Zambon S.p.A. v 徐新宇 (xu xin yu)
WIPO Case No. DCN2025-0004
•24-03-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Zambon S.p.A. v. 徐新宇 (xu xin yu)
Case No. DCN2025-0004
1. The Parties
The Complainant is Zambon S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.
The Respondent is 徐新宇 (xu xin yu), China.
2. The Domain Name and Registrar
The disputed domain name <zamboncompany.cn> (the “Disputed Domain Name”) is registered with 阿里云
计算有限公司（万网）(Alibaba Cloud Computing Co., Ltd. (Wanwang)) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2025. On February 5, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 6, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Disputed Domain Name and providing the contact details of the registrant.
The Center verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute
Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the
WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution
Policy Rules (the “WIPO Supplemental Rules”).
In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in English and Chinese of the Complaint on February 12, 2025, and the proceedings commenced on February 12, 2025. In accordance with the Rules,
Articles 17 and 49, the due date for sending a response by the Respondent was March 4, 2025. The
Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on
March 6, 2025.
The Center appointed Rosita Li as the sole panelist in this matter on March 10, 2025. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Article 29.
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4. Factual Background
The Complainant is the owner of the trademark registrations for ZAMBON, including but not limited to the following:
1) International Trademark Registration No. 509634 for ZAMBON (word mark) registered on January 26,
| 1987; | |
| 2) | International Trademark Registration No. 620243 for ZAMBON (word mark) registered on June 20, |
| 1994; | |
| 3) | International Trademark Registration No. 849410 for ZAMBON (figurative mark) registered on |
December 28, 2004; and
4) Chinese Trademark Registration No. 7132753 for ZAMBON (figurative mark) registered on March 21,
2011.
(collectively, the “ZAMBON Trademarks”).
The Complainant submits that the ZAMBON Trademarks are recognized globally due to the Complainant’s century-long history. Established in 1906, the Complainant has evolved from a local trading company to a multinational pharmaceutical group. The Complainant has subsidiaries and branches worldwide, with
ZAMBON branded products available in 87 countries across Europe, North and South America, and Asia, including China. The Complainant owns numerous domain names containing the term Zambon, including <zambon.com>, which addresses the Complainant’s primary global web portal, and <zomboncompany.com>
and <zamboncompany.com.cn>.
In China, the Complainant operates through Hainan Zambon Pharmaceutical Co., Ltd, a wholly-owned
subsidiary established in 1998. The Complainant’s activities in China are managed from its center in
Shanghai, with offices across major cities such as Beijing, Guangzhou, and Jinan. The Complainant’s
Chinese presence includes nearly 500 employees working across 24 provinces and 45 cities. The
Complainant also operates a plant in Haikou City, Hainan Province, focusing on the production of granulated
products and tablets. Local activities are promoted through the website <zambon.com.cn>, tailored to the
Chinese market.
The Disputed Domain Name was registered by the Respondent on November 12, 2024.
As of the date of filing this Complaint, the Disputed Domain Name did not resolve to an active website.
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. A summary of the Complainant’s submission is as follows:
(i) The Disputed Domain Name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests. The Complainant contends that:
| - | The Disputed Domain Name incorporates the entirety of the ZAMBON Trademarks; |
| - | The addition of the term “company” does not distinguish the Disputed Domain Name from the |
ZAMBON Trademarks and may even increase the likelihood of confusion; and
- The inclusion of the country code Top-Level Domain (“ccTLD”) “.cn” is merely instrumental for Internet use and does not affect the assessment of confusing similarity.
