WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VIRBAC v. PrivacyProtect.org, Mantow Tian, Preventic China Systems, Isaac Goldstein
Case No. D2011-0026
1. The Parties
The Complainant is VIRBAC of Carros, France, represented by Inlex IP Expertise, France.
The Respondent is PrivacyProtect.org of Munsbach, Luxembourg; Mantow Tian, Preventic China Systems of Shanghai, the People’s Republic of China; Isaac Goldstein of Hong Kong, SAR of China (collectively referred to hereafter, except where individually identified, as the “Respondent”) .
2. The Domain Name and Registrar
The disputed domain name <preventic.com> is registered with RegisterMatrix.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2011. On January 6, 2011, the Center transmitted by email to RegisterMatrix.com Corp. a request for registrar verification in connection with the disputed domain name. On January 13, 2011, RegisterMatrix.com Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 20, 2010. On January 13, 2011, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On January 20, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center has verified that the Complaint together with the amendment to the Complaint satisfy 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”).
On January 24, 2011, the Center transmitted an email to the parties as follows:
“The Center has taken note that the present case involves seemingly distinct registrants, as well as of the Complainant’s submissions in the Complaint regarding Respondent identity, commonality and requested consolidation.
The Center further notes […] that there would appear to be at least prima facie grounds sufficient to warrant putting the Complainant’s request for consolidation before a Panel.
[…] A copy of the Complaint will be duly forwarded to the contact information of all identified registrants, and a response (or responses) will be accepted by the Center from any who wish to submit a reply to the Complaint, and placed before the panel for consideration in due course.”
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 13, 2011.
On January 22, 2011, the Center received an email from Mantow Tian informing the Center:
“We purchased the domain from Isaac Goldstein for our company website. We will contact Chinese authorities and courts if you steal our domain name.”
The Respondent did not submit any formal Response. Accordingly, the Center notified the parties of the Respondent’s default on February 14, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 18, 2011. 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 company incorporated in France and the owner of an international and several national registrations for the trade mark PREVENTIC (the “Trade Mark”), the earliest registration dating from 1980, including a registration in China, where the Respondent is based.
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on January 27, 2000.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant was founded in France in 1968. With a turnover of Euro 467.4 million in 2009, the Complainant ranks today as the 8th largest veterinarian pharmaceutical group in the world. Its wide range of vaccines and medicines are used in the prevention and treatment of the main pathologies for both companion and food-producing animals.
The Complainant is present in more than 100 countries with around 2,900 employees and is very well-known worldwide.
The Complainant has used the Trade Mark continuously since 1985 in respect of dog collars and related products used in order to prevent flea and tick infestations in dogs.
The disputed domain name was first registered by the Complainant in 2000. In 2010, due to the Complainant’s technical contact for its domain name registrations having left the Complainant’s employment, the Complainant inadvertently failed to renew its registration for the disputed domain name. As a result of the Complainant’s failure to renew the disputed domain name, it was subsequently registered by the Respondent.
The disputed domain name is identical to the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the Trade Mark nor has the Respondent been authorised by the Complainant to use the Trade Mark. The Trade Mark is a fanciful word created by the Complainant to designate its veterinary products. It is not a common word in English or in French. Simple Internet searches under the Trade Mark immediately refer to the Complainant and its products under the Trade Mark.
The Respondent must have been aware of the existence of the Trade Mark when it registered the disputed domain name due the notoriety of the Trade Mark worldwide.
The Respondent has made no active use of the disputed domain name and the disputed domain name does not correspond to the Respondent’s name. The Respondent does not conduct any activities in the veterinary field.
The Respondent Isaac Goldstein is an individual person identified thanks to his Twitter account in which he indicates:
“I own many premium domain names, and I am currently investing in several coming web projects” .
The Respondent Isaac Goldstein has previously been ordered to transfer domain names to their legitimate owners (ChemRite CoPac, Inc. v. Isaac Goldstein, WIPO Case No. D2010-0279; and Vanguard Trademark Holdings USA LLC v. PrivacyProtect.org / Domain Admin, NAF Claim No. FA1338228).
The disputed domain name has been linked to a parking page with commercial links, including links to websites of the Complainant’s competitors in the field of veterinary products (the “Website”).
The disputed domain name was registered and is being used in bad faith.
The Respondent registered the disputed domain name in order to obtain financial benefit either by selling the disputed domain name or by taking advantage of the Trade Mark to generate pay-per click traffic on the Website.
The Complainant sent several cease and desist letters to the Respondent but did not receive a response other than, in the case of PrivacyProtect.org, an acknowledgment of receipt.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the disputed domain name is linked to a parking page including commercial links in both English French;
(2) The Website is not in Chinese and is thus not direct to the Chinese public;
(3) It clearly appears that the Respondent understands the English language since the Website is directed to English and French speaking Internet users.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel also notes the Respondent sent an email to the Center in fluent English on January 22, 2011.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many years the date of registration of the disputed domain name by the Respondent.
The disputed domain name contains the Trade Mark in its entirety.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over three decades. Furthermore, the Complainant was previously the owner of the disputed domain name from 2000 until 2010.
There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has been using the disputed domain name in respect of the Website which is a parking website generating pay per click revenue, presumably for the Respondent. Furthermore, although as at the date of this decision the Panel was unable to find any commercial links relating to the veterinary field on the Website, the Complainant has submitted evidence together with the Complainant that the Website has previously contained commercial links to websites of the Complainant’s competitors, including websites in respect of veterinary dog collars.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name. Whilst in certain circumstances, particularly where the Respondent is able to submit compelling evidence to suggest that it has no knowledge of the complainant or trade mark in question, operation of pay per click parking websites can amount to a legitimate use, in all the circumstances of this proceeding, the Panel concludes that the disputed domain name has not been registered and used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
In all the circumstances, the Panel concludes that the Respondent Isaac Goldstein registered the disputed domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s registration costs. In reaching this conclusion, the Panel refers in particular to the posting on the Twitter account of Isaac Goldstein which suggests he is in the business of registering and trading in third party domain names, and to the email from Mantow Tian to the Center stating that Mantow Tian purchased the disputed domain name from Isaac Goldstein. The Panel also notes there have been several previous UDRP decisions adverse to Isaac Goldstein, including the decision cited by the Complainant in the Complaint.
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The evidence establishes that the Respondent is using the disputed domain name in connection with the Website, being a pay per click site provided commercial links to third party websites. There is also evidence that, at least prior to filing of the Complaint, the Website provided sponsored links in respect of veterinary products and in particular veterinary dog collars of the Complainant’s competitors. The Panel finds such conduct is likely to cause confusion with the Trade Mark as to the sponsorship, affiliation or endorsement of the Website by the Complainant.
The Panel also considers that, in the circumstances of this case, the failure of the Respondent to respond to the Complainant’s letters of demand and to file a Response further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). The Panel further concludes that the history surrounding the opportunistic registration of the disputed domain name following the inadvertent lapsing of its prior registration by the Complainant and the circumstances surrounding its subsequent transfer from Isaac Goldstein to Mantow Tian (including the aggressive and groundless threat made by Mantow Tian to the Center) all provide further grounds in support of a determination of registration and use in bad faith on the part of the Respondent.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <preventic.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: February 23, 2011