Complainant is Sanofi, Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Mi Zhang/ li qianfang, Shenzhen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is presently registered with Guangzhou Ming Yang Information Technology Co., Ltd. (GMYIT). At the date the Complaint was filed the disputed domain name was registered with Domains2R Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to Domains2R Inc. a request for registrar verification in connection with the disputed domain name. On April 15, 2013 (the next business day), the Registrar transmitted by email to the Center its verification response confirming that Respondent Mi Zhang is listed as the registrant and providing the contact details. In response to the Center’s request Domains2R Inc. stated, among other things, “The domain has been placed on registrar lock and will remain locked during these proceedings,” and noted that the language of the registration agreement was English.
The Center verified that the 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2013.
On May 13, 2013, the Center sent an email message to Domains2R Inc., as follows:
“The Center has tried to access your website for the past few days but failed. In order to proceed in this proceeding, please kindly confirm to us that the registrant information for remains the same as what you have provided in your original Request for Registrar Verification (see attached) and also the disputed domain name remains locked for the duration of this proceeding.”
Domains2R Inc. replied on May 14, 2013, informing the Center that “It appears that this domain name is under the control of the registrar PREMIERENAME.CA INC, they should be contacted regarding the registrant information of this domain.”
The Center again wrote to Domains2R Inc. on May 16, 2013, pointing out that such a transfer was contrary to its earlier undertaking that the disputed domain name had been placed under registrar lock and that a transfer to another registrar was in violation of paragraph 8 of the Policy. The Center requested an explanation of the circumstances of the change of registration. On May 16, 2013, Domains2R Inc. responded “the registrant maliciously used an exploit in our domain platform to unlock and transfer out his domain. The user took steps to purposely get around the lock we had in place and has been banned from doing business with us in the future due to this. We have now patched this exploit so that it can no longer be used or occur again in the future,” and again referred the Center to PREMIERENAME.CA INC. as the then-current registrar.
On May 21, 2013 the Center sent an email to PREMIERENAME.CA INC., in pertinent part as follows:
“Please be informed that a domain name apparently registered with you, , is currently the subject of a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP).
It appears that the disputed domain name was transferred to you in violation of paragraph 8 of the UDRP during the proceeding. Under the circumstances, the WIPO Center as Provider requests you to urgently place the disputed domain name under Registrar LOCK and confirm the registrant details (as such details do not appear to be publicly-available).
Following confirmation of Registrar LOCK and registrant identity, the WIPO Center would provide further instructions as to any administrative steps that would be necessary.”
On May 22, 2013, PREMIERENAME.CA INC. replied, stating “Sorry, we check the domain. But this domain is not in our systerm [sic]. This domain is not under our Registrar. We didn't have the administration authority. Please recheck it. Have a good day.”
On May 24, 2013, the Center, having checked the WhoIs database for the disputed domain name, sent an email to GMYIT, in substance identical to its email of May 21, 2013 to PREMIERENAME.CA INC., and requesting registrar verification in connection with the disputed domain name. On May 27, 2013, GMYIT acknowledged the Center’s request and confirmed “that the domain name has been placed Registrar Lock status.” On May 31, 2013, GMYIT transmitted by email to the Center its verification response confirming that Respondent li qianfang is listed as the registrant, providing the contact details, and noting that the registration agreement was in Chinese.
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 11, 2013. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In light of the two registrars’ identification of different registrants, on June 28, 2013, the Panel issued a Procedural Order directed to Respondents, inviting Respondent li qianfang to provide any submissions electronically to the Center at domain.disputes@ by 5 p.m. Geneva time on July 5, 2013. Given that the latter Registration Agreement was in Chinese, the Panel requested the Center to issue the Procedural Order in both English and Chinese. The Center received no response by the July 5, 2013 deadline. 4. Factual Background
Complainant is a multinational pharmaceutical company that develops and markets prescription and non-prescription products around the world. Its worldwide turnover in 2012 was in excess of EUR 34 billion. Complainant holds many trademarks for SANOFI registered with appropriate national authorities around the world, including a registration for 赛诺菲 (sainuofei), registered in China in 1995.
