WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc., Pfizer Products, Inc. v. Jian Zhan

Case No. D2006-1134

 

1. The Parties

The Complainants are Pfizer Inc., New York, United States of America and Pfizer Products, Inc., Connecticut, United States of America. Both Complainants are represented by Paul C. Llewellyn and Kaye Scholer, LLP, United States of America.

The Respondent is Jian Zhan, www.7webs.com, Toronto, Ontario, Canada, represented by an individual representative in Canada.

 

2. The Domain Name and Registrar

The disputed domain name <辉瑞.com> is registered with Spot Domain LLC dba Domainsite.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September1,2006. On September6,2006, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain name at issue. On September 12, 2006, Spot Domain LLC dba Domainsite.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on September 13, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September14,2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October4,2006. The Response was filed with the Center on October5,2006.

The Center appointed Hong Xue as the sole panelist in this matter on October16,2006. 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.

The language of the proceeding is English, being the language of the Domain Name Registration and Service Agreement, pursuant to the paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.

October24,2006, the Center acknowledged the receipt of the Supplemental Filing from the Complainants. Given the need for procedural efficiency, the Panel decided not to consider the Complainants’ Supplemental Filing in rendering the decision. On October29, 2006, the Respondent’s Representative, in violation of paragraph 8 of the Rules, directly sent to the Panel by emails the Supplemental Response to the Complainants’ Supplemental Filing. In accordance with paragraph 10 of the Rules, the Panel decides not to accept any unsolicited supplemental filing from either party after the Panel was constituted on October16,2006.

 

4. Factual Background

The Complainants are the pharmaceutical enterprises with the operations in more than 150 countries, including China. The Complainants’ trademark in Chinese characters is “辉瑞”, which is the Chinese transliteration of “Pfizer”. The Complainants acquired the trademark registration of “辉瑞” on the goods or services in multiple classes in China. The earliest trademark registration was in 1999.

The Respondent registered the domain name <辉瑞.com> on July 30, 2004.

 

5. Parties’ Contentions

A. Complainants

Pfizer is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries, including China.

Pfizer conducts extensive business in China through affiliates and subsidiaries in that country, where Pfizer is widely known by the name “辉瑞”(which, as noted above, is pronounced “hui rui “). Pfizer’s Chinese affiliates use the extremely widely-known 辉瑞 mark in connection with the sale of a wide variety of Pfizer’s products, including Pfizer’s leading drugs LIPITOR, NORVASC, CELEBREX, VIAGRA, DIFULCAN, ZITHROMAX, ZOLOFT and XALATAN Pfizer Products, a subsidiary of Pfizer, owns at least twelve Chinese trademark registrations containing the 辉瑞 mark, including Chinese Trademark Registration numbers 1437960, 1395233, 1453947, 1412130, 1407565, 1424172, 1406633, 1406767,1409975, 1508411, 1437351 and 1508411. Most of these registrations are for marks consisting solely of the 辉瑞 mark. In addition, Pfizer Products also owns registrations for the mark 辉瑞 with the term “HUIRUI” written underneath the Chinese characters, and for marks consisting of the 辉瑞 mark plus other characters which represent “Products Inc.” in Chinese. A complete list of these registrations and copies of the details of each of these registrations are attached hereto as Exhibit 3. All of the following registrations are valid, unrevoked and uncancelled.

Pfizer’s affiliates operate websites at the domains <辉瑞.公司> and <辉瑞.网络>–that is, “辉瑞” followed by Chinese Character top level domains–which are used to communicate with the public about Pfizer and its products. Pfizer’s affiliates also operate a website at “www.pfizer.com.cn”. Each of these websites prominently features the 辉瑞 mark. (Examples of uses of the 辉瑞 mark at “www.pfizer.com.cn” are attached as Exhibit 4).

The Complainants contend that by virtue of the extensive sales and advertising in China and throughout the world under the 辉瑞 mark, the 辉瑞 mark has become and is extremely widely known and famous in China and among Chinese speaking consumers.

The Respondent’s Domain Name is Identical or Confusingly Similar to Pfizer Product’s 辉瑞 Trademark.

