World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N.V. Nutricia v. Zhizhong Wu

Case No. D2011-1793

1. The Parties

Complainant is N.V. Nutricia of Zoetemeer, Netherlands, represented by Dreyfus & associés, France.

Respondent is Zhizhong Wu of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <cnkaricare.com> is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2011. On October 20, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On October 21, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On October 25, 2011, the Center transmitted an email to HiChina Zhicheng Technology Ltd. noting that the disputed domain name was scheduled to expire on December 11, 2011 and requesting (1) confirmation that the disputed domain name would remain locked during the proceeding and (2) confirmation regarding specific further actions required by the parties, if any, to ensure that the disputed domain name would remain locked during the proceeding. On October 25, 2011, HiChina Zhicheng Technology Ltd. responded to the Center noting that the disputed domain name would remain locked for 30 days after its December 11, 2011 expiry date and that renewal fees would need to be paid by one of the parties in order for the disputed domain name to remain locked for a longer period of time. The Center communicated this request for renewal fees to the parties and the registrar on October 25, 2011. On December 26, 2011, Complainant confirmed the disputed domain name has been renewed.

On October 25, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On October 27, 2011, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2011.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 12, 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

Complainant was established in 1901 and specializes in baby food and medical nutrition products. Complainant trades under the name Nutricia and owns multiple trademark registrations for KARICARE for goods in Classes 3, 5, and 29 in New Zealand and Australia. Complainant sells baby formula and related nutritional products under its KARICARE trademark.

The disputed domain name was created on December 10, 2010.

5. Parties’ Contentions

A. Complainant

Complainant explains that its KARICARE trademark was derived from a town named “Karitane” which is located in New Zealand and is the hometown of the doctor which created the baby formulas which are sold by Complainant under the KARICARE trademark. Complainant contends that its KARICARE trademark has been in use since 1993 and has since become well recognized in countries throughout the world including countries in Asia.

Complainant notes that the disputed domain name <cnkaricare.com> was registered by Respondent on December 10, 2010 and has provided a copy of a page featured at the disputed domain name which displays photos of Complainant’s products and a link to Complainant’s <nutriciababy.co.nz> domain name. Complainant maintains that it sent a cease and desist letter to Respondent regarding the disputed domain name on February 2, 2011, and that the host deactivated the website shortly thereafter. Complainant has provided a copy of this cease and desist letter and notes that Respondent did not reply to this communication.

Complainant contends that the use of its trademark and the prefix “cn” to compose a domain name creates a likelihood of confusion because “cn” is recognized as a geographical abbreviation for China and the disputed domain name could be mistaken by users for a domain name dedicated to the presence of its KARICARE trademark and products in China. Complainant argues that Respondent has not been authorized by Complainant to register a domain name incorporating the KARICARE trademark, and notes that Respondent is not affiliated with Complainant, is not commonly known by the disputed domain name, and has not made noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent’s use of the domain name to advertise goods featuring the KARICARE mark and incorporation of a link to Complainant’s website is evidence of passing off.

Regarding bad faith registration, Complainant maintains that its mark is well known, citing the decision held in N.V. Nutricia v. Moniker Privacy Services / Jorge Romero, WIPO Case No. D2011-0215 (which refers to Complainant’s products as “widely recognized in relation to baby nutrition and feeding”) and three (3) other decisions involving the incorporation of other third party trademarks into disputed domain names. Complainant also cites the results of Internet searches for its trademark which reveal links to Complainant’s products and news stories regarding Complainant’s trademark as evidence that Respondent should have been aware of Complainant and that the disputed domain name was registered in bad faith. Regarding bad faith use, Complainant cites the use of the disputed domain name by Respondent to display webpages featuring Karicare products and alleges that products sold through the disputed domain name, if any, may have been counterfeit.

Complainant requests that the disputed domain name <cnkaricare.com> be transferred.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has not acknowledged any communications transmitted by the Center.

