WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. and Pfizer Products, Inc V. Yuan Wei

Case No. D2006-1178

 

1. The Parties

The Complainants are Pfizer Inc. of New York, United States of America and Pfizer Products, Inc. of Connecticut, United States of America (the Complainants), represented by Kaye Scholer, LLP.

The Respondent is Yuan Wei, of Shandong, China (the Respondent), represented by Professor Ben Wen Wang.

 

2. The Domain Names and Registrar

The disputed domain name is <.net> [xn--rhyn39c.net] (Domain name above herein after referred to as Contested Domain name)

 

3. Procedural History

The Complainants submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy (Policy), implemented by the Internet Corporation for Assigned Names and Numbers (ICANN and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date (the Rules). The email copy of the Complaint was received by the Center on September 12, 2006, and in hard copy on September 18, 2006. On September 14, 2006, the Center transmitted by way of email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On September 14, 2006, eNom 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. The Center verified that the Complaint satisfied the formal requirements of the 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 having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally notified the Respondent, and the proceedings commenced on October 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 22, 2006. The Response was filed with the Center by email on October 23, 2006 and by hard copy on November 1, 2006.

The Center appointed Dr. Colin Ong as the Sole Panelist in this matter on November 16, 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 proceedings before this Administrative Panel was conducted in the English language.

 

4. Factual Background

4.1 The Complainants Activities

The Panel has looked at the Complainants submissions and indices containing various attached printouts from various websites as well as a list of registered trademarks in Chinese characters including Chinese Trademark Registration numbers 1437960, 1395233, 1453947, 1412130, 1407565, 1424172, 1406633, 1406767,1409975, 1508411, 1437351 and 1508411. The Panel finds that the Complainants own valid and subsisting rights to the trademark and service mark PFIZER and Chinese trademark which has been in use since 2000.

According to the Complainants Pfizer is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries, including China. Pfizer has expended and expends substantial sums and extensive resources on the research, discovery, development and marketing of human pharmaceuticals and animal health products and maintains one of the worlds largest privately funded biomedical research organizations. The Complainants have submitted that in 2005, Pfizer had reported revenues of over $50 billion.

The Complainants have submitted that Pfizer conducts extensive business in China through affiliates and subsidiaries and that Pfizer is widely known in China by the name (which is pronounced hui rui). They contend that Pfizers Chinese affiliates use the mark in connection with the sale of a wide variety of Pfizers products, including Pfizers leading drugs Lipitor, Norvasc, Celebrex, Viagra, Difulcan, Zithromax, Zoloft and Xalatan.

The Complainants submitted print outs of their registrations, including the following representative registration Chinese character registrations:

a. Registration No. 1437960 filed 1999-2-5 and registered on 2000-8-28.
b. Registration No. 1395233 filed 1999-2-5 and registered on 2000-5-14.
c. Registration No. 1453947 filed 1999-2-5 and registered on 2000-10-7.
d. Registration No. 1412130 filed 1999-2-5 and registered on 2000-6-21.
e. Registration No. 1407565 filed 1999-2-5 and registered on 2000-6-14.
f. Registration No. 1424172 filed 1999-2-5 and registered on 2000-7-21.
g. Registration No. 1406633 filed 1999-2-5 and registered on 2000-6-7.
h. Registration No. 1406767 filed 1999-2-5 and registered on 2000-6-7.
i. Registration No. 1409975 filed 1999-2-5 and registered on 2000-6-14.
j. Registration No. 1508410 filed 1999-11-1 and registered on 2001-1-21.
k. Registration No. 1437351 filed 1999-5-10 and registered on2000-8-28.
l. Registration No. 1508411 filed 1999-11-1 and registered on 2001-1-21.

4.2 The Respondents Activities

The Respondent is the registrant of the contested domain name that has been registered with eNom, Inc., on April 11, 2006.