The Complainants contend that the Respondent, seeking to capitalize on the fame of the Complainants’ 辉瑞 trademark, and recognizing the importance of the Internet as a means of communication between the Complainants and the public, registered without authorization the domain name <辉瑞.com>. The domain name resolves to a one page site with text in Chinese and English. (A printout of the “www.辉瑞.com” web page is attached hereto as Exhibit 5). The English text on the web page begins “This site is noncommercial one and it is a charitable organizer. This site works to guide intelligent giving. We help charitable givers make intelligent giving decisions by providing information on over four thousand charities and by evaluating the financial health of each of these charities.” See Exhibit 5. Despite this and similar statements on the page, however, it contains no information about charities. Nor does the web page contain any information about Pfizer or any of its subsidiaries or affiliates. The page also contains the statement in English “Please contact at sales@7webs.com.” Id. Upon information and belief, the Chinese characters on the “www.辉瑞.com” web page are randomly selected–they are not the translation of the English text on the site, nor do they contain any information about Pfizer or its affiliates.

The Respondent’s <辉瑞 .com> domain name (1) incorporates wholesale the registered 辉瑞 mark, (2) is identical to the 辉瑞 mark, but for the top level domain identifier “.com” and (3) is confusingly similar to Pfizer’s and its subsidiaries own websites “www.辉瑞.公司” and “www.辉瑞.网络” and (4) is so clearly similar to Pfizer Product’s 辉瑞 mark and the trade name that it is likely to cause confusion among Complainants’ customers and the consuming public.

The Respondent has no rights or legitimate interests in the trademarks.

The Complainants state that Pfizer and Pfizer Products are not affiliated in any way with the Respondent and have never authorized the Respondent to register or use the domain name at issue or the 辉瑞 mark. The Respondent has no right or legitimate interest in the mark 辉瑞 or in the subject domain name. Upon information and belief, Respondent is not commonly known by the name “辉瑞”, “Hui Rui” or any variation thereof. The Respondent has no trademark rights in “辉瑞”. “UDRP Panels have made it quite clear that it takes more than domain name registration to obtain rights in the domain name.” Jerome Gilson, TRADEMARK PROTECTION AND PRACTICE 7A.06[2][b][iii] at page 7A-82 & n.236 (Matthew Bender 2004) (citing panel decisions).

Complainants’ adoption and registration of the 辉瑞 marks in China precedes the Respondent’s registration of the domain name at issue on July 30, 2004. Moreover, given the widespread publicity and fame of the 辉瑞 mark, it is indisputable that the Respondent had knowledge of Complainants’ famous 辉瑞 mark prior to the registration of the disputed domain name.

Nor according to the Complainants can the Respondent demonstrate any rights or legitimate interests in the domain name. The Respondent is not using, nor is there nay evidence of plans to use, the subject domain in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is the Respondent making any legitimate non commercial fair use within the meaning of paragraph 4(c)(iii) of the Policy. As described above, the “www.辉瑞.com” website resolves to a one page site with text in Chinese and English. See Exhibit 5. The English text on the web page begins “This site is noncommercial one and it is a charitable organizer. This site works to guide intelligent giving. We help charitable givers make intelligent giving decisions by providing information on over four thousand charities and by evaluating the financial health of each of these charities.” Id. Despite this and similar statements on the page, however, it contains no information about charities.

The Complainants contend that it is clear that a registrant has no rights or legitimate interests in respect of a domain name, where, as here, the domain consists of nothing more than a registered trademark of another, and is used for a website that is completely unrelated to the trademark owner. See e.g., Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023 (no legitimate rights in domain <segwayaccessories.com> which redirects to “www.plannedchildhood.org”, “a website unrelated to Complainant or its Segway products”).

Moreover, according to the Complainants the Respondent cannot be making a legitimate non-commercial or fair use for the additional reason that the Respondent’s site appears to be a mere pretext for generating interest in his for-profit web business, or for selling the domain for a profit. Thus, the website invites visitors to “Contact at sales@7webs.com,” which suggests that the registrant is soliciting offers to purchase the domain name or is soliciting customers for his web design business, which is promoted at “www.7webs.com”. See Exhibit 5. The vague references to charity on the site do not alter the commercial nature of the Respondent’s solicitation.

The Respondent Has Registered and is Using the Domain Name in Bad Faith.

The Complainant contends that the Respondent, like the Chinese-speaking public generally, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the 辉瑞 trademark. As used by Pfizer and its affiliates, the 辉瑞 mark is recognized and relied upon by medical professionals and the public throughout the world, and specifically in China, to identify and distinguish Pfizer’s medications from the goods and services of others. Complainants also use several domain names containing 辉瑞 to provide information about them and their products. The Respondent, recognizing the world famous renown of the 辉瑞 mark, recognizing the value of the Internet to Pfizer and its affiliates in enhancing its ability to communicate with their target audience, and recognizing the potential of the 辉瑞 mark to generate an enormous amount of Internet traffic, registered and has used the domain name <辉瑞.com>, which wholly incorporates the 辉瑞 mark and merely adds the generic “.com” top level domain, so as to attract to the Respondent’s website visitors who are searching for information about Pfizer, its affiliates and its products. Given the absence of any legitimate basis for such use of the 辉瑞 mark in the Respondent’s domain name, the only reasonable inference is that the Respondent has acted with a bad faith intent to profit from Pfizer’s name and reputation or Pfizer’s 辉瑞 mark or trade name’s and reputation.