The content on the website at the disputed domain name features text displayed in both the English and Chinese languages. The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. Taking both of the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay.

B. Identical or Confusingly Similar

The disputed domain name <cnkaricare.com> is confusingly similar to Complainant’s KARICARE trademark in that it combines Complainant’s KARICARE trademark with the prefix “cn”. It has been held that the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. Further, the Panel notes that the abbreviation “cn” corresponds to the International Organization for Standardization (“ISO”) country code and the country code top level domain (ccTLD) abbreviation corresponding to China. Because “cn” corresponds to the ISO and ccTLD codes for China, its use in the disputed domain name contributes to the likelihood that consumers will believe that the products offered originate from a China-based affiliate of Complainant. This likelihood of confusion is further accentuated given that the owner of the website is based in China and some of the content of the disputed domain name has been displayed in Chinese. Prior cases have held that the incorporation of an ISO or ccTLD code is a non-distinctive element which does not avoid confusing similarity. See, e.g., Samsung Electronics, Co., Ltd. v. Maksim, WIPO Case No. D2010-1274 and eBay Inc. v. David Sach, WIPO Case No. D2009-1083.

The Panel finds that the requirements of paragraph 4(1)(i) of the Policy have been satisfied.

C. Rights or Legitimate Interests

Complainant has provided evidence of trademark rights in KARICARE which are recognized in Australia and New Zealand. Complainant has also provided examples of its use of the KARICARE trademark for baby formulas and related products.

Complainant has not provided evidence of trademark rights in China, the jurisdiction cited in WhoIs records as Respondent’s country of residence. However, it is not a requirement of the Policy that a complainant provide evidence of established trademark rights in the jurisdiction of a respondent’s residence. See, e.g., PWC Business Trust v. Ultimate Search, WIPO Case No. D2002-0087 (citing a registration in New Zealand as an example of the complainant’s trademark rights in a case involving a respondent based in China). In this case Complainant’s trademark is a distinctive trademark given its lack of dictionary meanings and the evidence presented by Complainant showing that simple Internet search queries using the KARICARE trademark yield results predominantly related to Complainant’s goods. This combined with the lack of evidence in the record indicating that Respondent is licensed to use Complainant’s trademarks, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term “karicare” or “cnkaricare” supports a finding in Complainant’s favor.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

D. Registered and Used in Bad Faith

Respondent’s registration of the disputed domain name incorporating Complainant’s KARICARE trademark in its entirety is evidence of bad faith. It is difficult to believe that Respondent was unaware of Complainant given that the similarities between the disputed domain name and Complainant’s distinctive KARICARE trademark. Complainant’s KARICARE trademark is an arbitrary trademark with no apparent meaning in any language. The combination of this trademark in its entirety with the geographic abbreviation “cn” is clearly an example of an attempt to associate the disputed domain name with Complainant and a registration made in bad faith.

It is clear from the record that the disputed domain name has been used in bad faith. Specifically, a page featured at the disputed domain name <cnkaricare.com> at one time featured photos of products branded with Complainant’s Nutricia name and KARICARE trademark and a link to Complainant’s <nutriciababy.co.nz> domain name. The use of the disputed domain name to advertise goods identical to those offered by Complainant under Complainant’s trademark and display links to Complainant’s website is indicative of intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. Continued use of the disputed domain name in this manner could lead consumers to mistakenly believe that the disputed domain name is offered, sponsored, endorsed, or otherwise approved by Complainant. Moreover, the disputed domain name incorporates the “cn” country abbreviation for China and displays content in the Chinese language. These factors combined with the presence of Complainant’s trademark and domain name address on the website at the disputed domain name could lead consumers to believe that the disputed domain name serves as a Chinese website for Complainant.

The Panel finds that there is evidence of bad faith registration and use. Accordingly, the requirements of paragraph 4(a)(iii) have been satisfied.

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 domain name <cnkaricare.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Dated: December 28, 2011

 

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