Zoetis Inc. and Zoetis Services LLC v. Lei Shi
Claim Number: FA2203001989415
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Offit Kurman, P.A., New York, USA. Respondent is Lei Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetisvaccine.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
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 March 23, 2022; the Forum received payment on March 23, 2022.
On March 24, 2022, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <zoetisvaccine.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 30, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of April 19, 2022 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@zoetisvaccine.com. Also on March 30, 2022, the Chinese and English language 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 25, 2022, 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.
The Complaint requests that “the Panel issue a decision that the domain-name registrations (sic) be transferred to Complainant” but, notably, does not nominate which complainant.
There are two named complainants. Paragraph 3(a) of the Rules states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Complaint states that Zoetis Services LLC is a wholly-owned subsidiary of Complainant, by which the Panel assumes “Complainant” is intended to mean, Zoetis Inc..
Absent any challenge from Respondent or any other reason not to accept that information, the Panel accepts that the named complainants are sufficiently linked for the purposes of Supplemental Rule 1(e). Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to both as “Complainant” unless otherwise stated[i].
The Panel notes the Chinese language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[ii]. Here, Complainant submits that “Respondent is capable of understanding English as Respondent created and maintained an infringing English language website under the disputed domain name.”
The Panel observes that there is little evidence of that claim. The resolving webpage is rudimentary, carrying three English language links to goods or services connected with the prevention or treatment of cancer, pneumonia and covid-19. Nonetheless, given the low threshold that UDRP panelists have generally adopted when assessing the language requirement, coupled with the facts that (a) the domain name targets a United States company and its trademark, (b) the domain name combines that trademark with an English language word, and (c) the fact that conducting these proceedings in a language other than English will cause a significant additional burden and delay, the Panel determines that the proceedings should continue in English.
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 did not submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a research company focused on animal healthcare;
2. Complainant does business under the name, ZOETIS, which is the subject of, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 4,400,976, registered September 10, 2013[iii];
3. the disputed domain name was registered on January 21, 2022 and resolves to a webpage as described above; 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."
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.[iv] 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 word, “vaccine”, and the “.com” gTLD, both of which can be essentially excluded for the purposes of comparison of the terms.[v]
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.[vi]
The name of the domain name owner was shielded by a privacy service. When the actual name of the underlying registrant, “Lei Shi”, 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.[vii]
The onus shifts to Respondent to rebut the prima facie case which the Panel finds the Complaint to have established. Absent a Response, that 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 application. It is more likely than not that the resolving webpage exists for commercial gain, most likely by way of referral fees. 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)[viii].
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 <zoetisvaccine.com> domain name be TRANSFERRED from Respondent to Zoetis Services LLC since it is the owner of the registered trademark and the likely owner of Complainant’s intellectual property rights in general.
Debrett G. Lyons, Panelist
Date: April 26, 2022
[i] See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
[ii] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[iii] Registered in the name of Zoetis Services LLC.
[iv] 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).”)
[v] 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).
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] 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.
[viii] 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