As an initial matter, the Complainants contend that the Respondent’s lack of rights or legitimate interest in the use of the domain name renders the issue of bad faith registration unnecessary to even be considered. See Guinness Son & Co., Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020 (finding that because Respondent had no rights or legitimate interests in the domain names, it was unnecessary to even consider whether the complainant established bad faith use in registration). Moreover, the Respondent’s bad faith use of a domain name is determined, not by whether the Respondent is making a positive action in bad faith, but instead by whether all of the other circumstances of the case indicate bad faith by the Respondent. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Respondent’s bad faith registration and use is exemplified by the following:

a. The Complainants contend that the Respondent, aware of the fame and goodwill associated with the 辉瑞 mark worldwide, registered a domain name that is intended to be and is essentially identical to Complainants’ 辉瑞 marks and trade name.

b. The Complainants contend that the domain <辉瑞.com> deliberately and misleadingly includes wholesale Complainants’ registered mark 辉瑞, which is used to identify Pfizer’s affiliates as the sole source of various product and to distinguish Pfizer’s products from the goods and services of others.

c. The Complainants state that the Respondent is not, nor ever has been, a representative of 辉瑞 or licensed to use the 辉瑞 mark.

d. The Respondent’s invitation for visitors to contact him at “sales@7webs.com,” an e-mail address at his for-proft web design company, is according to the Complainants further evidence of the Respondent’s bad faith registration and use of the <辉瑞.com> domain. This invitation suggests an effort by the Respondent to sell the domain, or alternatively to attract visitors to the site to the Respondents’ web design business.

The Complainants request the Panel to order that the domain name <辉瑞.com> be transferred to the Complainant Pfizer Inc.

B. Respondent

The Respondent contends in relation to whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights (paragraph. 4(a)(i) of the Policy), the Respondent claims that it is not.

The Respondent challenges the trade or service mark rights asserted by the Complainants, and initiates the refutations of the arguments of and by the Complainants concerning the manner in which the domain name is allegedly identical or confusingly similar to a trademark or service mark in which the Complainants claim they have rights.

The Respondent contends that it is universally acknowledged and indisputably true itself in Chinese speaking communities throughout the world, including but not limited to Mainland China, 辉瑞 is by nature and origin a very common and popular Chinese word throughout Chinese history, consisting of two characters with 辉 meaning bright or brightness and 瑞 meaning lucky or luck; and it is a frequently used compound word generally regarded as composed of two highly ordinary but relatively independent words in the form of the above two characters. For the very reason of its extremely auspicious implications and associations as demonstrated above, it certainly has been, still is, and will be an extremely well-known and frequently adopted Chinese word and/or name and/or trademark in all the Chinese speaking communities. For the very same reason, Pfizer, a contemporary and American global corporation and business empire, was as an English word somehow unexpectedly translated into such a Chinese word with all the preceding multiple significances unique to the Chinese Nation as a whole. Moreover, it was in nature copied from the Chinese word in a paradoxical way, or both arbitrarily and deliberately in respective senses, and then somehow registered as its own and exclusive trademark in China in 2000 and 2001.

The Respondent asserts that it can be very securely asserted that simulated and borrowed from its Chinese origin and source, and owing to its subsequent adoption in the Chinese speaking communities, the trademark 辉瑞 has surely achieved certain and even remarkable popularity and fame in some fields and areas or among some professionals and individuals and groups in the above mentioned communities.

The Respondent then contends that although Pfizer is generally a most influential and renowned international or global corporation, and although Pfizer is also a very famous trademark in the world, and still although the Complaint alleges unconditionally in paragraphs of 15, 17, 25, 27(a) in the Complaint that the Complainants and its trademarks are extremely well known and popular in China and Chinese speaking communities, the fact is that this statement is true if applied to the Western world rather than to China and other Chinese speaking communities. They are much less celebrated than the Complaint assesses and declares, in the Chinese communities both at home and abroad, especially at home, due to language barriers.

The Respondent contends that according to the above propositions and the other facts and reasons, the Respondent strongly maintains that its domain name is not identical or confusingly similar to the trademark of the Complainants.

