N.V. Nutricia v. BestDomains, Inc., HanJing
The Complainant is N.V. Nutricia of Zoetermeer, Netherlands, represented by Dreyfus & associés, Paris, France.
The Respondent is BestDomains, Inc., HanJing of Shuyang, JiangSu, the People's Republic of China.
The disputed domain name <nutriciamedical.com> (the "Domain Name") is registered with Guangzhou Ming Yang Information Technology Co., Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2011. On February 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2011, 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. On February 22, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On February 23, 2011, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
The Center appointed Karen Fong as the sole panelist in this matter on March 31, 2011. 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 Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement in relation to the Domain Name is Chinese.
The Complainant's reasons for requesting the language of the proceedings to be English as set out in paragraph 10 of the Complaint are as follows: English is the most widely used language in international relations and is one of the working languages of the Center; there were email exchanges in English between the Complainant and the Respondent which demonstrates the Respondent's familiarity with English; the Domain Name is in Latin characters and also includes the word "medical" which is a generic English word, again showing the Respondent's proficiency in the English language; the website connected to the Domain Name ("the Website") is a parking page displaying pay-per-click in English and French; the Website has a form in English for the submission of inquiries regarding the site; and the Complainant has no knowledge of the Chinese language and would incur disproportionate costs if the proceedings have to be in the Chinese language.
The Panel accepts the Complainant's submissions regarding the language of the proceedings and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English and the Respondent did not comment on the language of the proceedings by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings.
The Complainant represents the medical division of the Danone Group, one of the world's leading food companies. The Complainant specializes in infant formula milk and human research into nutrition. Its markets include Europe, Asia (particularly China and Indonesia), Turkey and South America. It is the registered owner of the NUTRICIA trade mark with registrations all over the world including International Trade Mark Nos. 583636 and 583871 designating China in classes 5 and 10 respectively since 1992. It is also the registered proprietor of the trade mark NUTRICIA ADVANCED MEDICAL NUTRITION (logo) under Community Trade Mark No. 6849772 and International Trade Mark Nos. 968302 and 968037 since 2008. The Complainant owns the following domain names <nutricia.com> and <nutriciachina.com>.
The Respondent does not dispute the Complainant's claims that the Domain Name was registered by Jack Sun on June 4, 2010, that it was then transferred to Jane Xu on or about July 16, 2010, and that on or about October 6, 2010, Jack Sun was back as the registrant. As at December 9, 2010, the registrant's details changed to the Respondent's although throughout this entire time, the date of creation and expiration of the Domain Name remained unchanged. The Website is a parking page displaying pay-per-click in English and French.
On July 10, 2010, before the Complaint was filed, the Complainant contacted the registrant of the Domain Name, at the time Jack Sun, to try to resolve the matter amicably including offering to reimburse the registrant for his registration costs in return for the transfer of the Domain Name. Jane Xu responded and offered to transfer the Domain Name for at least EUR 1,000 (as evidenced by her email of September 5, 2011).
The Complainant contends that it has registered rights in the trade mark NUTRICIA and NUTRICIA ADVANCED MEDICAL NUTRITION (logo). NUTRICIA is a well-known trade mark because of the Complainant's long and extensive use of the mark. It has been recognized as such in a number of UDRP decisions (N.V Nutricia v. Ruglobal, Haider Bilal, WIPO Case No. D2010-0602, and N.V Nutricia v. svemirNet Emir Mujezinovic, WIPO Case No. D2009-0876). The Domain Name is identical or confusingly similar to the NUTRICIA trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights in the trade mark NUTRICIA and that NUTRICIA is a well-known trade mark. The Domain Name <nutriciamedical.com> is made up of a combination of the Complainant's registered trade mark NUTRICIA and the word "medical" which is descriptive of the goods and services of the Complainant. This is further evidenced by the fact that the word "medical" forms part of the elements of the Complainant's NUTRICIA ADVANCED MEDICAL NUTRITION (logo) trade mark.
The Complainant's registered trade mark, NUTRICIA has been adopted in its entirety and is the dominant portion of the Domain Name. It is now well-established that the addition of a descriptive or generic term to a trade mark in a domain name does nothing to minimise the risk of confusion in order to overcome a complainant's allegation that a domain name is confusingly similar to the trade mark. This is especially so when the term relates to the products, services and business of the Complainant as is the case here with the word "medical" and it is clearly for this reason that the Respondent has registered the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix ".com".
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and accordingly the Complainant has made out the first of the three elements that it must establish.
C. Rights or Legitimate Interests
The Respondent is not commonly known by the name "Nutricia" nor is it in any way affiliated to the Complainant or been authorised to use NUTRICIA in the Domain Name. "Nutricia" is an invented word with no ordinary dictionary meaning in English. The Domain Name references the Complainant. The parking page with the pay-per-click links is evidence that the Domain Name is being used by the Respondent for commercial gain.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name and the Complainant has established the second element of the three fold test under paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant's well-known trade mark and products when it registered the Domain Name. The Complainant has a presence in China and has a website "www.nutriciachina.com" set up specifically targeting the Chinese market which is an important market for the Complainant. The fact that the Domain Name incorporates an invented word "Nutricia" in its entirety and adds to it the term "medical" which is descriptive of the Complainant's business is sufficient evidence that the registration of the Domain Name was in bad faith. Further the Respondent or a party connected to the Respondent offered the Domain Name for sale for much more than the out-of-pocket costs directly related to the Domain Name. This amounts to registration of the Domain Name in bad faith under paragraph 4(b)(i) of the Policy.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The Respondent uses the Domain Name to direct Internet users to the Website which displays pay-per-click links. It is established that the use of a well-known trade mark to attract Internet users to a website for commercial gain is bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly the Panel finds that the third of the three elements that the Complainant must establish has been made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <nutriciamedical.com> be transferred to the Complainant.
Karen Fong