The Complainant is Zambon S.p.A., Italy, represented by Studio Barbero, Italy.
The Respondent is 余杰浩, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2020. On March 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2020, 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 China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”). In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceeding commenced on April 1, 2020. In accordance with the Rules, Article 17 and 49, the due date for Response was April 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 29, 2020. 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, Article 29. 4. Factual Background The Complainant is a company headquartered in Bresso, Italy, founded in 1906 and operating in the pharmaceutical and chemical industry. The Complainant currently has operations in Europe, North America, South America, and Asia, and has nearly 3,000 employees throughout the world and has production plants in Italy, Switzerland, France, and China. In particular, in 1998, the Complainant established Hainan Zambon Pharmaceutical Co., Ltd as its wholly-owned pharmaceutical subsidiary in China. The Complainant chose Xadago as its brand name to market the pharmaceutical compound safinamide, which it commercializes under this name. The Complainant owns a trademark portfolio protecting the mark XADAGO, including, amongst others, the following trademark registrations: International trademark registration number 1155073, registered on January 30, 2013, and designating, amongst others Australia; European Union trademark registration number 11229804, registered on June 29, 2014; and Chinese trademark registration number G1155073H, registered on September 13, 2017. The disputed domain name was registered on March 26, 2017, and is linked to an active website, which offers the disputed domain name for sale. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical to its trademark for XADAGO, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant essentially claims that its trademark is famous and well regarded in the pharmaceutical sector, and provides evidence of its marketing and investment materials, including the contents of its official website. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active webpage where the disputed domain name is offered for sale. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes use in bad faith. The Complainant also claims that the Respondent has engaged in a pattern of trademark-abusive registrations of domain names, and provides reverse WhoIs results showing a list of domain names registered by the Respondent as well as media articles involving the Respondent. The Complainant also provides evidence that it sent the Respondent several cease-and-desist letters, to which the Respondent did not respond. 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. Preliminary Issue: Language of the Proceeding Pursuant to Article 8 of the Rules, unless otherwise agreed by the Parties, or determined by the Panel under exceptional circumstances, the language of the administrative proceeding shall be Chinese. The Complainant states in its Complaint that the language of the Registration Agreement might be Chinese, although an English version could be found on the Registrar’s website. Nevertheless, the Complainant filed its Complaint in English, including a motivated request that the language of the proceeding be English. On April 1, 2020, the Center formally notified the Respondent in Chinese and English of the Complaint, including about the language of the Complaint, and about the Respondent’s right to reply in either Chinese or English. The Center also indicated that it would appoint a Panel who would be familiar with both Chinese and English. Nevertheless, the Respondent did not respond regarding the language of the proceeding and also did not respond on the merits of the proceeding. The Panel has carefully considered all elements of this case, in particular, the Complainant's request that the language of the proceeding be English, the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); the evidence produced by the Complainant which proves that the Respondent sent two emails in English regarding the sale of the disputed domain name, from which the Panel deducts that the Respondent is able to understand and communicate in English; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of these exceptional circumstances, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name; and (iii) the Respondent has registered or has been using the disputed domain name in bad faith. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar to the Complainant’s name or mark in which the Complainant has civil rights or interests The Panel finds that the Complainant has shown that it has valid rights in the sign XADAGO based on its intensive use and registration of the same as a trademark in several jurisdictions. Moreover, as to identity or confusing similarity, the disputed domain name consists of the Complainant’s registered trademark XADAGO in its entirety, combined with the Top-Level Domain (“TLD”) “.com.cn”. The applicable TLD in a domain name (here “.com.cn”) is generally viewed as a standard registration requirement, and can therefore be disregarded by the Panel under the first element test. Accordingly, the Panel rules that the disputed domain name is identical to the Complainant's trademarks and the first element required by the Policy is fulfilled. B. Rights or Legitimate Interests The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademark. To the contrary, the website linked to the disputed domain name currently displays an offer for sale of the disputed domain name, which cannot be considered as use of the disputed domain name, or a corresponding name, in connection with a bona fide offering of goods or services. Furthermore, the Respondent is not commonly known by the disputed domain name. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by Article 10 of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy. C. Registered or Used in Bad Faith The registration of the disputed domain name, which is identical to the Complainant’s trademarks, is clearly intended to mislead and divert consumers away from the Complainant’s official website, to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark, including in the Respondent’s home jurisdiction China, the Panel holds that the registration of the disputed domain name was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in XADAGO and used these extensively, including in the Respondent’s home jurisdiction, China. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name. As to use of the disputed domain name in bad faith by the Respondent, the website linked to the disputed domain name used to display a contact form for purchasing the disputed domain name and currently also displays a message that “This domain is for sale”. The Complainant also provides evidence that the Respondent sent two emails regarding the sale of the disputed domain name for the initial amount of USD 10,000 (ten thousand United States dollars). This leads the Panel to conclude that the Respondent is using the disputed domain name to try to sell it to the Complainant who is the owner of the trademark, and to obtain unjustified benefits, which is direct evidence of the bad faith of the Respondent under Article 9 of the Policy. Moreover, the Panel has reviewed the evidence regarding reverse WhoIs search results listing the domain names registered by the Respondent, as well as media reports regarding the activities by the Respondent, as submitted by the Complainant, from which the Panel deducts that the Respondent has engaged in a pattern of trademark-abusive domain name registrations. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith. Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy. 7. Decision For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name Deanna Wong Wai Man
Sole Panelist
Date: May 7, 2020
Full & Egal Universal Law Academy