The Respondent then contends that the Respondent can reliably posit that 辉瑞 has been used widely and variably in Chinese communities throughout Chinese history. Numerous Chinese people are named such, an incredible number of Chinese parents call their children 辉瑞, and even many businesses and other entities share the same name. According to a leading and authoritative Chinese Internet corporation and website “www.baidu.com”, and as a historical fact itself, the word has been so popular throughout Chinese history that even a or the most famous emperor of Korea had his first name as 辉瑞 (1688-1724) during the Chinese colonization of Korea for centuries. Ancient Chinese poetry, as a rare treasure both of China and the world, has witnessed such classical and celebrated verses as 腾辉瑞蝶 Roaring Brightness and Lucky Butterflies Echoing and Melting, and 远光增辉瑞气来 Distant Brightness and Lucky Blessings Rolling and Befalling. According to the Respondent’s rough search results, before Pfizer’s Chinese trademark registered August 28, 2000, there have been at least 200 companies in China whose names include HuiRui (辉瑞), including but not limited to the following:河南辉瑞医疗器械有限公司 Henan Huirui Medical Equipment Co., Ltd,上虞市辉瑞照明电器有限公司 Shangyu City Huirui Lighting Electric Appliances Co., Ltd. 西安辉瑞医药科技发展有限公司,Xian HuiRui Pharmaceutical Company; There have been four companies with the trademark of HuiRui (辉瑞), one of which had already registered the same trademark 4 years earlier than Pfizer, as listed below:

番禺市大岗镇瑞兴制衣 registering trademark 4 years earlier than Pfizer

o Trade Mark: HuiRui (辉瑞),

o Applied date: 1994-07-06,

o Registered date: 1996-02-07,

o Registered Number: 837496,

o Class: 26;

即墨市万祺针织厂

o Trade Mark: HuiRui (辉瑞)

o Applied date: 2001-11-22

o Registered date: 2003-02-07

o Registered Number: 3022477

o Class: 25;

王大辉370911198309138111

o Trade Mark: HuiRui (辉瑞)

o Applied date: 2005-10-26

o Registered date:

o Registered Number: 496452

o Class: 19;

邵君成422428740904423

o Trade Mark: HuiRui (辉瑞)

o Applied date: 2005-04-30

o Registered date:

o Registered Number: 4635798

o Class: 30

In addition, the Respondent states, as the result of an inexhaustible research, the Respondent finds 62 more companies with 辉瑞 as their name, but not registered as their trademark. According to the Respondent’s search samples, there are at least 200 default companies with 辉瑞 as their name.

Therefore Pfizer cannot exclusively claim all rights associated with the term 辉瑞. Furthermore, Pfizer and its subsidiaries and trademark are not at all extremely well-known and popular in China and other Chinese communities as the Complainants uphold.

On the above basis, and at the same time, the Respondent contends that the disputed domain name is a very common or generic name or word or term or mark, and should be protected according to the following cases and their decisions or precedents of the Center, with 2 of them as cases and decisions of America.

The Respondent cites a number of prior UDRP panel statements and decisions in support of theses contentions including: BND Ent. dba Dark Fire v. RN WebReg aka darkflame.com aka Buy This Domain, NAF Forum File No. FA0405000280502, in which the Panel found “Respondent has rights and legitimate interests in the disputed domain names, because the sale of generic domain names constitutes a bona fide offering of goods and services where Respondent is not aware of a party’s rights in a mark”; Fifty Plus Media Corporation v. Digital Income, Inc., NAF Forum File No. FA0005000094924; and General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), NAF Forum File No. FA0001000092531.

The Respondent contends based on the preceding arguments and the more recent pertinent UDRP decisions, that it can be concluded that rather than the Respondent should be accused as it is in this present case, the Complainants can be accused of reverse domain name hijacking. When a complainant does not have exclusive use of a possible “generic” mark and a Respondent has registered the “generic” term(s) as a domain, then there is the possibility of “reverse domain name hijacking.

The Respondent contents that the attached English part of the said version aims to manifest the very nature and mission of the non profit charitable website which is under construction. Besides, as can be testified to by experts, the Chinese text itself is not only correct and standard but also beautiful and powerful linguistically and in content.

The Respondent also points to a number of cases and decisions in support of its contentions in relation to Reverse Domain Name Hijacking, which the Respondent considers applicable to the Complainants.

The Respondent considers that the involved Chinese generic or common word derives or creates the involved Pfizer’s Trademark, hence the latter trademark is identical and confusingly similar to the former word, not vice versa.

