WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sun Pharmaceutical Industries Ltd. v. Cong Ty Co Phan Duoc Pham Mat Troi Moi
Case No. D2021-0001
1. The Parties
The Complainant is Sun Pharmaceutical Industries Ltd., India, represented by Wadhwa Law Chambers, India.
The Respondent is Cong Ty Co Phan Duoc Pham Mat Troi Moi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <newsunpharma.com> (the “Domain Name”) is registered with Mat Bao Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2021. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 8, 2021, 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.
The Center sent an email communication to the parties in English and Vietnamese on January 28, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Domain Name is Vietnamese. The Complainant submitted a request for English to be the language of the proceeding on February 1, 2021. The Respondent did not submit any communication regarding the language of the proceeding.
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 of the Complaint, and the proceedings commenced on February 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on March 31, 2021. 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 publicly listed and one of the leading pharmaceutical companies in India. The Complainant is engaged in the manufacturing, trading, and marketing of pharmaceuticals formulations, active pharmaceutical ingredients (API), nutraceuticals and nutritional supplements. The Complainant is the world’s fourth largest Specialty Generic Pharmaceutical Company. The Complainant has manufacturing units and a workforce of more than 30,000 employees worldwide and it offers more than 2,000 products across 150 countries.
The Complainant is the owner of numerous trademarks with the textual elements SUN and SUN PHARMA in and outside India, such as Indian registration number 2203606 and European Union registration number 11796241. The Complainant also owns several domain names, including <sunpharma.com>.
According to the Registrar, the Domain Name is set to expire on August 6, 2021. At the time of drafting the Decision, the Domain Name resolved to a blank web page with the text “Apache is functioning normally” in the top left corner.
5. Parties’ Contentions
The Complainant requests that the language of the proceedings be English because:
- Nationality of Parties (i.e., India and Vietnam).
- The Domain Name is in English, consisting of the English words “new”, “sun”, and “pharma”.
- The Complainant is not in a position to conduct the proceedings in Vietnamese without additional expense and delay due to the need for translation of the Complaint and the supporting Annexes.
- English is a common language in global business also in Vietnam, where the Respondent is located.
- The Registrar has an English version of the Registration Agreement/Terms and Conditions.
The Complainant has registered trademark rights in SUN and SUN PHARMA. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name adopts the Complainant’s trademarks. The addition of the prefix “new” only leads the public to think that the Domain Name is somehow connected to the Complainant’s trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademark. The Respondent has not used the Domain Name in connection with a bona fide offering of goods and services. The Respondent has merely registered an identical/similar domain name and parked the same with the intent of making illicit commercial gain.
The Complainant argues that the Respondent due to the status of the Complainant must have had knowledge of the Complainant and its trademark at the time of registration of the Domain Name. The Respondent has adopted Complainant’s trademark without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users and/or commercial gain by selling the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. Importantly, paragraph 11(a) also states that the determination of the language of the proceeding is “[…] subject to the authority of the Panel […], having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement is Vietnamese. The Complainant submitted its Complaint in English, and requested English to be the language of the proceeding.
The Panel notes that the Domain Name is English consisting of the English words “new”, “sun”, and “pharma”, and English is a common language in business. Moreover, the Center has sent the notifications to the Respondent in both English and Vietnamese, providing the Respondent a fair chance to object. The Panel determines that the language of this proceeding to be English, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.
Turning to the merits of the case, in order to prevail, the Complainant must prove the three elements in paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Complainant has established rights, including in the trademark SUN PHARMA. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety with the addition of “new”. The addition does not prevent a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. There is no evidence that the Respondent has used the Domain Name in connection with a bona fide offering of goods and services. In addition, the Panel considers that the nature of the Domain Name carries a risk of implied affiliation or association.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Taking into account the status of the Complainant’s trademark, the Panel believes it is probable that the Respondent had knowledge of the Complainant and its trademark at the time of registration of the Domain Name.
Based on the case file it seems likely that the Respondent has adopted Complainant’s trademark for the purpose of capitalizing on the reputation of the trademark by diverting Internet users and/or commercial gain by selling the Domain Name. The lack of active use of the Domain Name does not as such prevent a finding of bad faith, see WIPO Overview 3.0, section 3.2. The fact that the Respondent has not replied to the Complainant’s contentions, further points to bad faith.
The Panel finds that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name <newsunpharma.com> be transferred to the Complainant.
Date: April 14, 2021