Pfizer Inc. and Wyeth LLC v 广州蕙氏医药有限公司
WIPO Case No. D2025-0300
•04-04-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. and Wyeth LLC v. 广州蕙氏医药有限公司
Case No. D2025-0300
1. The Parties
The Complainants are Pfizer Inc. (“the First Complainant”) and Wyeth LLC (“the Second Complainant”), both of the United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondent is 广州蕙氏医药有限公司, China.
2. The Domain Name and Registrar
The disputed domain name <wyethm.com> is registered with Guangdong JinWanBang Technology
Investment Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on February 24, 2025.
24, 2025. On January 27, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On February 5, 2025, 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 (REDACTED) and contact information in the
On February 6, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On February 24, 2025, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainants’ submission.
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”).
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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 February 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2025.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 21, 2025. 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 Complainants are pharmaceutical companies. The Second Complainant was founded in 1860 and has been a wholly-owned subsidiary of the First Complainant since 2009. The Second Complainant’s company name is translated in Chinese as “惠氏有限责任公司”, where “Wyeth” is translated as “惠氏” (which may be transliterated as “Huishi”). The Second Complainant owns trademark registrations in multiple jurisdictions, including the following:
| - | Chinese trademark registration number 154650 for WYETH, registered on February 28, 1982, |
specifying goods in class 5; and
- Chinese trademark registrations numbers 561819 and 5641776, both for 惠氏, registered on August 20, 1991 and September 7, 2010, respectively, both specifying goods in class 5.
The above trademark registrations are current. The Second Complainant granted a license to Nestlé in 2012
to use the WYETH mark in connection with the Wyeth Nutrition business, including on a website associated
with the domain name <wyethnutrition.com>. Wyeth Nutrition offers infant formula, nutritional supplements,
and other products in China. The Complainants are referred to below jointly and separately as
“the Complainant” except as otherwise specified.
The Respondent is a Chinese company. Its former company name as shown in the Registrar’s WhoIs database and Section 1 above may be translated as “Guangzhou Huishi Pharmaceutical Co., Ltd” but the company name was changed on December 14, 2020, by replacing the characters “蕙氏” (Huishi) with “蕙健” (Huijian). The Respondent obtained Chinese trademark registration number 24539951 for 蕙氏启能 (which may be transliterated as “Huishi Qineng”) and device, registered on May 28, 2018, specifying goods in class 5, but this registration was invalidated by the Chinese National Intellectual Property Administration in 2020, and the invalidation decision was upheld by the Beijing Intellectual Property Court on September 28, 2021 on the ground that the mark was similar to the Second Complainant’s 惠氏 trademarks.[1] The Second Complainant intervened as a third party in those proceedings.
The disputed domain name was registered on August 6, 2016. It resolves to a website in Chinese titled
“蕙健医药 WYETHM.COM” (in which the Chinese characters mean “Huijian Pharmaceutical”). The website
prominently displays the invalidated 蕙氏启能 and device mark alongside another 善健客 and device mark,
each with the registered trademark “®” symbol. The site offers for sale products including vitamin capsules,
protein powder and protein drinks branded “蕙氏启能” or “蕙健启能”.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
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Notably, the Complainant contends that the disputed domain name is confusingly similar to its WYETH mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The the Respondent to register or use the disputed domain name or the WYETH mark.
The disputed domain name was registered and is being used in bad faith. The Respondent is well aware of the valuable goodwill and reputation represented by the Complainant’s WYETH mark. The website associated with the disputed domain name refers to the Respondent as “Wyeth Medical”, using the Complainant’s registered WYETH trademark to further confuse consumers.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The Complaint and amended Complaint were filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that it conducts business in English, the disputed domain name is in Latin script, and translation of the Complaint would cause undue delay while acts of blatant cybersquatting continue.
The Respondent did not make any submission with respect to the language of the proceeding. Despite the
Center sending emails regarding the language of the proceeding and the Notification of the Complaint in
Chinese and English, the Respondent did not express any interest in participating in this proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time, and costs. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following elements:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
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The burden of proof of each element is borne by the Complainant.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. See WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a WYETH trademark for the purposes of the Policy. See
WIPO Overview 3.0, section 1.2.1.
The mark is wholly incorporated within the disputed domain name. Despite the addition of the letter “m”, the mark remains clearly recognizable within the disputed domain name. The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) extension (“.com”) which, as a standard requirement
of domain name registration, may be disregarded in the assessment of confusing similarity for the purposes of the Policy. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. See WIPO Overview 3.0, sections 1.7, 1.8, and 1.11.1.
Therefore, the Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
The disputed domain name resolves to a website that prominently displays the invalidated 蕙氏启能 and device mark and offers for sale products including 蕙氏启能-branded vitamin capsules, protein powder and protein drink. The mark and the branding both incorporate elements that are visually and phonetically similar to the Complainant’s 惠氏 mark and use it in connection with nutritional supplements, which is the same type of product offered by Wyeth Nutrition, a licensee of the Complainant. This gives the impression that the website and products on it are sourced from, affiliated with, or endorsed by, the Complainant. Yet the Complainant submits that neither it nor its licensee is affiliated in any way with the Respondent. This indicates that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the terms of the Policy. Nor is it making a legitimate noncommercial or fair use of the disputed domain name.
Further, the Respondent’s name at the present time is “广州蕙健医药有限公司” (Guangzhou Huijian Pharmaceutical Co., Ltd), which does not resemble the disputed domain name. Although the Respondent’s former name included the characters “蕙氏”, which are visually and phonetically similar to the Chinese translation of “Wyeth” (“惠氏”), the record does not indicate that the Respondent has been commonly known by the disputed domain name.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
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demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the
Policy or otherwise.
Based on the record, the Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth such circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the respondent’s] website or other online 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 respondent’s] web site or location.”
The disputed domain name was registered in 2016, decades after the registration of the Complainant’s WYETH trademark, including in China where the Respondent is based. Wyeth is a family name, not a dictionary word. The disputed domain name wholly incorporates the Complainant’s WYETH mark as its
initial element, adding only a letter “m” and a gTLD extension. The Respondent operates in the same sector (nutritional supplements) as does Wyeth Nutrition, a licensee of the Complainant, which makes it likely that it was aware of the Complainant’s products. The Respondent uses the disputed domain name with a website that prominently displays a trademark and branding that incorporates the term “蕙氏启能”, which is visually
and phonetically similar to the Complainant’s 惠氏 mark, the established Chinese translation of its WYETH mark. In view of these circumstances, the Panel finds that the Respondent was aware of the Complainant and its WYETH mark at the time when it registered the disputed domain name.
As regards use, the disputed domain name wholly incorporates the Complainant’s WYETH mark and is used to resolve to a website that offers for sale the same type of products as does Wyeth Nutrition, a licensee of the Complainant. The website offers for sale products branded with an invalidated mark containing the term “蕙氏启能”, which is visually and phonetically similar to the Complainant’s 惠氏 mark, the Chinese transliteration of its WYETH mark. The Respondent has been on notice of the Complainant’s rights since at least the proceedings to invalidate the Respondent’s 蕙氏启能 and device mark. Accordingly, the Panel finds that the disputed domain name operates by intentionally attempting to attract Internet users searching for the Complainant or its licensee and diverting them to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s WYETH mark as to the source, affiliation or endorsement of the Respondent’s website and the products on it, within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Complainant has established the third element 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 <wyethm.com> be transferred to the First Complainant, Pfizer Inc.
/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: April 4, 2025
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