WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zambon S.p.A. v. José Manuel Ordoñez
Case No. D2012-1232
1. The Parties
The Complainant is Zambon S.p.A. of Bresso, Italy, represented by Studio Barbero, Italy.
The Respondent is José Manuel Ordoñez of Cadiz, Spain.
2. The Domain Name and Registrar
The disputed domain name <espidifen.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2012. On June 18, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On June 18, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2012. On July 12, 2012, the Respondent sent two (essentially identical) email communications in Spanish to the Center.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on July 17, 2012. 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 Panel has noted that in the email communications sent (twice) on July 12, 2012, the day the Center notified the Respondent’s default, the Respondent apologizes for his delay. The Panel has decided, in the exercise of its discretion, to admit the Respondent’s communication and to take into account the views expressed in it. The Panel notes that the late-admitted communication is in Spanish while the language of the Registration Agreement in the present case is English. However, as the Panel reads and speaks Spanish this factor does not pose any particular impediment to dealing with this case properly.
4. Factual Background
Pertinent substantiated or uncontested facts arising from the Complaint and its Annexes include the following: the Complainant is an established manufacturer of drugs and pharmaceuticals, with significant international sales; among the Complainant’s products is an analgesic drug called Spidifen, which is marketed in Spain and other Spanish-speaking countries under the name “Espidifen”; the ESPIDIFEN trademark was first registered in Spain in 1995; the Complainant holds numerous other trademarks for ESPIDIFEN in Mexico, Chile, Peru, Venezuela and other Spanish-speaking countries. It further appears that the Complainant has been very active in promoting and advertising its products, including through the Internet on its site “www.zambon.es”, which is for Spanish customers and includes promotion of Espidifen products.
The disputed domain name was created on October 31, 2007, and transferred to the Respondent on November 12, 2009, and has at various times been used as a “pay-per-click” site and for the sale of various products, including pharmaceuticals. At present the disputed domain name redirects to a web page where it is required to insert a username and password in order to access the site.
The Respondent appears to be an individual in Spain.
Further factual points or contentions are evoked below as necessary.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant also points out that prior to the sending of cease and desist letters the disputed domain name was being openly used for selling of products competitive to the Complainant’s. The Complainant further asserts that Espidifen is its top-selling product in Spain (annual sales in the range of EUR 27-30 million) where it markets heavily. The Complainant thus asserts that it is obvious that the disputed domain name, which it has never authorized or licensed the Respondent to use, has been registered and is being used in bad faith. The Respondent is also alleged to have sought to sell the disputed domain name in excess of its registration costs. The Complainant requests that the disputed domain name be transferred to it.
The Respondent replied to the Complainant’s contentions, with the late but accepted email referred to above. The gist of the Respondent’s position is that it never intended to prejudice third-party rights by use of the disputed domain name (“[…] nunca ha sido ni será nuestra intención prejudicar a terceros con el uso de este dominio”.) The Respondent asserts that it registered the disputed domain name in support of its plans or project to act as graphic designer. Thus the word “Espidifen” is,the Respondent asserts, an abbreviation for “Fen-Estudio Diséño Pixel”, and this abbreviation merely explains the “naturaleza” of the purported graphic design project. The Respondent asserts that the project has not been put into effect for four years due to certain persons’ personal situations and the economic crisis. The Respondent’s email refers to attempts to buy/sell the disputed domain name but is quite unspecific as to price and negotiations.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name identically incorporates the entirety of the Complainant’s trademark, and is therefore identical or confusingly similar to that mark under paragraph 4(a)(i) of the Policy .
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case concerning the Respondent’s lack of rights or legitimate interests in the disputed domain name. Also, the Complainant’s assertion that it has never licensed or granted permission for the use by the Respondent of the well-known trademark ESPIDIFEN is not contradicted by the Respondent in its otherwise self-serving email. The Respondent does, however, claim that <espidifen.com> was registered as an abbreviation of “their graphic design project” and, according to the Respondent; it is an amalgam of “Fen – Estudio Diséňo Pixel.” But there is no explanation or proof of any design project in connection with the disputed domain name, and the acronym or abbreviation is recorded in a convoluted way that just happens to coincide exactly with the Complainant’s well-known mark. This has all the hallmarks of an insincere after-the-fact justification and does not, on the evidence before the Panel, establish any rights or legitimate interests of the Respondent in the disputed domain name. Accordingly the element of paragraph 4(a)(ii) of the Policy is also established.
C. Registered and Used in Bad Faith
The Panel has above determined that the Respondent has no rights or legitimate interests in the disputed domain name, but has rather implausibly tried to manufacture a basis for such rights. On the facts of this case it is clear that the original registration and transfer of the disputed domain name, when the Espidifen product was well-known and highly marketed in Spain, was not serendipitous. The Panel accepts the Complainant’s argument and proof that the registration was done in bad faith to profit from the relative fame of and consumer identification with the Espidifen product.
The Respondent’s subsequent use of the disputed domain name for a “pay-per-click” site to sell various products, including pharmaceuticals is also demonstrated to be in bad faith. This includes proof of using the disputed domain name to attract Internet users for profit, including by sales of products analogous to or competitive with those of the Complainant and an apparent attempt to sell or bargain to sell the disputed domain name at a value higher than cost. While the site reached through the disputed domain name appears to have subsequently become inaccessible due to requirements of username and password, this does not preclude the above finding of bad faith use of the disputed domain name.
It follows that the Complainant has also met its burden of demonstrating bad faith registration and use under Paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <espidifen.com> be transferred to the Complainant.
Date: August 8, 2012