The Complainants are Pfizer Inc. of New York, United States of America and
Pfizer Products, Inc. of Connecticut, United States of America (the Ą°ComplainantsĄą),
represented by Kaye Scholer, LLP.
The Respondent is Yuan Wei, of Shandong, China (the Ą°RespondentĄą), represented
by Professor Ben Wen Wang.
2. The Domain Names and Registrar
The disputed domain name is <ťÔČđ.net> [xn--rhyn39c.net] (Domain name above
herein after referred to as Ą°Contested Domain nameĄą)
3. Procedural History
The Complainants submitted to the World Intellectual Property Organization
Arbitration and Mediation Center (Ą°the CenterĄą) a Complaint made pursuant to
the Uniform Domain Name Dispute Resolution Policy (Ą°PolicyĄą), implemented by
the Internet Corporation for Assigned Names and Numbers (ICANN and under the
Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN
on the same date (the Ą°RulesĄą). The email copy of the Complaint was received
by the Center on September 12, 2006, and in hard copy on September 18, 2006.
On September 14, 2006, the Center transmitted by way of email to eNom, Inc.
a request for registrar verification in connection with the domain name at issue.
On September 14, 2006, eNom transmitted by email to the Center its verification
response confirming that the Respondent is listed as the registrant and providing
the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of
the Policy, the Rules, and the WIPO Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the Ą°Supplemental RulesĄą).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center having verified
that the Complaint satisfied the formal requirements of the Policy and the Rules,
the Center formally notified the Respondent, and the proceedings commenced on
October 2, 2006. In accordance with the Rules, paragraph 5(a), the due date
for the Response was October 22, 2006. The Response was filed with the Center
by email on October 23, 2006 and by hard copy on November 1, 2006.
The Center appointed Dr. Colin Ong as the Sole Panelist in this matter on November
16, 2006. 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.
The language of the proceedings before this Administrative Panel was conducted
in the English language.
4. Factual Background
4.1 The ComplainantsĄŻ Activities
The Panel has looked at the ComplainantsĄŻ submissions and indices containing
various attached printouts from various websites as well as a list of registered
trademarks in Chinese characters including Chinese Trademark Registration numbers
1437960, 1395233, 1453947, 1412130, 1407565, 1424172, 1406633, 1406767,1409975,
1508411, 1437351 and 1508411. The Panel finds that the Complainants own valid
and subsisting rights to the trademark and service mark PFIZER and Chinese trademark
ťÔČđ which has been in use since 2000.
According to the Complainants Pfizer is among the largest pharmaceutical enterprises
in the world with global operations in more than 150 countries, including China.
Pfizer has expended and expends substantial sums and extensive resources on
the research, discovery, development and marketing of human pharmaceuticals
and animal health products and maintains one of the worldĄŻs largest privately
funded biomedical research organizations. The Complainants have submitted that
in 2005, Pfizer had reported revenues of over $50 billion.
The Complainants have submitted that Pfizer conducts extensive business in
China through affiliates and subsidiaries and that Pfizer is widely known in
China by the name ťÔČđ (which is pronounced Ą°hui ruiĄą). They contend that PfizerĄŻs
Chinese affiliates use the ťÔČđ mark in connection with the sale of a wide variety
of PfizerĄŻs products, including PfizerĄŻs leading drugs Lipitor, Norvasc, Celebrex,
Viagra, Difulcan, Zithromax, Zoloft and Xalatan.
The Complainants submitted print outs of their registrations, including the
following representative registration Chinese character registrations:
a. Registration No. 1437960 filed 1999-2-5 and registered on 2000-8-28.
b. Registration No. 1395233 filed 1999-2-5 and registered on 2000-5-14.
c. Registration No. 1453947 filed 1999-2-5 and registered on 2000-10-7.
d. Registration No. 1412130 filed 1999-2-5 and registered on 2000-6-21.
e. Registration No. 1407565 filed 1999-2-5 and registered on 2000-6-14.
f. Registration No. 1424172 filed 1999-2-5 and registered on 2000-7-21.
g. Registration No. 1406633 filed 1999-2-5 and registered on 2000-6-7.
h. Registration No. 1406767 filed 1999-2-5 and registered on 2000-6-7.
i. Registration No. 1409975 filed 1999-2-5 and registered on 2000-6-14.
j. Registration No. 1508410 filed 1999-11-1 and registered on 2001-1-21.
k. Registration No. 1437351 filed 1999-5-10 and registered on2000-8-28.
l. Registration No. 1508411 filed 1999-11-1 and registered on 2001-1-21.
