The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Liu Guohong of Tianjin, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2013. On October 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 8, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. The Complainant requested English be the language of the proceeding in the filed Complaint. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on October 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2013.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 14, 2013. 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 Complainant Sanofi is a French multinational pharmaceutical company based in Paris. The Complainant engages in research and development, manufacturing and marketing pharmaceutical products for sale, principally in the prescription market, but the Complainant also develops over-the-counter medication. The Complainant has business operations in more than 100 countries and employs 110,000 people. It is also the owner of the trade mark SANOFI in numerous countries in the world including China.
The Respondent registered the disputed domain name on April 20, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or similar to a trade mark SANOFI in which the Complainant has rights on the following grounds:
1. The Complainant is the rightful owner of the trade mark SANOFI in numerous countries in the world including China.
2. The disputed domain name is very close to the Complainant’s trade mark SANOFI.
3. The disputed domain name is the result of an act known as “typosquatting”, a deliberate act of misspelling a registered owner’s trade mark and in this case, the Complainant’s trade mark SANOFI.
4. The Complainant contends that upon comparison, there emerge strong similarities both visually and phonetically between the disputed domain name and the Complainant’s trade mark.
5. The Complainant further contends that the disputed domain name is a transliteration of the Chinese registered trade mark of SANOFI, that is 赛诺菲.
6. Consequently, the Complainant contends that confusion amongst the Internet users in particular Chinese users who are not well versed with the English language will ensue, thinking that the disputed domain name is connected or affiliated with the Complainant and its trade mark SANOFI.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name on the following grounds:
1. The Respondent is Liu Guohong and this name bears no resemblance to the word mark SANOFI nor the company “Sinofn (Tianjin) Pharm-Tech Co., Ltd.” mentioned in the website upon which the disputed domain name resolves upon.
2. The Complainant has not licensed or authorized the Respondent to use the trade mark SANOFI or register any domain name comprising of the Complainant’s trade mark SANOFI.
3. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services so as to confer upon him a right or legitimate interest in the disputed domain name.
The Complainant contends that the Respondent has registered and is using the disputed domain in bad faith on the following grounds:
1. The Complainant contends that its trade mark SANOFI is a well-known mark and that the Respondent’s registration of the disputed domain name is no mere coincidence.
2. That the Respondent has registered the disputed domain name for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the Complainant’s SANOFI mark and the disputed domain name .
3. That the disputed domain name points to a website which competes with the Complainant and its pharmaceutical products and therefore, the Complainant contends that the Respondent is using the disputed domain name primarily for the purpose of gaining unfair advantage of the Complainant and its trade mark SANOFI to create a likelihood of confusion with the Complainant’s trade mark and domain names as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of pharmaceutical products displayed or advertised for sale on it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request in the Complaint that English should be the language of the present proceeding for the following reasons:
1) That the disputed domain name is registered in Latin characters and not in Chinese script.
2) That the current website upon which the disputed domain name resolves is in English and Chinese.
3) If the Complainant were to submit all documents in Chinese this will result in substantial costs incurred and undue delay to the administrative proceeding.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name is pointed is in English and Chinese which suggests that the Respondent understands English; (c) the Panel accepts the evidence adduced by the Complainant evidencing that the Respondent is conversant and familiar with the English language; and (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel will rule accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following Policy elements are satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the SANOFI mark for pharmaceutical products in many countries in the world, including China, the country which the Respondent appears to reside.
In assessing the degree of similarity between the Complainant’s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. Furthermore, it is also pertinent to have regard to the distinctiveness of the Complainant’s trade mark. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The Complainant’s trade mark is SANOFI whilst the Respondent’s disputed domain name consists of the term “sinofn” and the top level domain suffix “.com”. The Complainant has argued that the disputed domain name is a result of a deliberate act of misspelling also known as “typosquatting”. However, the Panel is of the view that given the distance of the letters “a”, “i” and “n” on a typical computer keyboard, the argument for deliberate misspelling of the Complainant’s trade mark SANOFI is not tenable given the totality of the circumstances.
Considering and comparing the disputed domain name and the Complainant’s trade mark SANOFI, the Panel is of the view that they are not identical or similar whether visually, phonetically or conceptually. The Panel notes that the prefix “sino” in English is commonly used to refer to China. The Panel further notes that the term “sinofn” most likely refers to the company name “Sinofn (Tianjin) Pharm-Tech Co., Ltd.”, a subsidiary company of “Biosino Bio-technology and Science Inc.”, which is situated in China.1 Furthermore, the Panel also rejects the Complainant’s argument that the term “sinofn” in the disputed domain name is a transliteration of the Complainant’s Chinese registered trade mark赛诺菲. The transliteration of赛诺菲 would spell “sinofei” and not “sinofn”.
Therefore, the Panel finds that the Complainant has not satisfied the first part of the test.
Given that the first part of the test is not satisfied, there is no need for the Panel to proceed to consider part two and part three of the test. 7. Decision
For the foregoing reasons, the Complaint is denied.
Susanna H.S. Leong
Sole Panelist
Date: November 28, 2013
1 An independent search of the Panel as per paragraph 10 of the Rules.
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