 

5. Parties Contentions

A. Complainants

(i) Identical or Confusingly Similar

The Complainants contend that the domain name currently used by the Respondent is confusingly similar to the Complainants trademarks.

The Complainants submit that the Respondents < .net> domain name (1) incorporates wholesale the registered mark, (2) is identical to the mark, but for the top level domain identifier .net and (3) is confusingly similar to Pfizers and its subsidiaries own websites www..˾ and www..硱 and (4) is so clearly similar to Pfizer Products mark and the trade name that it is likely to cause confusion among the Complainants customers and the consuming public.

(ii) Rights or Legitimate Interests

The Complainants have contended that the Respondent cannot demonstrate any rights or legitimate interests in the domain name and that the Respondent is not using, nor has shown any 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. The Complainants have contended that the Respondent is not making any legitimate non commercial fair use within the meaning of paragraph 4(c)(iii) of the Policy and that the www..net website does not currently resolve to a website and is inactive.

(iii) Registered and Used in Bad Faith

The Complainants submit that the Respondents actions evidence bad faith use and registration of the Contested Domain Name under paragraph 4(b)(iv) of the Policy. The Complainants claim that after having recognised the potential of the mark to generate important Internet traffic, the Respondent had registered the domain name <.net>, which wholly incorporates the mark and merely adds the generic .net top level domain, so as to attract to the Respondents website visitors who are searching for information about Pfizer, its affiliates and its products. The Complainants claim that given the absence of any legitimate basis for such use of the mark in the Respondents domain name, the only reasonable inference is that the Respondent has acted with intent to profit from Pfizers name and reputation or Pfizers mark or trade name and reputation, either by using the domain for a site that profits from users seeking a Pfizer site, or by selling the domain name for a profit.

The Complainants relied upon the earlier WIPO UDRP decisions of Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001 (bad faith to register domains; given the widespread use and notoriety of the famous trademarks , respondent must have known of its existence); Lockheed Martin Corporation v. Allen Jarosz, WIPO Case No. D2005-0361 and Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285 (Bad faith can be presumed based on the fame of the Complainants PFIZER] mark) and Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256 (Considering that the PFIZER trademark is well-known and that the Respondent most certainly had knowledge of the Complainants trademark, the Panel finds that the Domain Name was registered and is used in bad faith).

B. Respondent

The Respondent submitted that it is universally acknowledged in Chinese speaking communities throughout the world, including but not limited to Mainland China, that is by nature and origin a very common and popular Chinese word throughout Chinese history, consisting of two characters with meaning bright or brightness and 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. In support of its submission on translation of the Chinese characters, the Respondent referred to the A CHINESE- ENGLISH DICTIONARY, Beijing Foreign Languages Institute English Department Compiling Group. Beijing; Commercial Press, 1980.

The Respondent contended that 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. It claimed that the Complainants had copied from the Chinese word in a paradoxical way, and then somehow registered as its own and exclusive trademark in China in 2000 and 2001.

The Respondent submitted that the Complainants behaved arrogantly and overconfidently in the Chinese communities both in China and abroad. Especially in China, due to language barriers, the Complainants overlooked specific and striking translation differences between source and target languages, cultural shocks, information gaps, socioeconomic and economic differences, ideological and political distinctions according to the Respondent. The Respondents supporting evidence for these contentions was as follows:

In accordance with the September 26, 2006 Google Companys 1-10 mark rankings of usage and popularity, Pfizers English Website was accredited 7 marks by www.google.com, which is basically compatible to its generally recognized status; while its Chinese website www.pfizer.com.cn was accorded no more than 4 marks, far less than its home or English speaking world rate by www.google.com, although China is one of the very few countries with almost the largest populations of Internet users in the world.

The Respondent then contended that, considering the size of the Chinese population and based on any resultant common sense and many other factors, the Respondent was entitled to reliably posit that has been used widely and variably in Chinese communities throughout Chinese history. The Respondent then submitted that numerous Chinese people are named as such, and a lot of Chinese parents call their children , and that many businesses and other entities share the same name.