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(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name or
major part of the Disputed Domain Name. The Complainant contends that:
| - | The Respondent is neither a licensee nor an authorized agent of the Complainant, and is not |
authorized to use the ZAMBON Trademarks, or to register and use the Disputed Domain Name;
| - | The Respondent is not commonly known by a name corresponding to the Disputed Domain Name; |
| - | The Respondent does not own any trademark registrations for ZAMBON; |
| - | The Respondent has not provided evidence of use, or preparations to use, the Disputed Domain |
Name in connection with a bona fide offering of goods or services, nor for legitimate noncommercial or fair
use;
| - | The Disputed Domain Name does not resolve to an active website and its passive use does not |
constitute bona fide or legitimate use, particularly given the well-known character of the ZAMBON
Trademarks;
- The Disputed Domain Name, being confusingly similar to the ZAMBON Trademarks, creates a high risk of implied affiliation with the Complainant; and
| - | The Respondent did not reply to the cease and desist letters sent by the Complainant’s representative. |
| (iii) | The Respondent has registered or has been using the Disputed Domain Name in bad faith. The |
Complainant contends that:
- The Complainant owns registrations for the ZAMBON Trademarks, predating the registration of the Disputed Domain Name by several years;
- The ZAMBON Trademarks have been extensively used by the Complainant since 1908 and are widely publicized globally, including through the websites <zambon.com> and <zambon.com.cn>;
- The ZAMBON Trademarks are recognized as well-known trademarks, and prior cases have confirmed that registering a domain name identical to a famous trademark without authorization is evidence of bad
faith;
- Searches for “ZAMBON” on the Chinese search engine, Baidu, reveal results predominantly related to the Complainant’s trademark and products;
- The Complainant is present and operates in China, and has operated the Chinese-language website
<zambon.com.cn> since 2004, making it inconceivable that the Respondent was unaware of the
Complainant’s rights when registering the Disputed Domain Name;
- The Respondent registered the Disputed Domain Name with clear intent to refer to the Complainant's ZAMBON Trademarks;
| - | The Disputed Domain Name has not been pointed to an active website, and passive holding of a |
domain name corresponding to a well-known trademark supports a finding of bad faith; and
| - | The Respondent failed to respond to the cease and desist letters sent by the Complainant’s |
representative, further supporting the finding of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
According to Article 6 of the Policy and Article 8 of the Rules, the language of the domain name dispute resolution proceedings shall be Chinese, unless otherwise agreed by the parties or determined by the Panel under exceptional circumstances. While the language of the proceedings shall be Chinese, the Panel has the authority to determine the language of the proceedings based on the circumstances of the case.
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Based on the available materials, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for the following main reasons:
1) The Complainant communicates in English;
2) The translation of the Complaint and supporting documents into Chinese will delay the proceeding and impose cost burden on the Complainant; and
3) The Respondent has sufficient command of English based on the following circumstances:
| a. | The Disputed Domain Name is comprised of Latin characters; |
| b. | The Disputed Domain Name encompasses the English term “company”; and |
| c. | The Respondent registered other domain names in Latin characters encompassing English terms. |
The Respondent did not make any submissions with respect to the language of the proceeding.
Having considered the following circumstances:
(i) Even though the Center has used English and Chinese in the relevant correspondences with the
Parties and reminded them that the Complainant requested to use English as the language of the proceedings, the Respondent has not filed any response and did not comment on the language of the proceeding; and
(ii) The Disputed Domain Name comprises the English word “company”, which suggests that the
Respondent has the ability to comprehend English,
issuing this Decision in English language will not be prejudicial against the Respondent nor will it result in
considerable costs to the Respondent to translate the Decision.
The Panel determines, in accordance with Article 6 of the Policy and Article 8 of the Rules, that the language of the proceeding shall be English.
6.2. Substantive Issues
Article 8 of the Policy provides that a complainant must satisfy each of the following three elements in a complaint:
(a) The disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;
| (b) | The disputed domain name holder has no rights or legitimate interests in respect of the disputed |
domain name or major part of the disputed domain name; and
| (c) | The disputed domain name holder has registered or has been using the disputed domain name in bad |
| faith. |
A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has
Civil Rights or Interests
Based on the available materials, including the evidence of registration of the ZAMBON Trademarks in various countries including China, the Panel finds that the Complainant has shown civil rights or interests in respect of the ZAMBON Trademarks.
The Panel notes that the entirety of the ZAMBON Trademarks is reproduced within the Disputed Domain
Name.
The Panel finds the additional word, “company”, placed after the Complainant’s registered trademark and company name, does not prevent a finding of confusing similarity between the Disputed Domain Name and
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the ZAMBON Trademarks for the purposes of the Policy because the ZAMBON Trademarks remain
recognizable in the Disputed Domain Name.
