WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Abbott Laboratories v. Yeyu
Case No. D2018-2952
1. The Parties
The Complainant is Abbott Laboratories of Abbott Park, Illinois,United States of America (“United States”), represented by Steven M. Levy, Esq., United States.
The Respondent is Yeyu of Nanning, China.
2. The Domain Name and Registrar
The disputed domain name <similac.top> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2018. On December 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 29, 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. In response to a request for amendment by the Center, the Complainant filed an amended Complaint on January 11, 2019.
On January 9, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 9, 2019. The Respondent requested that Chinese be the language of the proceeding on January 10, 2019.
The Center verified that the Complaint together with the amended 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 proceedings commenced on January 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2019. The Respondent sent email communications on January 11, 15, 16 and 18, 2019, and filed a response on January 12, 2019. In response to the Respondent’s emails, the Complainant submitted supplemental filings on January 14 and 15, 2019. On February 8, 2019, the Center notified the Parties of Commencement of Panel Appointment Process.
The Center appointed Karen Fong as the sole panelist in this matter on February 20, 2019. 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
Founded in 1888 in the United States, the Complainant is a global health care company that researches, develops, manufactures and markets human and animal directed products and services that span the continuum – from prevention and diagnosis to treatment and cure. The Complainant’s principal businesses are pharmaceuticals, nutritional and medical products, including diagnostics and cardiovascular devices. The Complainant serves customers in more than 150 countries, with an employee base of over 94,000 at various manufacturing, distribution, research and development, and other locations around the world. In its fiscal year ending December 31, 2016, the Complainant reported revenues of USD 20.8 billion.
The Complainant is the owner of the trade mark SIMILAC which has been used since 1926 in connection with breast milk supplement for infants and other infant, toddler and mother related nutritional products and services. SIMILAC products are sold in nearly 100 countries worldwide through both conventional and online retail outlets. The brand is promoted through worldwide print, web, and trade show advertising in many different languages. In particular, the Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its various websites including “www.similac.com” and “www.abbottmama.com.cn” (in China) among others. Through these websites, the Complainant provides information to prospective customers around the world. The Complainant also uses social media to engage with existing and potential customers and it operates the SIMILAC Club to offer discounts and purchase incentives. The SIMILAC products have also been the subject of worldwide news coverage in such well-known outlets such as the New York Times, Forbes and Reuters, and others. As a result of the Complainant long and extensive usage and promotion of the SIMILAC trade mark, it has have become globally famous and widely recognized by consumers.
The Complainant owns trade mark registrations for SIMILAC throughout the world including the following trade marks in the United States (“US”), the European Union (“EU”) and China:
- US Trade Mark Registration No. 0227046 for SIMILAC in Class 30 registered on April 26, 1927;
- US Trade Mark Registration No. 2465112 for SIMILAC in Class 5 registered on July 3, 2001;
- EU Trade Mark Registration No. 40402 for SIMILAC in Classes 5, 29 and 30 registered on June 5, 2000;
- China Trade Mark Registration No. 5940274 for SIMILAC in Class 5 registered on January 14, 2010; and
- China Trade Mark Registration No. 15412639 for SIMILAC in Class 29 registered on November 14, 2015 (individually and collectively, the “Trade Mark”).
The Respondent who is based in China, registered the Domain Name on January 29, 2018. It is not connected to an active website. On February 5, 2018, the Complainant’s representatives sent the Respondent a cease and desist letter. Despite a few reminders, the Respondent did not respond and continued to use the Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent contends as follows:
1. The Domain Name in Chinese means “private lac” and can be used for business licence registration address in China.
2. SIMILAC is not famous in China, and he was not aware of the Trade Mark until he did a search on the Baidu.com search engine. The registration of the Domain Name was innocent.
3. The meaning of SIMILAC and <similac.top> are different.
4. Just because the Complainant owns the Trade Mark does not mean that it can have a monopoly on all domain names which has the Trade Mark as the second level domain especially since the combination of both will give the domains names different meanings. If the Complainant wants to have a monopoly, it should register the Trade Mark in all the top-level domains.
5. This is the case of a big company bullying a small one.
6. There has been no malicious use of the Domain Name. The Respondent prepare to use the Domain Name for his personal website and never offered the Domain Name for sale to the Complainant.
6. Discussion and Findings
6.1 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English as the Domain Name is in Western letters which are understood in the English language. The Complainant is headquartered in the United States and it operates its internationally diverse offices in the English language. If the Complainant has to conduct the proceeding in Chinese, it would incur substantial additional expense and inconvenience which would also delay the proceeding.
The Respondent submits that the language of the proceeding should be Chinese as he is Chinese, his native language is Chinese, he is not familiar with the English language and the Domain Name was registered in China with a Chinese Registrar.
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 that some of the Respondent’s emails are written in Chinese and English. Further the Respondent did respond to the Complaint which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. 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 that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
6.2 Supplemental Filings
The due date for filing the Response was February 5, 2019. The Respondent sent a number of emails as well as a response using the Center’s template before the due date. The Panel accepts that all the above forms the Response particularly since the Respondent has no legal representation. The Complainant’s unsolicited supplemental filings in response to the Respondent’s emails are not accepted. Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The purpose of the UDRP is to provide for a quick and inexpensive way to resolve domain name disputes. Each party has one opportunity under the Rules to put forward its entire case. The Complainant being the initiator of the proceedings has an obligation to anticipate the possible arguments that the Respondent may put forward as there may be no other opportunity to file additional evidence. It is only in exceptional circumstances that a Panel will allow additional evidence to be filed. Further, the Complainant, in its application to the Center to file additional evidence, did not provide any reason why such additional evidence would be relevant to the case and why it was unable to provide that information in the Complaint. Hence it is not an appropriate case under the circumstances for any more additional evidence to be considered.
6.3 Substantive Issues
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.top”. It is viewed as a standard registration requirement ( section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 , that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element.
The Complainant submits that the Respondent is not commonly known by the Trade Mark or the Domain Name. The Respondent has not provided any evidence that he legitimately operates a business or other organization under the name “Similac” or that he owns any trade mark or service mark rights in the name. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Trade Mark or apply for any domain name that incorporates the Trade Mark. There is no evidence of any use or demonstrable preparation to use the Domain Name in connection with any bona fide offering of goods or services as the Domain Name resolves to an inactive website. Neither is there any evidence of there being any legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he chose to register the Domain Name comprising a trade mark to which he has no connection. His explanation that it means “private lac” when translated to Chinese and that he was not aware that it was a well-known trade mark does not provide him with rights or legitimate interests under the Policy especially noting that no evidence has been provided to support rights or legitimate interests under the Policy. The Panel is unable to conceive of any basis upon which the Respondent could sensibly claim to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name especially since the Trade Mark is a coined word with no other dictionary significance.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.
The fact that the Trade Mark is well known globally as well as in China, the Complainant has a dedicated Chinese website for its activities, there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name are also significant factors to consider (as stated in section 3.2.1 of WIPO Overview 3.0 ). In light of the above, the Panel finds that registration is in bad faith.
The fact that the Domain Name is resolving to an inactive website does not prevent a finding of bad faith under the “passive holding” principles which are laid out in section 3.3 of the WIPO Overview 3.0 . In this case the totality of the circumstances to be considered include the fame of the Trade Mark, the failure of the Respondent to pay the renewal fees and the implausibility of any good faith use for which the Domain Name can be put to.
From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element.
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 <similac.top> be transferred to the Complainant.
Date: February 28, 2019