WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forest Tosara Limited v. 王晓文 (Wang Xiao Wen)

Case No. DCN2019-0008

1. The Parties

The Complainant is Forest Tosara Limited, Ireland, represented by SILKA Law AB, Sweden.

The Respondent is 王晓文 (Wang Xiao Wen), China.

2. The Domain Names and Registrar

The disputed domain names <sudocrem.cn>, <sudocrem.com.cn> are registered with 阿里云计算机有限公司(万网)(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in English on October 2, 2019. On October 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2019, 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 verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on October 9, 2019. In accordance with the Rules, Articles 17 and 49, the due date for Response was October 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2019.

The Center appointed Yijun Tian as the sole panelist in this matter on November 11, 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, Article 29.

4. Factual Background

A. Complainant

The Complainant, Forest Tosara Limited, is a company incorporated in Ireland. The Complainant develops, manufactures, and distributes pharmaceutical products, including Sudocrem. The Complainant has exclusive rights in the SUDOCREM and SUDOCREM related marks. The Complainant is the exclusive owner of numerous SUDOCREM trademarks worldwide, including the Chinese Trademark registered on May 14, 2003 (the Chinese Trademark registration number 3110689), and International Trademark registered on May 19, 2006 (the International Trademark registration number 886513), which designates China. The Complainant also registered numerous domain names which contain the SUDOCREM trademark, including <sudocrem.com> (created on May 2, 1999), <sudocrem.eu> (created on February 4, 2015), and <sudocrem.co.uk> (created on November 3, 1999).

B. Respondent

The Respondent is 王晓文 (Wang Xiao Wen), China. According to the Registrar’s verification response, the disputed domain names <sudocrem.cn> and <sudocrem.com.cn> were registered by the Respondent on October 11, 2018. The disputed domain names are being used for the websites “www.sudocrem.cn” and “www.sudocrem.com.cn”, and both disputed domain names are being offered for sale on the respective websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names <sudocrem.cn>, and <sudocrem.com.cn> are identical to the Complainant’s registered trademark SUDOCREM. The country code Top-Level Domain (“ccTLD”) “.cn” and “.com.cn” are irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names <sudocrem.cn> and <sudocrem.com.cn>.

The Complainant contends that the disputed domain names <sudocrem.cn> and <sudocrem.com.cn> were registered and are being used in bad faith.

The Complainant requests that the disputed domain names <sudocrem.cn> and <sudocrem.com.cn> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

According to Article 8 of the Rules, the language of the proceeding shall be Chinese, unless otherwise agreed by the Parties or decided by the Panel in the special circumstances.

The Complainant has requested that the language of the proceeding be English and presented the reasons. The Respondent did not make any submissions in relation to the language of the proceeding even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and in Chinese.

In accordance with Article 31 of the Rules, the Panel shall ensure that each Party be treated with equality and given a fair opportunity to present its case. Therefore, the Panel should take into account whether the Respondent is able to understand the language of the Complaint, and whether the Complainant would be disadvantaged by having to translate all the submissions into Chinese, when assessing the Complainant’s request for changing the language of the proceeding (See Laure de Sagazan v. 刘岩, WIPO Case No. DCN2019-0010).

On the record, the Respondent appears to be a Chinese resident and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient capacity to understand and use English. In particular, the Panel notes that, based on the evidence provided by the Complainant and the case file, (a) the disputed domain names includes Latin characters (“sudocrem”) rather than Chinese script; (b) the disputed domain names <sudocrem.cn>, and <sudocrem.com.cn> resolve to English websites, and the websites’ contents are in English rather than in Chinese; (c) the Center has notified the Respondent of the proceeding in both Chinese and English, but the Respondent did not reply; and (d) the Complainant is a company from Ireland, and the Complainant will be spared the burden of working in Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under Article 8 of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

B. Timing of the Complaint

According to Article 2 of the Policy, once the disputed domain name has been registered for three years, the dispute case shall not be accepted under the Policy.

The Panel notes that the disputed domain names were registered on October 11, 2018, and the Complaint was filed on October 2, 2019. Therefore, well before the registration period of the disputed domain name expired the three-year term, the Complainant filed the case, which shall be accepted according to the Policy.

