WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alter Farmacia, S.A. v. Domain Administrator, See PrivacyGuardian.org / Chen Lu
Case No. D2019-0473
1. The Parties
The Complainant is Alter Farmacia, S.A. of Madrid, Spain, represented by Elzaburu, Spain.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Chen Lu of Yizhong, Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <nutribenchina.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2019, the Registrar 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 March 1, 2019 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 amended Complaint on March 6, 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 of the Complaint, and the proceedings commenced on March 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.
The Center appointed Steven Auvil as the sole panelist in this matter on April 23, 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
The Complainant, based in Madrid, Spain is a manufacturer of infant food and dietary products for newborns through 5 year olds. The Complainant has been in business for over 55 years and it is present in 30 countries across four continents. It is the owner of registered trademarks for the word marks NUTRIBEN and NUTRIBÉN for dietetic food and substances adapted for medical use, food for babies, dietary supplements, foodstuffs of animal origin and plant origin, non-alcoholic beverages, and services related to advertising, business management, and business administration.
The Complainant is the owner of the NUTRIBÉN trademark used in connection with the well-known “Nutriben” branded products in China. The word mark NUTRIBÉN (Reg. Nos. 11111691, 11111687, 11111688, 11111689, 11111690, and 11111686) all registered in China on July 11, 2013. The word mark NUTRIBÉN (Reg. No. and 13372247) also registered in China on January 28, 2015. The Complainant was the first Spanish infant food company to register formulas and have its NUTRIBEN products authorized by the Chinese Food and Drug Administration.
The Complainant officially promotes its business and distributes its products in China through the following website at “www.nutriben.cn”.
The disputed domain name resolves to a website with pornographic content.
The disputed domain name was registered on December 25, 2018.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is identical or confusingly similar to the NUTRIBÉN trademarks because it simply reproduces them with the addition of the geographical name “China” and of the descriptive character of the word china, the distinctive part of the disputed domain name in NUTRIBÉN.
The Complainant claims that anyone who sees the disputed domain name is bound to mistakenly believe that the disputed domain name is NUTRIBÉN’s direct-to-consumer digital channel in China and/or an authorized distributor in the country, thereby creating confusion by establishing an association with the Complainant’s registered trademarks. Further, the disputed domain name is being used for services that have absolutely no connection with the goods and services associated with registered NUTRIBÉN trademarks.
The Complainant further alleges that the Respondent has no rights or legitimate interest in the term “nutribén”. The Complainant found no registered trademarks, tradenames, or bona fide offering of goods and services associated with disputed domain name that belong to the Respondent. It also found no information that would give the Respondent legitimate rights in the disputed domain name, as the Respondent’s display of explicit content on the disputed domain name diverges from what consumers of the Complainant’s goods and services would expect to encounter from the disputed domain name.
The Complainant alleges that it has not authorized the Respondent to use the registered NUTRIBÉN trademarks as a licensee or business associate. The Complainant further claims that the Respondent uses the disputed domain name to generate traffic and income by diverting Internet users seeking information on the Complainant’s products with pop-up ads and links.
Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant’s NUTRIBÉN trademarks are registered, well known, and used in a number of countries including China. The Complainant claims that the Respondent must have known of the Complainants’ rights in the NUTRIBÉN trademarks and its reputation because search results for the term “nutriben” on Baidu (China’s most prominent search engine) exclusively include goods and services cover by the NUTRIBÉN trademarks. The Complainant also claims that the disputed domain name’s use of the geographic term “china” with the term “nutriben” is an attempt by the Respondent to divert Internet users to its website for a commercial gain. Further, the Complainant clams that the disputed domain name gives users the false impression that the disputed domain name is associated with the Complainant’s activities in China. Additionally, the disputed domain name is not only confusingly similar to the Complainant’s NUTRIBÉN trademarks, but also its official website in China at “www.nutriben.cn”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is a manufacturer and provider of infant food and dietary products for infants. The Complainant is also the owner of the NUTRIBÉN trademarks in China for its products, with a majority of such marks registered as early as July 11, 2013.
In addition to its registered trademarks, the Complainant officially promotes its business and distributes its products in China through the following website at “www.nutriben.cn”.
The word “China” in the disputed domain name is not sufficient to avoid the confusingly similar caused by the inclusion of NUTRIBEN in the disputed domain name. China is simply a geographical term, also designating one of the countries in which the Complainant provides its infant food and dietary products under the Complainant’s registered trademarks. Thus, the dominant part of the disputed domain name comprises the term “nutriben”, which is identical to the Complainants registered trademarks. See The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited, WIPO Case No. D2016-2290 (wherein the panel quoted Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, that “domain names are identical or confusingly similar to a trademark for purposes of the Policy, ‘when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name’.”)
By using the NUTRIBÉN trademark as the dominant part of the disputed domain name, the Respondent exploits the goodwill of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
In view of the grounds above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark NUTRIBÉN in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the Complainants allegations and evidence, NUTRIBÉN is a prominent and distinctive trademark registered in China by the Complainant. Moreover, the Complainant did not license or otherwise authorize use by the Respondent of the trademarks in China. In the Panel’s view, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant 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.” Here, the Respondent has failed to respond to the Complainant’s contentions.
The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to generate traffic and income for its unrelated sexually explicit content by misleadingly diverting consumers for its own commercial gain. In fact, such use appears to tarnish the registered NUTRIBÉN trademarks. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; or Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (“Tarnishment in this context [legitimate interest] refers to such unseemly conduct as linking unrelated pornographic, violent or drug related images or information to an otherwise wholesome mark.”)
As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
In the Panel’s view, based also on the prominence of the Complainant’s goods and services in China, it is obvious that at the time the Respondent registered the disputed domain name it must have had the NUTRIBÉN mark in mind as the NUTRIBÉN and NUTRIBEN marks had already been registered globally for decades and they had acquired a high reputation as being a well-recognized trademark. Other panels have considered the reputation of the earlier rights to be indicative of bad faith. See decisions in Sanofi v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2654; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246;or Missoni S.p.A. v. 米索尼股份有限公司/Missoni Limited, WIPO Case No. D2015-0843. The Respondent’s knowledge of the NUTRIBÉN mark is further enhanced by the similarities between the Complainants official website in China and the disputed domain name.
Just like the panel in LEGO Juris A/S v. Danaka Tarou, WIPO Case No. D2015-0315, the Panel in this case finds that the only credible explanation for the use of the disputed domain name is to take advantage of the similarity between it and the Complainant’s distinctive and well-known NUTRIBÉN trademarks, for commercial advantage.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, so that also the third and last element of paragraph 4(a) of the Policy is met.
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 <nutribenchina.com> be transferred to the Complainant.
Date: May 8, 2019