations, namely Syngenta Participations AG v, Mei Wang, WIPO Case No. D2024-0731; Sopra Steria Group v. Mei Wang, WIPO Case No. D2024-0606; and Landis & Gyr AG v. Mei Wang, WIPO Case No. D2023-1770; - In all three cases, the Respondent had offered the disputed domain names for the same price (USD 1450), through the same “www.dan.com” marketplace; and - In all three cases, UDRP decisions were rendered against the Respondent. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Having reviewed the available record, the Panel notes: (i) the distinctiveness and long-standing reputation of the Complainant’s trademark, as well as its status as a well-known mark; (ii) the composition of the disputed domain name, namely the use of the ZAMBON mark in its entirety; (iii) the high likelihood that the Respondent, presumably located in China, was fully aware of, and was targeting, the Complainant’s rights in its mark; (iv) the use of the Respondent’s parking page to provide links to websites promoting pharmaceutical products competitive with those of the Complainant; and (v) the failure of the Respondent to offer any explanation or justification for its choice of the disputed domain name. The Panel finds that in the circumstances of this case the disputed domain name was registered and is being used in bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Christopher J. Pibus/ Christopher J. Pibus Sole Panelist Date: July 5, 2024
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