Respondent registered the disputed domain name on February 18, 2013. While at this time the disputed domain name does not resolve to an active website, evidence accompanying the Complaint indicates that at one time it re-directed an Internet user to a website at which the disputed domain name was offered for sale. The page to which an Internet user was directed was entitled “The largest domain marketplace in China.” 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to Complainant’s many registered SANOFI marks. “Sainuofei” is the English transliteration of the Chinese characters for SANOFI that are part of Complainant’s registered mark in China.
Complainant has never authorized Respondent to use its marks and Respondent has never been known by the term SANOFI. The use to which Respondent has put the disputed domain name is not bona fide or legitimate; rather it is a blatant attempt to profit from the value of Complainant’s many registered marks.
Respondent’s registration of a domain name consisting of Complainant’s distinctive and internationally known mark is itself evidence of bad faith. Offering the disputed domain name for sale by one not authorized to use those marks is classic use in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings.
For several reasons the Panel declares that English shall be the language of these proceedings. That was the language of the registration agreement in effect at the date the Complaint was filed. Most of the text on the webpage to which an Internet user was re-directed upon entry of the disputed domain name is in English, so there is no question that Respondent is familiar with that language. Perhaps most importantly, Respondent should not gain a tactical advantage from its cyberflying as described in Section 3 above by forcing Complainant to proceed in a foreign language.1 B. Identical or Confusingly Similar.
Both the Chinese Trademark Office and the present registrar confirm Complainant’s contention that “sainuofei” is the English transliteration of the Chinese characters that comprise SANOFI, Complainant’s mark. That suffices to demonstrate confusing similarity with that mark. Complainant has established this Policy element. C. Rights or Legitimate Interests.
Complainant has never authorized Respondent – either Mi Zhang or li qianfang - to use its marks and Respondent – either Mi Zhang or li qianfang - has never been known by the term SANOFI or anything similar, so Complainant has made its prima facie case that Respondent lacks a right or legitimate interest in the disputed domain name. Respondent has not shown, and the record does not reveal, any bona fide offering of goods or services by Respondent or anyone else. On the contrary, Respondent’s conduct as described in the following paragraph is entirely mala fide. D. Registered and Used in Bad Faith.
The record provides two instances of Respondent’s use of the disputed domain name in bad faith under well-established Policy precedent. The first is re-direction to a website at which the disputed domain name was offered for sale. Though not precisely within the example of evidence in bad faith set out in paragraph 4(b)(i) of the Policy, which prescribes “circumstances indicating that you have registered or you have 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” (emphasis added), the examples in paragraph 4(b) are expressly non-exclusive. Many UDRP panels2 have found an offer for sale to the general public to be evidence of bad faith. Second, cyberflight is virtually conclusive evidence of use in bad faith. LPG SYSTEMS v. Jerry / Mr. Jeff Yan,WIPO Case No. D2010-0387; PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM),WIPO Case No. D2006-0917.
This conduct suffices to infer that Respondent’s registration of the disputed domain name less than five months ago was made to attempt to profit from the goodwill attaching to Complainant’s SANOFI marks. As Complainant argues, SANOFI is a distinctive term, with no demonstrated “generic” meaning in English, Chinese, or any other language. The record contains (and common sense furnishes) no evidence of an alternative reason for registration, so this Panel finds that Complainant has satisfied its burden of proof under paragraph 4(a)(iii) 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 be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Date: July 8, 2013
1 This last reason explains why the Panel gave Respondent li qianfang only one week, rather than the twenty days prescribed in paragraph 5(a) of the Rules, to reply to the Complaint. Many UDRP panels have tagged cyberflight not only as evidence of cyberquatting but also a crude and obvious effort to stall resolution of UDRP proceedings. In doing the same, this Panel determined that seven days were sufficient time given the already overlong delay intentionally caused by Respondent, whoever or whatever he, she, or it may be.
2 E.g., Playboy Enterprises International, Inc. v. Tamara Pitts,WIPO Case No. D2006-0675; T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (“A fourth factor [for finding bad faith] is that Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent’s offer of the Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.”)
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