The Complainant is Zambon S.p.A., Italy, represented by Studio Barbero, Italy.
The Respondent is Alpha Media, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. On September 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 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 September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2020. The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 19, 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, paragraph 7. 4. Factual Background The Complainant is a multinational pharmaceutical company established in 1906 with its headquarter in Italy. It is currently present in 87 countries – including Colombia – and with product plants in Italy, Brazil, Switzerland, France, and China. The Complainant extended its activities to India (where the Respondent is based) by establishing Zambon India. The Complainant is the registered owner of numerous registered verbal trademarks worldwide consisting of the term ZAMBON, amongst others the following trademarks: - International Trademark Registration No. 509634 for ZAMBON (word mark), registered on January 26, 1987, for goods in in class 5; - International Trademark Registration No. 620243 for ZAMBON (word mark), registered on June 20, 1994, for goods in classes 1, 3, 5, 10, 16, 31, and 34; - Indian Trademark Application No. 595913 for ZAMBON (word mark), filed on April 30, 1993, for goods in class 1. According to the Registrar’s verification response, the Respondent registered the disputed domain name on September 19, 2017. It results from the undisputed evidence provided by the Complainant that the disputed domain name currently resolves to a commercial website promoting anabolic and androgenic steroids not originating from the Complainant, using a logo which is similar to the one registered and used by the Complainant. The Complainant s representative sent a cease and desist letter to the Respondent by email, on December 9, 2019, requesting the immediate cease of any use of, and the transfer, of the Domain Name to the Complainant. In absence of a reply, a reminder was sent on January 28, 2020, ascertaining however that the Respondent’s email address indicated on the website “www.zambonpharma.co” was not existent. Therefore, additional reminders were addressed, on April 15, 2020, by email also to the Registrar’s email address and via the contact form provided on the website “www.zambonpharma.co”, but, again, no reply was received. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is confusingly similar to the registered trademark in which the Complainant has rights. The disputed domain name fully incorporates the Complainant’s trademarks ZAMBON. Additionally, it contains the term “pharma” which is generic and reaffirms the similarity, since it identifies the Complainant’s business. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademarks. Furthermore, the Respondent is neither commonly known by the disputed domain name as an individual, business, or other organization, nor is “Zambon” the Respondent’s (family) name. The Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. In the Complainant’s view, the Respondent has attempted to exploit the reputation of the Complainant’s trademark for its own commercial gain, by misleading and diverting Internet users from the Complainant to its own website. Thirdly, in the Complainant’s view, the disputed domain name was registered in bad faith, and is being used in bad faith. According to the Complainant, the use of the disputed domain name, confusingly similar to the Complainant s trademark ZAMBON in connection with a website promoting, under the identical trademark ZAMBON, anabolic and androgenic steroids not originating from the Complainant, using also a logo similar to the one registered and used by the Complainant and without publishing any disclaimer as to the lack of affiliation with the Complainant, clearly indicates that the Respondent’s purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to its own website for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website and the goods promoted through said website, according to paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal element ZAMBON, amongst others International Trademark Registrations No. 509634 and No. 620243, as well as Indian Trademark Application No. 595913. These trademarks largely predate the creation date of the disputed domain name, which is September 19, 2017. UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark ZAMBON is fully included in the disputed domain name. It is the view of this Panel that the combination of the trademarks ZAMBON with the dictionary term “pharma” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. The Panel therefore shares the view expressed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, according to which “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”. Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name: According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks ZAMBON, e.g., by registering the disputed domain name comprising said trademarks entirely. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. In addition, it results from the Complainant’s undisputed allegations that the disputed domain name resolves to a commercial website promoting anabolic and androgenic steroids not originating from the Complainant, using a logo which is similar to the one registered and used by the Complainant. In the Panel’s view such commercial use cannot – from the outset – be considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Finally, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy since it rather has a high propensity to mislead and divert consumers. Indeed, this Panel joins the Complainant’s view following which the Respondent’s website clearly creates the impression of an association with the Complainant. However, it results from the Complainant’s undisputed allegations that the Respondent is not a licensee or an authorized agent of the Complainant, or in any other way authorized to use the Complainant s trademarks. Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand. It results from the Complainant’s documented allegations and undisputed evidence that the disputed domain name resolves to a commercial website promoting anabolic and androgenic steroids not originating from the Complainant, using a logo which is similar to the one registered and used by the Complainant. In a nutshell, the Respondent combined the Complainant’s trademark with the descriptive term “pharma” which indicates the business sector in which the Complainant is active since more than a century (also in India, where the Respondent is located) and uses the Complainant’s stylized logo for the website to which the disputed domain name connects. In the light of these facts and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent knew that the disputed domain name included the Complainant’s trademarks when it registered said disputed domain name. As a result, the Panel finds that the registration of the disputed domain name which contains the Complainant’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). This finding of bad faith registration and use is further supported by the fact that the Respondent failed to submit a response to the Complaint or to provide any evidence of actual or contemplated good faith use and its failure to reply to the cease and desist letters sent before starting the present proceedings. In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 Tobias Malte Müller
Sole Panelist
Date: November 2, 2020
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