Accordingly, the Disputed Domain Name is confusingly similar to the ZAMBON Trademarks.
The Panel therefore finds the first element of Article 8 of the Policy has been established.
B. Rights or Legitimate Interests
According to Article 10 of the Policy, before a Respondent receives the complaint, any of the following circumstances may be evidence of his rights to and legitimate interests in the domain name:
| (a) | The Respondent uses of the domain name or a name corresponding to the domain name in |
connection with a bona fide offering of goods or services;
| (b) | The Respondent has been commonly known by the domain name, even if he has acquired no |
trademark or service mark rights;
(c) The Respondent is making a legitimate noncommercial or fair use of the domain name, without intent of or commercial gain to misleadingly divert consumers.
The Complainant has submitted that the Respondent does not have any rights or legitimate interests in relation to the Disputed Domain Name. The Complainant has not licensed nor authorized the Respondent to use its ZAMBON Trademarks or to register and use a domain name containing its ZAMBON Trademarks, and there is no evidence that the Respondent is widely known under the Disputed Domain Name.
Having reviewed the available materials, 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
demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the
Policy or otherwise.
Further, the Disputed Domain Name includes the Complainant’s ZAMBON Trademarks in its entirety, and the additional term “company” would be easily interpreted as the Disputed Domain Name leads to an official website of the Complainant. It is clear that the registration of the Disputed Domain Name, which incorporates the ZAMBON Trademarks in its entirety, is an attempt by the Respondent to capitalize on the goodwill and reputation of the ZAMBON Trademarks. The Disputed Domain Name does not resolve to an active website, therefore, it has not been used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use.
Based on the available materials, the Panel finds the second element of Article 8 of the Policy has been established.
C. Registered or Used in Bad Faith
According to Article 9 of the Policy, any of the following circumstances may constitute evidence of the registration and use of a domain name in bad faith:
| (a) | The purpose for registering or acquiring the domain name is to sell, rent or otherwise transfer the |
domain name registration to the complainant who is the owner of the name or mark or to a competitor of that
complainant, and to obtain unjustified benefits;
(b) The disputed domain name holder registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names;
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| (c) | The disputed domain name holder has registered or acquired the domain name for the purpose of |
damaging the Complainant’s reputation, disrupting the Complainant’s normal business or creating confusion
with the Complainant’s name or mark so as to mislead the public;
| (d) | Other circumstances which may prove the bad faith. |
In the present case, the Panel notes that the Respondent’s registration of the Disputed Domain Name the Complainant and the ZAMBON Trademarks, intending to prevent the Complainant from reflecting the ZAMBON Trademarks in corresponding domain names. This is evidence of bad faith under Article 9(b) of the Policy.
incorporates the ZAMBON Trademarks in its entirety. The Panel also notes that the time of registration of
the Disputed Domain Name on November 12, 2024 is well after the registration of the Complainant’s
ZAMBON Trademarks, including the trademark registrations in China. The Panel notes that the Complainant
operates in various parts of the world, including China. The Complainant commenced its business in China
in the 1990’s, which is way before the registration of the Dispute Domain Name. The Panel accepts that the
ZAMBON Trademarks are well known amongst the general public, and that the Complainant has been
continuously using its ZAMBON Trademarks. Moreover, the Panel notes that the Complainant has
registered a number of domain names including ones that share the same second-level domain,
“zamboncompany”, as the Disputed Domain Name. The Panel finds that it would not be plausible for the
Respondent to claim that it was unaware of the Complainant and the ZAMBON Trademarks. The
| would be confusingly similar to the ZAMBON Trademarks. Accordingly, the Panel finds that the | The Panel is prepared to find that the Respondent knew that the registration of the Disputed Domain Name the Panel concludes that the passive holding of the Disputed Domain Name does not negate the finding of bad faith. |
| Based on the available materials, the Panel finds the third element of Article 8 of the Policy has been established. | |
| 7. Decision | |
| For the foregoing reasons, in accordance with Article 14 of the Policy and Article 40 of the Rules, the Panel orders that the Disputed Domain Name <zamboncompany.cn> be transferred to the Complainant. | |
| /Rosita Li/ Rosita Li Sole Panelist Date: March 24, 2025 |
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