4.2 The RespondentĄŻs Activities
The Respondent is the registrant of the contested domain name that has been
registered with eNom, Inc., on April 11, 2006.
5. PartiesĄŻ Contentions
A. Complainants
(i) Identical or Confusingly Similar
The Complainants contend that the domain name currently used by the Respondent
is confusingly similar to the ComplainantsĄŻ trademarks.
The Complainants submit that the RespondentĄŻs <ťÔČđ .net> domain name (1)
incorporates wholesale the registered ťÔČđ mark, (2) is identical to the ťÔČđ mark,
but for the top level domain identifier Ą°.netĄą and (3) is confusingly similar
to PfizerĄŻs and its subsidiaries own websites Ą°www.ťÔČđ.šŤËžĄą and Ą°www.ťÔČđ.ÍřÂ祹 and
(4) is so clearly similar to Pfizer ProductĄŻs ťÔČđ mark and the trade name that
it is likely to cause confusion among the ComplainantsĄŻ customers and the consuming
public.
(ii) Rights or Legitimate Interests
The Complainants have contended that the Respondent cannot demonstrate any
rights or legitimate interests in the domain name and that the Respondent is
not using, nor has shown any evidence of plans to use, the subject domain in
connection with a bona fide offering of goods or services within the meaning
of paragraph 4(c)(i) of the Policy. The Complainants have contended that the
Respondent is not making any legitimate non commercial fair use within the meaning
of paragraph 4(c)(iii) of the Policy and that the Ą°www.ťÔČđ.netĄą website does
not currently resolve to a website and is inactive.
(iii) Registered and Used in Bad Faith
The Complainants submit that the RespondentĄŻs actions evidence bad faith use
and registration of the Contested Domain Name under paragraph 4(b)(iv) of the
Policy. The Complainants claim that after having recognised the potential of
the ťÔČđ mark to generate important Internet traffic, the Respondent had registered
the domain name <ťÔČđ.net>, which wholly incorporates the ťÔČđ mark and merely
adds the generic Ą°.netĄą top level domain, so as to attract to the RespondentĄŻs
website visitors who are searching for information about Pfizer, its affiliates
and its products. The Complainants claim that given the absence of any legitimate
basis for such use of the ťÔČđ mark in the RespondentĄŻs domain name, the only
reasonable inference is that the Respondent has acted with intent to profit
from PfizerĄŻs name and reputation or PfizerĄŻs ťÔČ𥯠mark or trade name and reputation,
either by using the domain for a site that profits from users seeking a Pfizer
site, or by selling the domain name for a profit.
The Complainants relied upon the earlier WIPO UDRP decisions of Deutsche Telekom
AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001
(bad faith to register domains; given the Ą°widespread use and notoriety Ą°of
the Ą°famousĄą trademarks Ą, respondent Ą°must have known of its existenceĄą); Lockheed
Martin Corporation v. Allen Jarosz, WIPO Case
No. D2005-0361 and Pfizer Inc. v. Fizer Inc., WIPO
Case No. D2005-0285 (Ą°Bad faith can be presumed based on the fame of the
ComplainantĄŻs PFIZER] mark) and Pfizer Inc. v. Asia Ventures, Inc., WIPO
Case No. D2005-0256 (Ą°Considering that the PFIZER trademark is well-known
and that the Respondent most certainly had knowledge of the ComplainantĄŻs trademark,
the Panel finds that the Domain Name was registered and is used in bad faithĄą).