The Respondent then submitted that Pfizer and its subsidiaries and trademark are not well-known and popular in China and other Chinese communities as the Complainants had suggested.

The Respondent then submitted that the Complainants could be accused of reverse domain name hijacking. The Respondent explained that 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 name, then there is the possibility of reverse domain name hijacking. The judgment specifically referred to Miller Brewing Company v. Yunju Hong, NAF Case No. FA192732; Kiwi European Holdings B.V. v. Future Media Architects, Inc., WIPO Case No. D2004-0848; The Panel finds that the Complaint was brought in bad faith in an instance of reverse domain name hijacking, based upon the complete lack of evidence that the disputed domain name, a generic term, was registered or is being used for reasons related in any way to Complainants or its mark.

 

6. Discussion and Findings

The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. According to paragraph 14(a) of the Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel is directed to make a decision on the administrative proceedings on the basis of the complaint. In accordance with paragraph 14(b), the Panel shall draw such inferences therefrom as it considers appropriate. The Panel notes that whilst the Respondent had conducted its defence by way of bringing a negative case against the Complainants, it had not actually brought any positive case to show that it had legitimate rights to the contested domain name nor directly answered the allegations of the Complainants.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following three elements of its case:

(i) The respondents domain names are 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 domain names; and

(iii) The respondents domain names have been registered and are being used in bad faith.

Under paragraph 15(a) of the Rules, this Panel must decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. The domain name is identical or confusingly similar to the trademark in which the Complainants have rights

The Panel finds that the Complainants have established rights in the marks for the purposes of paragraph 4(a) of the Rules. The Panel finds that there is a confusing similarity between the disputed domain name and the Complainants PFIZER and marks.

The likelihood of confusion has to be appreciated globally, taking account of all relevant factors. The more distinctive the mark the greater the likelihood of confusion. Where the confusing similarity between the domain name and the trademark would cause the Internet user to believe wrongly that the respective services came from the same or related undertakings, there would be a likelihood of confusion. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700.

The deliberate usage of the disputed domain name by the Respondents < .net> domain name simply incorporates wholesale the Complainants registered mark and is in fact identical to the mark, but for the top level domain identifier .net. The Panel concludes that the Complainants have established paragraph 4(a)(i) of the Policy.

B. The Respondent has no rights or legitimate interests in respect of the domain name

According to paragraph 4(b)(ii) of the Policy, the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondents rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Complainants have established prima facie evidence that none of the three elements establishing legitimate interests or rights mentioned in paragraph 4(a)(ii) of the Policy applies. In such instance, the burden of proof shifts on the Respondent to rebut the evidence. See Oxygen Media Corporation v. Spiral Matrix, WIPO Case No. D2006-0521.

The Respondent did not register the disputed domain name in connection with a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808.

In the Panels view, the Complainants marks and name are so widely-known and so recognized, and have been used in China and other countries for so many years that there is no likely legitimate right or plausible use possible by the Respondent.

While the Respondent has made an interesting reference to history of the Chinese characters in the contended domain name, such references do not assist the Respondent in itself advancing a positive case according to established legal principles and policy of domain name usage in the circumstances of this case. The Respondent has not managed to show that it had a legitimate right to the disputed domain name.

The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name and, accordingly, paragraph 4(a)(ii) of the Policy is satisfied.

C. Registration and Use in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondents website or other on-line locations, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation or endorsement of the respondents website or location, or of a product or service on the respondents website or location. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 (The domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.)

Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319.

The Panel does find that in view of the submitted evidence, and in the specific circumstances of this case, there is a very strong inference that the Respondents reason for registering the domain name was for commercial gain.

The Panel finds that the Complainants have established that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(b) of the Policy.

 

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 contested domain name, <.net> [xn--rhyn39c.net], be transferred to the Complainants.


Dr. Colin Yee Cheng Ong
Sole Panelist

Dated: December 15, 2006