According to the Respondent, if identical or similar at all to the Complainants’ Chinese trademark, then the Respondent’s domain name is only partially identical, but not ever utterly identical or confusingly or deceptively similar to the latter, as discussed earlier and to be complemented later in this Response.

The Respondent contends that on all the above bases of fact and law, the Respondent can fairly and legally reach and support the following conclusions:

The Complainant(s) Pfizer do(es) not exclusively own the disputed trademark, while the Respondent has each and every right to own its domain name;

What is most important, according to the Respondent, is that the Respondent has each and every reason to claim that the 辉瑞 is not the same as or confusingly similar to the trademark of the Complainants.

Due to a number of issues discussed by the Respondent at length including what it characterises as issues of international relations and law, the Respondent requests in essence that the Complaint be dismissed, and in particular requests the Panel to establish its arguments that it has its own right in its domain name, and that the domain name is not identical and/or confusingly similar to the Complainants’ Chinese trademark.

As to whether the Respondent has rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii) of the Policy), the Respondent claims that it does.

In support of this contention, the Respondent states that before the Respondent received any notice of the dispute, there has been evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The very fact of designing the Respondent’s involved website through nothing else but the domain name proper is the first evidence of its use; at the same time, there has been interactions including correspondence between the Respondent and the Website and customers which can further prove its use; the website’s construction process was not caused by the false intentions or the pretext which the Complainants accuse the Respondent of having, but by the sheer technical unavailability, as can be supported by expert witnesses: it was not possible to type Chinese characters in the browser before IE7 was launched and the Respondent just waited for the chance to launch this website; although the website is legitimately and explicably under construction, the very act of posting the sign of “Under Construction” and the actual and proven act of construction themselves also indicate the Respondent’s use of it; despite its delayed process of operation for the justifiable reason of construction, the Respondent has made all the substantial preparations for the final launching of nonprofit services (see Annexes).

Second, the Respondent contends that it has been using the website and the domain name although they are not commonly known, whether or not the Respondent has acquired no trademark or service mark rights. The Respondent could have achieved a substantive reputation by the domain name, but was negatively affected for the above reason of technical unavailability for a Chinese Domain Name.

The Respondent also contends that a legitimate non- commercial or fair use of the domain name is being made, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. The Respondent, however unwillingly and reluctantly before a public forum, has to produce the following evidence and justify itself by it, which is related to a fundamental principle and freedom or right or liberty of a civilized society: freedom of belief or religion and/or freedom of thought and expression, and which is the Respondent’s privacy and confidentiality. First, the Respondent has been a devoted and registered Christian in Canada for years and will be such a believer throughout life. Second, and naturally, the Respondent, originally from China which has been a non Christian country, and as a Chinese whose beliefs were other religions, has been determined ever since its converting to Christianity to spread the very religion in the Chinese speaking communities, and has decided to perform charitable activities or programs, inspired and encouraged by the Bible and peer believers. Then, it found the way of designing the website to pursue this purpose. The Respondent chosen and registered this domain <辉瑞.com> with multiples meanings-bright and lucky, as a perfect match for a Christian website to be launched to help Chinese counterparts to be somehow saved spiritually through charitable efforts.

Also, and/or specifically, the Respondent asserts the right and legitimate interests to register and use this domain-HuiRui (辉瑞) on the following grounds.

The Respondent asserts the right and the legitimate interest in the trademark firstly on all the preceding foundations as previously discussed.

The Respondent contends never to have in any way, in any place, in any time, acquired or otherwise accessed any kind and any degree of knowledge and/or information of and about the Complainants and their trademark when registering HuiRui (<辉瑞.com>) for the reasons below: First, as a Canadian having been living in Canada, a common citizen not in any of capacity in any affairs related to the Complainants, an common individual not otherwise associated in any way with the Complainants and their trademark, the Respondent had never heard or learned about the Complainants or their productions or their trademark. Furthermore, and also for the above reason, under the same conditions, the Respondent did not know in any sense about the Complainants and their products or trademark when registering domain-HuiRui (<辉瑞.com>). Last but not least, to the best knowledge of the Respondent, Pfizer has not promoted HuiRui (辉瑞) in Canada. Especially, for the very same reasons as above, the Complainants can not present and has not presented any evidence except imaginations or speculations to counter the Respondent’s position.

As has been established in the former, the Domain name-HuiRui (<辉瑞.com>) is a common and/or generic word or term or mark, and the registration of such a symbol as a domain name in such situations is entirely permissible and legal under the UDRP decisions and trademark law, thus establishing the Respondent’s right and legitimate interest.

The Respondent states it would never, did not, does not, and will not sell this domain to any person or group, nor have the Complainants been or will be able to provide any evidence to contend the Respondent’s such position and fact as well.