B. Respondent
The Respondent submitted that it is universally acknowledged in Chinese speaking
communities throughout the world, including but not limited to Mainland China,
that ťÔČđ is by nature and origin a very common and popular Chinese word throughout
Chinese history, consisting of two characters with ťÔ meaning bright or brightness
and Čđ meaning lucky or luck, and it is a frequently used compound word generally
regarded as composed of two highly ordinary but relatively independent words
in the form of the above two characters. In support of its submission on translation
of the Chinese characters, the Respondent referred to the Ą°A CHINESE- ENGLISH
DICTIONARY, Beijing Foreign Languages Institute English Department Compiling
Group. Beijing; Commercial Press, 1980Ąą.
The Respondent contended that Pfizer, a contemporary and American global corporation
and business empire, was as an English word somehow unexpectedly translated
into such a Chinese word with all the preceding multiple significances unique
to the Chinese nation as a whole. It claimed that the Complainants had copied
from the Chinese word in a paradoxical way, and then somehow registered as its
own and exclusive trademark in China in 2000 and 2001.
The Respondent submitted that the Complainants behaved arrogantly and overconfidently
in the Chinese communities both in China and abroad. Especially in China, due
to language barriers, the Complainants overlooked specific and striking translation
differences between source and target languages, cultural shocks, information
gaps, socioeconomic and economic differences, ideological and political distinctions
according to the Respondent. The RespondentĄŻs supporting evidence for these
contentions was as follows:
Ą°In accordance with the September 26, 2006 Google CompanyĄŻs 1-10 mark rankings
of usage and popularity, PfizerĄŻs English Website was accredited 7 marks by
ĄŽwww.google.comĄŻ, which is basically compatible to its generally recognized
status; while its Chinese website ĄŽwww.pfizer.com.cnĄŻ was accorded no more than
4 marks, far less than its home or English speaking world rate by ĄŽwww.google.comĄŻ,
although China is one of the very few countries with almost the largest populations
of Internet users in the world.Ąą
The Respondent then contended that, considering the size of the Chinese population
and based on any resultant common sense and many other factors, the Respondent
was entitled to reliably posit that ťÔČđ has been used widely and variably in
Chinese communities throughout Chinese history. The Respondent then submitted
that numerous Chinese people are named as such, and a lot of Chinese parents
call their children ťÔČđ, and that many businesses and other entities share the
same name.
The Respondent then submitted that Pfizer and its subsidiaries and trademark
are not well-known and popular in China and other Chinese communities as the
Complainants had suggested.
The Respondent then submitted that the Complainants could be accused of reverse
domain name hijacking. The Respondent explained that when a complainant does
not have exclusive use of a possible Ą°genericĄą mark and a respondent has registered
the Ą°genericĄą term(s) as a domain name, then there is the possibility of Ą°reverse
domain name hijackingĄą. The judgment specifically referred to Miller Brewing
Company v. Yunju Hong, NAF Case No. FA192732; Kiwi European Holdings B.V. v.
Future Media Architects, Inc., WIPO Case No.
D2004-0848; Ą°The Panel finds that the Complaint was brought in bad faith
in an instance of reverse domain name hijacking, based upon the complete lack
of evidence that the disputed domain name, a generic term, was registered or
is being used for reasons related in any way to Complainants or its mark.Ąą
6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with
the Rules and the Policy. According to paragraph 14(a) of the Rules, where there
is a failure by the respondent to provide a response to the allegations of the
complainant, as in the present case, the Panel is directed to make a decision
on the administrative proceedings on the basis of the complaint. In accordance
with paragraph 14(b), the Panel shall Ą°draw such inferences therefrom as it
considers appropriateĄą. The Panel notes that whilst the Respondent had conducted
its defence by way of bringing a negative case against the Complainants, it
had not actually brought any positive case to show that it had legitimate rights
to the contested domain name nor directly answered the allegations of the Complainants.
Under paragraph 4(a) of the Policy, the complainant must prove each of the
following three elements of its case:
(i) The respondentĄŻs domain names are identical or confusingly similar to a
trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the
domain names; and
(iii) The respondentĄŻs domain names have been registered and are being used
in bad faith.
