WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visufarma S.p.A. v. Chen Jian Hua
Case No. D2018-0848
1. The Parties
The Complainant is Visufarma S.p.A. of Rome, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Chen Jian Hua of Shenzhen, Guangdong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <coqun.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 19, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On April 20, 2018, the Complainant confirmed the request in the Complaint that English be the language of the proceeding. The Respondent did not submit a language of proceeding request by the deadline of April 24, 2018.
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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceeding commenced on April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. The Response was filed in Chinese with the Center on May 10, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 29, 2018. 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 pharmaceutical company incorporated in Italy. One of the products of the Complainant is Coqun, a complementary product to hypotonic therapy treatment for the eye disease, glaucoma, with a patented formula (the “Product”).
The Complainant is the owner of registrations for the trade mark COQUN (the “Trade Mark”) in jurisdictions worldwide, including Italian registration No. 302014902312480, with a registration date of October 3, 2008, and European Union trade mark registration No. 4637831, with a registration date of August 3, 2006.
The Complainant has been using the Trade Mark for many years in Italy and abroad in respect of the promotion and sale of the Product.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain name <coqun.com> was registered on May 27, 2011.
D. The Website at the Disputed Domain Name
The disputed domain name resolves to a parking page with pay-per-click links which redirect to websites with pornographic content (the “Parking Page”). It is also stated on the Parking Page that the disputed domain name is for sale.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was not registered and is not being used in bad faith.
6. Discussion and Findings
6.1. 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.
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 order 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.
The Complainant has requested that the language of the proceeding be English, for the following reasons:
(i) The Respondent has replied to the Complainant’s bid for the purchase of the disputed domain name in English;
(ii) The Parking Page displays the English language link “The domain coqun.com may be for sale. Click here to inquire about this domain”, and the website associated with this link is in English; and
(iii) The Respondent is also the owner of other domain names which resolve to websites with both English and Chinese language content.
The Respondent, having received notice of the proceeding in both Chinese and English, did not file a language of proceeding request, but indicated his opposition to the Complainant’s English language request in the Response.
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.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel notes that the Respondent has not indicated that he does not understand English, and has not otherwise provided any reasons in support of his language request included in the Response, but has simply requested that the language of the proceeding be Chinese.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would 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 the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark COQUN (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Excluding the generic Top-Level Domain “.com”, the disputed domain name is identical to the Trade Mark.
The Respondent contends that the disputed domain name consists of the Romanised versions, “co” and “qun”, of two (unidentified) common words in Chinese. The Panel notes that the word “co” does not exist in the standard pinyin version of Romanised Chinese text; and would further query whether the Romanised text “qun” represents a commonly used Chinese character. In any event, the Panel considers that the submissions of the Respondent in this regard, even if correct, are not relevant to the question of confusing similarity or identity for the purposes of the first limb under paragraph 4(a) of the Policy.
The Respondent also contends that the disputed domain name was registered, in 2011, before the Complainant obtained any relevant rights in the Trade Mark. Although not relevant to the determination of the first limb under paragraph 4(a) of the Policy, such a contention, if correct, would be relevant to the Panel’s determination of the second and, in particular, the third limbs under the Policy (see WIPO Overview 3.0, section 1.1.3). The Panel notes, however, that the evidence on the record establishes that the Complainant first registered the Trade Mark in 2006 (see section 4.A. above).
The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that 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.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Parking Page, with pay-per-click links to websites with pornographic content. The disputed domain name is also offered for sale on the Parking Page.
The Respondent has acknowledged in the Response that he has not obtained any trade mark registrations (in China or elsewhere) for “coqun”, “co” or “qun”.
The Respondent contends that the use of parking pages is widely accepted; and that it is commonplace for trade mark owners to purchase domain names comprising their trade marks from third parties. Whether or not such submissions are correct does not, for the purposes of the Policy, give rise to any rights or legitimate interests in the disputed domain name on the part of the Respondent herein.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and 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 rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s use of the disputed domain name in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The evidence on the record indicates that the Respondent sought to take advantage of the Trade Mark when registering the disputed domain name, by gaining revenue from pay-per-click revenue derived via the Parking Page.
The Complainant’s uncontested evidence also shows that the Respondent replied to an email sent on behalf of the Complainant with an offer to sell the disputed domain name for USD 80,000. The Respondent complains that the email sent on behalf of the Complainant was sent anonymously, without identifying the Complainant or the fact it was sent on behalf of the Complainant. The Panel considers the fact the email was sent anonymously does not in any way diminish the uncontested evidence that the Respondent offered to sell the disputed domain name for USD 80,000 in its email response. The disputed domain name has also been offered for sale on the Parking Page. The Panel therefore concludes that bad faith has also been made out under paragraph 4(b)(i) 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.
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 <coqun.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: June 12, 2018