WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutricia International B.V. v. Nexperian Holding Limited / Yu Hai Tao

Case No. D2018-0581

1. The Parties

The Complainant is Nutricia International B.V. of Amsterdam, Netherlands, represented by Dreyfus & associés, France.

The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Yu Hai Tao of Wuhan, Hubei, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <aptamilmall.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2018, 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 20, 2018 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 23, 2018.

On March 20, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent submitted an informal response and requested that Chinese be the language of the proceeding on March 20, 2018. The Complainant requested that English be the language of the proceeding on March 21, 2018.

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 March 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. The Respondent did not submit a formal response. Accordingly, on April 17, 2018, the Center informed the Parties of the commencement of panel appointment process.

The Center appointed Jonathan Agmon as the sole panelist in this matter on April 25, 2018. 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, Nutricia International B. V. (“Nutricia”), is a company offering products related to early life nutrition and medical nutrition. Nutricia develops products, aimed at creating a healthy start in life for children worldwide. Nutricia sells its products worldwide, including in China. Nutricia’s research networks work with specialists, hospitals and universities around the world to ensure that their research project meet the requirements of local markets.

One of the Complainant’s products is a formula milk Aptamil with Pronutra+ Follow On and Growing Up milk 1-2 years, which also includes cereals range. These products are directed towards babies and toddlers’ development

The Complainant is the owner of the following APTAMIL Trademark Registrations:

- European Union trademark APTAMIL No. 007203813, dated October 21, 2010 and covering goods in classes 5, 29, 30 and 32;

- International trademark APTAMIL No. 376506, dated February 2, 1971 (duly renewed) and covering goods in class 5;

- International trademark APTAMIL and Design No. 894039, dated July 19, 2006 (duly renewed) protected, inter alia, in China, and covering goods in classes 5, 29 and 30;

- Chinese trademark APTAMIL No. 13867854, dated September 7, 2015 and covering goods in class 5;

- Chinese trademark APTAMIL and Design No. 13867855, dated September 7, 2015 and covering goods in class 5.

In addition, the Complainant operates domain names reflecting its trademarks in order to promote its services, including <aptamil.com> registered on October 26, 1999; and <aptaclub.co.uk> registered on February 20, 2012.

The disputed domain name <aptamilmall.com> was registered on December 16, 2016.

The disputed domain name previously resolved to a website selling products under the Complainant’s trademark. Currently, the disputed domain name is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered mark APTAMIL because it contains the Complainant’s mark in its entirety.

The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark APTAMIL.

The Complainant further argues that the Respondent uses the disputed domain name to offer counterfeit products and misleads Internet users to think that the origin of the products is with the Complainant.

The Complainant also argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant.

The Complainant further argues that the fame it has acquired in the APTAMIL marks makes it impossible for the Respondent to be associated with the disputed domain name.

The Complainant claims that the Respondent registered and used the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not file a formal response. He sent an email in Chinese on March 20, 2018, claiming that:

(1) he registered the disputed domain name just for fun; and

(2) he followed all the Registrar’s rules to register the disputed domain name, and a registrant of a domain name shall be the legal owner of it, thus he has a right to the disputed domain name.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of March 19, 2018.

The Complainant requested that the language of the proceeding be English.

The Respondent requested that the language of the proceeding be Chinese.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language.

(iii) The Respondent did not file a formal response.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the APTAMIL mark. The disputed domain name <aptamilmall.com> integrates the Complainant’s APTAMIL trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the addition of the component “mall” and the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The additional component “mall” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark. The term “mall” is generic and is likely to cause confusion since it constitutes a reference to a potential store or shopping centre. Hence, Internet users could wrongly believe that the disputed domain name was registered by the Complainant to promote their products. Previous UDRP panels have ruled that the mere addition of a generic element does not serve to avoid a finding of confusing similarity between the domain name and the registered trademark (See Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc. WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v. Tina Smith, WIPO Case No. 2013-0820; Titoni AG v. Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Therefore, the gTLD “.com” iswithout significance in the present case since the use of a TLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard. In previous decisions, UDRP panels found that in the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan YuWIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host masterWIPO Case No. D2010-0138). Due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof, and that the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services. Notably, the goods previously for sale on the Respondent’s website, while clearly unauthorized by the Complainant, seek to take unfair advantage of the Complainant’s trademark.

The Respondent has not submitted a formal Response to the Complaint, and he did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case. In fact, the evidence shows that the Respondent was trying to ride on the Complainant’s trademark. Such use indicates away from a finding that the Respondent has any rights or legitimate interests.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the APTAMIL trademark since the year 1971. In view of the evidence filed by the Complainant, and the widespread use of the APTAMIL trademarks, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety with the term “mall”. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The evidence provided by the Complainant shows that the disputed domain name resolved to a website, which creates a false affiliation with the Complainant and targets the Complainant’s market in China, where the Complainant is present. The evidence show that on the website the Respondent was operating under the disputed domain name, there was use of the Complainant’s designed trademark. The evidence also shows that the Respondent is using the disputed domain name to promote what appear to be the Complainant’s goods being offered alongside goods of unrelated third parties. The use of the Complainant’s trademarks to promote and sell competing goods of third parties is evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and the Complainant’s trademark and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. Such actions by the Respondent constitute clear indications of bad faith registration and use of the disputed domain name (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”, and Sanofi-Aventis v. Billionaire Club, WIPO Case No. D2004-0805). The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.

Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s mark and the Respondent’s use of the disputed domain name and the Complainant’s trademarks, including their designs, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <aptamilmall.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: May 7, 2018