Under paragraph 15(a) of the Rules, this Panel must Ą°decide a complaint on
the basis of the statements and documents submitted in accordance with the Policy,
these Rules and any rules and principles of law that it deems applicableĄą.
A. The domain name is identical or confusingly similar to the trademark in
which the Complainants have rights
The Panel finds that the Complainants have established rights in the marks
for the purposes of paragraph 4(a) of the Rules. The Panel finds that there
is a confusing similarity between the disputed domain name and the ComplainantsĄŻ
PFIZER and ťÔČđ marks.
The likelihood of confusion has to be appreciated globally, taking account
of all relevant factors. The more distinctive the mark the greater the likelihood
of confusion. Where the confusing similarity between the domain name and the
trademark would cause the Internet user to believe wrongly that the respective
services came from the same or related undertakings, there would be a likelihood
of confusion. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700.
The deliberate usage of the disputed domain name by the RespondentĄŻs <ťÔČđ
.net> domain name simply incorporates wholesale the ComplainantĄŻs registered
ťÔČđ mark and is in fact identical to the ťÔČđ mark, but for the top level domain
identifier Ą°.netĄą. The Panel concludes that the Complainants have established
paragraph 4(a)(i) of the Policy.
B. The Respondent has no rights or legitimate interests in respect of the domain
name
According to paragraph 4(b)(ii) of the Policy, the Complainants have to demonstrate
that the Respondent has no rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate
the RespondentĄŻs rights or legitimate interests in the disputed domain name
for the purposes of paragraph 4(a)(ii) of the Policy. The Complainants have
established prima facie evidence that none of the three elements establishing
legitimate interests or rights mentioned in paragraph 4(a)(ii) of the Policy
applies. In such instance, the burden of proof shifts on the Respondent to rebut
the evidence. See Oxygen Media Corporation v. Spiral Matrix, WIPO
Case No. D2006-0521.
The Respondent did not register the disputed domain name in connection with
a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of
the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph
4(c)(iii) of the Policy. See Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/Titan
Net / NOLDC, Inc, WIPO Case No. D2006-0808.
In the PanelĄŻs view, the ComplainantsĄŻ marks and name are so widely-known and
so recognized, and have been used in China and other countries for so many years
that there is no likely legitimate right or plausible use possible by the Respondent.
While the Respondent has made an interesting reference to history of the Chinese
characters in the contended domain name, such references do not assist the Respondent
in itself advancing a positive case according to established legal principles
and policy of domain name usage in the circumstances of this case. The Respondent
has not managed to show that it had a legitimate right to the disputed domain
name.
The Panel is satisfied that the Respondent has no rights or legitimate interests
in respect of the disputed domain name and, accordingly, paragraph 4(a)(ii)
of the Policy is satisfied.
C. Registration and Use in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing
registration and use of a domain name in bad faith is that, by using the domain
name, the respondent has intentionally attempted to attract, for commercial
gain, Internet users to the respondentĄŻs website or other on-line locations,
by creating a likelihood of confusion with the complainantĄŻs mark as to the
source, sponsorship, affiliation or endorsement of the respondentĄŻs website
or location, or of a product or service on the respondentĄŻs website or location.
See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case
No. D2006-0700 (Ą°The domain name is so obviously connected with such a well-known
product that its very use by someone with no connection with the product suggests
opportunistic bad faith.Ąą)
Registration of a domain name that is confusingly similar or identical to a
famous trademark by any entity, which has no relationship to that mark, is itself
sufficient evidence of bad faith registration and use. See Centurion Bank of
Punjab Limited v. West Coast Consulting, LLC, WIPO
Case No. D2005-1319.
The Panel does find that in view of the submitted evidence, and in the specific
circumstances of this case, there is a very strong inference that the RespondentĄŻs
reason for registering the domain name was for commercial gain.
The Panel finds that the Complainants have established that the disputed domain
name was registered and is being used in bad faith in accordance with paragraph
4(b) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the contested domain name, <ťÔČđ.net>
[xn--rhyn39c.net], be transferred to the Complainants.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: December 15, 2006
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