The Respondent contends Pfizer just registered trademarks in 10 classes of the Chinese trademark registry system. Any person or company has a right to register in any one of the 31 remaining and other classes as long as it is not already taken for this trademark. The Respondent has his right and legitimate interests to register this domain and trademark if it wishes.

As to whether the domain name has been registered and is being used in bad faith. (paragraph 4(a)(iii) of the Policy), the Respondent claims that it has not and is not.

In support of this, the Respondent contends as follows. First, the domain name was not registered or acquired and is not being used for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants, as the alleged owner of the trademark or service mark, or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name; The noncommercial purpose of the Respondent, its website and its Domain Name has been founded and established in the pertinent part of this Response.

Second, the Respondent contends the domain name was not registered in order to prevent the Complainants from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.

Third, the Respondent contends the Complainants and the Respondent are not competitors and the domain name was not registered by the Respondent in order to disrupt the Complainants’ business.

Fourth, the Respondent contends the domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website or any other on-line location, by creating a likelihood of confusion with the Complainants’ 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.

Also, and/or specifically, all the above refutations and positions respectively can according to the Respondent be supported in detail as follows.

The Respondent states that technically, it is almost not operable or possible for the Respondent to use this domain to design a website for profit. All of the Respondent’s clients are local clients who speak English in Toronto, but HuiRui (辉瑞) is a Chinese domain name. One almost can not make a website for non-local clients because face to face meetings are crucial to the website designing process. The Respondent has not received any email from this domain for inquiring website design yet.

Moreover, the Respondent contends that although the Complaints accuse the Respondent of infringing their rights and legitimate interests, based on the fact that the Respondent has left his only email (sales@7webs.com) which seems to be for commercial purpose, yet this email has been and is the only and exclusive email that the Respondent has for all its purposes; therefore it has been naturally and reasonably posted in this page.

In addition, the Respondent contends it not only has developed the philosophy, vision, and mission of its own charity program, it has also clearly declared and indicated these features with capitalized words on website and more content; especially, it has unmistakably and obviously emphasized that its website is a non-profit and charitable website, which is a very strong signal for its natural and purpose. There is not any involved possibility and opportunity of commercial purpose which the Complaints attribute to and impose on the Respondents as exploiting sales@7webs.com to this effect.

The Respondent contends that in respect of the very nature and classification of the Complaints and the Respondent, of their websites, domain names and trademarks, respectively, Pfizer is a giant enterprise empire in pharmaceutical and medical and other industries mainly in the West, has their own domains and trademarks for such specialized purposes; all of which are very easy and convenient to distinguish from the Respondent and its charitable domain, website and services to offer. Thus, it is not possible in the Respondent’s view for the general public, let alone those professionals, to confuse HuiRui (辉瑞) with any other non-profit counterparts such as those of the Respondent.

To conclude, the Respondent states that the Respondent’s domain is not for commercial purpose in any sense, that it is not for preventing the Complaints from reflecting their HuiRui (辉瑞) website and domains, that the Respondent is not in a pattern of such conducts, that the Respondent does not compete with and disrupt the Complaints in any manner, and the Respondent’s domain is not for attracting Internet users for commercial gains. Therefore, the Respondent contends the domain name has not been registered in bad faith and is not being used in bad faith, either.

The Respondent also states that if appropriate and if the allegation can be substantiated with evidence, the Rules provide that a Respondent may ask the Panel to make a finding of Reverse Domain name Hijacking. (15(e) of the Rules); therefore, and the Respondent makes this request.

The Respondent makes a number of assertions in support of this request including that the Complainants have fabricated false and offensive information to the Panel and attempt to mislead the Panel, not only as the Complainants, but also as if they were bilingual linguists or translation theorists or practitioners or expert witnesses in Chinese and English.

Further, the Respondent asserts that the Complainants have made up deceptive information to the panel by claiming that they have exclusive rights for the trademark HuiRui (辉瑞). In fact, the Respondent states, the Chinese national and regional trademark registration system reveals that 4 companies also registered trademark HuiRui (辉瑞), one of which registered the trademark 4 years earlier than Pfizer, as follows:

番禺市大岗镇瑞兴制衣厂

Trade Mark: HuiRui (辉瑞)

Applied date: 1994-07-06

Registered date: 1996-02-07

Registered Number: 837496

Class: 26

The Respondent concludes by stating that the Complainants purport to mislead the panel by means of declaring that they own 43, 44, 45 classes registered trademark, which is in the Respondent’s view a sheer lie according to the confirmation of Chinese trademark database in 2006.

