Zoetis Inc. and Zoetis Services LLC v. Xiao Xiaoyue
Claim Number: FA2002001886032
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Offit Kurman, P.A., New York, USA. Respondent is Xiao Xiaoyue (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetispigcare.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2020; the Forum received payment on February 27, 2020. The Complaint was submitted in both Chinese and English.
On March 4, 2020, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <zoetispigcare.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zoetispigcare.com. Also on March 9, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in ZOETIS and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent does not submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a global research company focused on animal health;
2. Complainant does business under the name, ZOETIS, which is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,400,976, registered September 10, 2013;
3. the disputed domain name was registered on July 30, 2019 and resolves to a Chinese language gaming and gambling website; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Paragraph 15(a) of the Rules instructs this Panel to "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 applicable."
The Registration Agreement is in the Chinese language and so under Rule 11 Chinese is the language of the proceedings. Nonetheless, the Panel has a residual discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the case.[i]
As noted above, Complainant has filed the Complaint in English and Chinese. If Respondent only spoke Chinese it was thereby in a position to reply. There has been no Response in Chinese or otherwise. Complainant submits that the proceedings should continue in English. The Panel agrees taking into account the fact that descriptive, English language words have been added to Complainant’s trademark to form the disputed domain name.
Moving on, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Complainant provides evidence of a USPTO registration for the trademark ZOETIS and so the Panel finds that Complainant has rights in the trademark.
The domain name combines the trademark with non-distinctive matter in the form of the descriptive words, “pig care”, and the “.com” gTLD, both of which can be essentially excluded for the purposes of comparison of the terms.[iii]
The Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy. Accordingly, Complainant has established the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The name of the domain name owner was shielded by a privacy service. When the actual name of the underlying registrant, “Xiao Xiaoyue”, was provided by the Registrar in consequence of these administrative proceedings, it did not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The use of the domain name is as described and clearly does not establish a right or a legitimate interest in the domain name under the Policy.[v]
The onus shifts to Respondent to rebut the prima facie case which the Panel finds the Complaint to have established. The Response does not address the elements of the Policy with any specificity. The assertions that the disputed domain name has been deactivated and its use suspended are of no consequence in terms of these proceedings and the matters for determination under the Policy. The prima facie case has not been rebutted and the Panel finds that Respondent has no rights or interests in the domain name and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The resolving website exists for commercial gain. The Panel has already found the compared terms to be confusingly similar. In terms of how the Policy has been applied, the Panel finds that Respondent intended to create the requisite confusion described by paragraph 4(b)(iv)[vi].
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetispigcare.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: April 12, 2020
[i] See, for example, FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 finding it appropriate to conduct the proceeding in English under Rule 11 despite Korean being the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English.
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007); Hot Topic, Inc. v. Xiao Liu, FA 2001001877504 (Forum Jan 30, 2020).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) finding that respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services.
[vi] See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page