6.2. Substantial Issues

As to the case, Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled:

(a) The disputed domain name is identical with or confusingly similar to the Complainant's name or mark in which the Complainant has civil rights or interests;

(b) The disputed domain name holder has no right or legitimate interest in respect of the domain name or major part of the domain name;

Article 7 of the Policy states that the complainant and the respondent shall bear the burden of proof for their own claims. With reference to the complaint and the attached documents, the Panel of this case considers that:

A. Identical or Confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests

The Panel finds that the Complainant has rights in the SUDOCREM marks acquired through registration. The SUDOCREM marks have been registered in China at least since 2003, and registered as an international trademark at least since 2006. Therefore, the Complainant enjoyed the trademark right for the purpose of the Policy.

The disputed domain names <sudocrem.cn> and <sudocrem.com.cn> comprise the SUDOCREM mark in its entirety. The disputed domain name <sudocrem.cn> only differs from the Complainant’s trademarks by the ccTLD suffix “.cn” to the SUDOCREM marks. The disputed domain name <sudocrem.com.cn> only differs from the Complainant’s trademarks by the ccTLD suffix “.com.cn” to the SUDOCREM marks. These do not eliminate the identity or at least the confusing similarity between the Complainant’s registered trademarks and the disputed domain names.

Previous panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark in its entirety (美国金霸王营运有限公司 v. 王晓文（Wang XiaoWen), WIPO Case No. DCN2019-0003).

Further, in relation to the ccTLD suffix, previous panels have held that it is technically required to register a domain name (美国金霸王营运有限公司 v. 王晓文（Wang XiaoWen), WIPO Case No. DCN2019-0003).

Thus, the Panel finds that disregarding the ccTLD suffixes “.cn”, and “.com.cn”, the disputed domain names <sudocrem.cn> and <sudocrem.com.cn> are otherwise identical to the SUDOCREM marks.

The Panel therefore holds that the Complaint fulfils the first condition of Article 8 of the Policy.

B. Rights or Legitimate Interests

The Complainant is the exclusive owner of registered trademark SUDOCREM in many countries, including China (since May 14, 2003), which long precedes the Respondent’s registrations of the disputed domain names <sudocrem.cn> and <sudocrem.com.cn> (October 11, 2018).

Based on the record, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (塞维斯马斯特有限责任公司（The Servicemaster Company，LLC）和特敏尼克斯国际合股有限公司（The Terminix International Company Limited Partnership）v. 孙启峰, WIPO Case No. DCN2019-0005).

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:

(a) There has been no evidence adduced to show that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “sudocrem” in its business operations or the use of the SUDOCREM trademark on its websites. There has been no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use the SUDOCREM trademark or to apply for or use any domain name incorporating the SUDOCREM trademark;

(b) There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that the Respondent has any registered trademark rights with respect to the disputed domain names. The Respondent registered the disputed domain names <sudocrem.cn> and <sudocrem.com.cn> on October 11, 2018. The disputed domain names are identical or confusingly similar to the Complainant’s SUDOCREM trademark.

(c) There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by the Complainant, the disputed domain names are connected to the homepages offering to sell the disputed domain names.

Accordingly, the Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names in light of the Complainant’s prima facie case. The Panel therefore holds that the Complaint fulfils the second condition of Article 8 of the Policy.

C. Registered or Used in Bad Faith

Article 9 of the Policy sets out four circumstances which shall be evidence of the registration or use of the disputed domain name in bad faith, namely:

(a) The purpose for registering or acquiring the domain name is to sell, rent or otherwise transfer the domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits;

(b) The disputed domain name holder registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names;

(c) The disputed domain name holder has registered or acquired the domain name for the purpose of damaging the Complainant's reputation, disrupting the Complainant's normal business or creating confusion with the Complainant’s name or mark so as to mislead the public;

(d) Other circumstances which may prove the bad faith.

The Panel concludes that the first circumstances referred to in Article 9 of the Policy is applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain names in bad faith.

The Panel finds that the Complainant has a widespread reputation in the SUDOCREM marks with regard to its products and services. The Complainant has registered trademark SUDOCREM in China since 2003. It is not conceivable that the Respondent would not have had actual notice, of the Complainant’s trademark rights at the time of the registration of the disputed domain names (in 2018).

Moreover, the Respondent offered to sell the disputed domain names via the websites resolved by the disputed domain names <sudocrem.cn> and <sudocrem.com.cn>.

Thus, the Panel concludes that the disputed domain names were registered and are being used by the Respondent in bad faith under the Policy, Article 9(a). The Panel therefore holds that Complaint fulfils the third condition of Article 8 of the Policy.

7. Decision

For the foregoing reasons, in accordance with the Article 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain names <sudocrem.cn> and <sudocrem.com.cn> be transferred to the Complainant.

Yijun Tian
Sole Panelist
Date: December 4, 2019