The Respondent requests the Panel to order that the domain name<辉瑞.com> stay with the Respondent and requests that the Panel make a finding of reverse domain name hijacking against the Complainants.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark.

The evidence before the Panel is that the Complainants in this case hold trademark right over the Chinese-character mark “辉瑞” through the trademark registration in China. Except for the generic top-level domain designation “.com”, the disputed domain name <辉瑞.com> is identical with the Complainants mark “辉瑞”, which is incorporated in its entirety.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions summarizes that the test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion. The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110). For this reason, it is not necessary to compare the Complainants’ business and the Respondent’s websites for the purpose of paragraph 4(a)(i) of the Policy.

Through comparing the Complainant’s registered trademark 辉瑞 and the Respondent’s domain name <辉瑞.com>, the Panel finds that the Complainants successfully prove the two aspects provided in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants contend that the Respondent has no legitimate rights or interests in the disputed domain name. After the Complainants have made a prima facie showing of the Respondent’s lack of such right or interest, the burden of proof shall shift to the Respondent. The Respondent presents the following rebuttals.

a) Both paragraph 4(c)(i) and paragraph 4(c)(iii) of the Policy are cited to demonstrate the Respondent’s right or legitimate interests in the disputed domain name. Under paragraph 4(c)(i) of the Policy, before the Respondent received any notice of the dispute, there has been the evidence of the Respondent’s use of or demonstrable preparations to use the domain name in connection with a bona fide offering goods and services. Under paragraph 4(c)(iii), the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds the Respondent’s above-mentioned arguments puzzling. Paragraph 4(c)(i) and paragraph 4(c)(iii) of the Policy are mutually exclusive. What paragraph 4(c)(i) presents is the right or legitimate interests of a domain name holder in commercial activities, while paragraph 4(c)(iii) covers non-commercial use of the domain name. If the Respondent argues that he is offering goods or services in bona fide under paragraph 4(c)(i), he has already been precluded from the possibility that he is making a non-commercial use of the domain name under paragraph 4(c)(iii) of the Policy.

Given that the Respondent’s website at the disputed domain name states that “[T]his site is noncommercial one and it is a charitable organizer”, the Panel finds that it is appropriate to examine the Respondent’s argument solely under paragraph 4(c)(iii) of the Policy. In assessing this the Panel relies on the printout of the Respondent’s website provided as evidence by the parties before October 16, 2006.

The Respondent’s one-page website contains a three-paragraph English statement, beginning with a sentence “[T]his site works to guide intelligent giving” and ending with another sentence “[W]e do this by evaluating the financial health of over four thousand of North America’s largest charities so that people interested donating to those charities can be assured that their dollars are being spent wisely and efficiently”. At the left side, 4 paragraphs of Chinese are shown under the Chinese title “Charity”. Based on the Panelist’s Chinese language proficiency, the Panel finds that the Chinese content is not the translation of the English content. Although the Chinese part does state that the mission of the website is charity, it does not mention the “intelligent giving” or “financial health” of charity organizations at all. Below the Chinese and English statement, it shows that “[T]his site is under construction, please check it back”, followed with the Respondent’s email address and telephone number.

After examining the evidence of the content of the Respondent’s website, the Panel finds that the “charity programs” or “intelligent giving” guidance claimed by the Respondent as being offered through the disputed domain name has not started because the site is still “under construction”. Particularly, no information on any of those four thousand of North America’s largest charities and their financial health can be found on the website.

This raises the question of whether the Respondent’s yet-to-start charity program can be covered by paragraph 4(c)(iii) of the Policy. The wording of paragraph 4(c)(iii) clearly requires the domain name holder to make a legitimate noncommercial use of the domain name at the present. A number of panels have adhered strictly to this wording and concluded that mere preparation for a non-commercial use of the domain name does not satisfy paragraph 4(c)(iii) of the Policy (See Apple Computer, Inc. v. DomainHouse.com, Inc., WIPO Case No. D2000-0341, “the express language of the Policy indicates that its drafters intended to limit the circumstances in which legitimate noncommercial use could successfully be claimed to those circumstances in which a respondent is ‘making’ use.” Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, “paragraph 4(c)(iii) refers only to the active ‘making’ of a ‘legitimate noncommercial or fair use’“”). Convinced by the preceding decisions, the Panel rules that the Respondent has not right or legitimate interests under paragraph 4(c)(iii) of the Policy.

b) The Respondent also claims his right or legitimate interests in the disputed domain name by emphasizing that he has no knowledge of the Complainants’ trademark “辉瑞”. The Respondent states that he is a citizen living in Canada and the Complainants have not promoted the trademark “辉瑞” in Canada.

The Panel finds the Respondent’s argument unpersuasive. In the Response, the Respondent specifically states that “the Respondent, originally from China which has been a non Christian country, and as a Chinese whose beliefs were other religions, has been determined ever since [its] converting to Christianity to spread the very religion in the Chinese speaking communities, and has decided to perform charitable activities or programs, inspired and encouraged by the Bible and peer believers.” The Complainants prove that the Chinese-character trademark “辉瑞” has been widely advertised and recognized in China. The Respondent, who migrated from China when he was mature enough to have non-Christian religious beliefs, cannot merely rely on his Canadian citizenship to deny his possible knowledge of the Complainants’ trademark “辉瑞”.

c) Another defense raised by the Respondent is that the disputed domain name “辉瑞” is a common or generic term. The Respondent shows a couple of examples that “辉瑞” is used in the personal names, trade names or poems. The Panel, however, finds that the Respondent’s claim is merely the artificial construct of these two characters. “辉瑞” consists of two Chinese characters—”辉” and “瑞”, both of which has been existing separately for thousands of years, but the combination of these two unrelated characters has never been a generic term or dictionary term in Chinese language. Although the poems cited by the Respondent show “辉瑞”, they can only be used to mislead the non-Chinese readers. Looking at the poem “远光增辉瑞气来”, the Panel finds that “辉” cannot be interpreted together with “瑞” and the poem should actually be read as “远光增辉 / 瑞气来”.

Since the Respondent fails to rebut the Complainants’ contention that the Respondent has no right or legitimate interests in the dispute domain name, the Panel is entitled to accept that Complainants have established the second element of the Policy. The Panel therefore finds that the Complaint fulfills the condition provided in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainants contend that the Respondent registered and is using the disputed domain name in bad faith. The Complainants emphasize the reputation of their mark “辉瑞” and the Respondent’s use of the trademark in connection with the domain name hosting content wholly unrelated to the Complainants.

The Panel notices that the disputed domain name <辉瑞.com> is in the Chinese language and only those people who understand Chinese are likely to access this site, provided that they are equipped with the necessary technical measure to resolve the Chinese-character domain name through their computer system. The Complainants’ trademark “辉瑞”, as proved by the Complainants, is primarily used, advertised and recognized in the Chinese-speaking community. Therefore, it is very likely that the Chinese-speaking users are attracted to the Respondent’s website due to the confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

There is an established view that a likelihood of confusion is not diminished by the fact that once Internet users arrive at the Respondent’s website they will realize that it is not that of the Complainants (FANUC LTD v. Machine Control Services, NAF Forum File No. FA000200000093667). The reasonable potential for confusion under this view, which this Panel shares, is sufficient.

Although the Respondent states that his website is a noncommercial one, it cannot automatically exempt the Respondent from paragraph 4(b)(iv) of the Policy. There has been sufficient cases showing that the registration of domain name that are identical with the complainant’s trademark and used by the respondent for non-direct commercial purpose—such as criticizing the trademark holder—may be regarded as an attracting of Internet users within the meaning of paragraph 4(b)(iv) (The New York Times Company v. New York Internet Services, WIPO Case No. D2000-1072).

Based on the above finding, the Panel finds in the circumstances of this case that the Respondent has registered and is using the domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy and thus the Complainants fulfill the condition provided in paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

The Panel is requested by the Respondent to decide whether the Complaint has engaged in an attempt at reverse domain name hijacking.

It has been established that a finding of reverse domain name hijacking is inappropriate in cases where the complainant shows that it has a reasonable belief that the respondent is cybersquatting (State of California Managed Risk Medical Insurance Board v. Family Solutions, Family Solutions, Inc., and Patrick Hagan, WIPO Case No. D2001-0132). In this case, the Complainants do enjoy trademark rights over “辉瑞” and the Respondent has registered and is using a domain name <辉瑞.com> that incorporates the entirety of their trademark. Therefore, this Panel is satisfied that it is reasonable in the circumstances for the Complainants to have held the belief that the Respondent was cybersquatting and acting in bad fait. The Panel notes in addition that the Complainants have succeeded in proving to this Panel’s satisfaction each of the three elements of the Policy, and that accordingly a finding of reverse domain name hijacking would be clearly inappropriate in the circumstances.

The Panel thus declines to find that the Complainants have engaged in reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <辉瑞.com> be transferred to the Complainants.


Hong Xue
Sole Panelist

Dated: October 30, 2006