The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Bo Li of Chengdu, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2013. On November 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 November 25, 2013, the Center transmitted emails to the parties in both Chinese and English regarding the language of proceedings. On November 26 and 28, 2013, the Respondent submitted its request that Chinese be the language of proceedings to the Center by email. On November 26, 2013, the Complainant confirmed its request that English be the language of proceedings to the Center by email.
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, and the proceedings commenced on December 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2013. The Response was filed with the Center on December 24, 2013.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 21, 2014. 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 Complainant has a substantial Internet presence and is the registered owner of the following domain names: ; ; ; ; ; ; ; ; ; ; ; and .
The Respondent registered the disputed domain name on April 18, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the 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 reproduces the trade mark SANOFI which does not have any particular meaning and is therefore highly distinctive.
3. The Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trade mark SANOFI. It has used the trade mark SANOFI for over 40 years and has invested substantial financial resources to advertise and promote the company and its SANOFI-branded pharmaceutical products in countries all over the world, including China. The Complainant has sold its SANOFI-branded products in China for years and has through its Chinese website “www.” offered products to Chinese consumers for many years. The Complainant thus contends that the trade mark SANOFI is widely known and recognized in China and beyond.
4. The Complainant contends that the disputed domain name reproduces the Complainant’s trade mark SANOFI as the dominant part and thus upon comparison, the disputed domain name is confusingly similar to the Complainant’s trade mark SANOFI.
5. The Complainant further contends that the addition of the geographical term “china” which is a common English word is insufficient to avoid confusing similarity. On the contrary, it suggests to Internet users that the disputed domain name is related to the Complainant or to the Complainant’s products in China.
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, or at least it will lead to an official website of the Complainant in China.
7. Lastly, the Complainant contends that it must be taken into account that the likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trade marks, domain names and more generally speaking goodwill.
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 Bo Li and this name bears no resemblance to the trade mark SANOFI which is highly distinctive
2. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well known and worldwide trademarks and domain names of the Complainant.
3. 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.
4. 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 it a right or legitimate interest in the disputed domain name. On the other hand, the disputed domain name is used by the Respondent to redirect Internet users to a website offering products by illegally riding on the Complainant’s and its trade mark SANOFI’s goodwill and reputation.
5. The Respondent is not affiliated with the Complainant in any way but has led Internet users to believe that it is. It has intentionally registered the disputed domain name so as to offer products and to present the distributing company under the trademarks SANOFI and SAINOUFEI. The Complainant contends that SAINOUFEI, amongst numerous different possible transliterations, is the English transliteration of the Complainant’s 赛诺菲 Chinese registered trade mark.
6. The Complainant contends that it has been held by prior UDRP administrative proceedings that even if the respondent is using its domain name in connection with offering of goods and services, this does not establish that the respondent has rights or legitimate interests in the 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. Given the famous and distinctive nature of the trade mark SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s trade mark at the time it registered the disputed domain name. This in the Complainant’s opinion suggests that the Respondent acted with opportunistic bad faith in having registered the disputed domain name in order to make an illegitimate use.
3. 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 trade mark and the disputed domain name .
4. That the disputed domain name points to a website which is not the official website of the Complainant’s 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 the products displayed or advertised for sale on it. B. Respondent
The Respondent rejects the Complainant’s contention 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 trade mark SANOFI is not a well-known trade mark in China.
2. The Respondent is using the disputed domain name to conduct business in a sector which is different from the Complainant.
3. Given that the Respondent is conducting business in a different sector from the Complainant, the Respondent contends that there can be no confusion between the disputed domain name and the Complainant’s trade mark SANOFI.
The Respondent rejects the Complainant’s contention that the Respondent has no rights or legitimate interests in the disputed domain name on the following grounds:
1. The Respondent asserts that it has legitimately registered the disputed domain name and is the rightful owner.
2. Prior to the receiving the notification of the present administrative proceeding from the Center, the Respondent has been using the disputed domain name to show case its electrical products legitimately for 16 months.
The Respondent rejects the Complainant’s contention that the Respondent has registered and is using the disputed domain in bad faith on the following grounds:
1. The Respondent has legitimately registered and used the disputed domain name for more than a year since its registration.
2. The Respondent is conducting business in a sector which is different from the Complainant.
3. The Respondent has not registered the disputed domain name for the purpose of selling it to the Complainant’s competitors; or to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name; or for the purpose of disrupting the business of a competitor; or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service of the Respondent’s website or location.
4. The Complainant’s trade mark SANOFI is not a well known mark in China and there is no competition between the Respondent and the Complainant. Therefore, it could not be said that the Respondent has registered and used the disputed domain name in bad faith. 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. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language. 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. The Complainant is an international company with trade mark registrations in multiple countries and whose international business is primarily operated in English. Thus, the Complainant is not able to communicate in Chinese.
2. That the disputed domain name contains the term “sanofi’ which is an arbitrary word without particular signification and the word “china” which is a country designation in English. The disputed domain is also registered in Latin characters and not in Chinese script. The choice made by the Respondent in selecting the English term “china” in the disputed domain name advocates that it is acquainted with the English language.
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 Panel accepts the evidence adduced by the Complainant evidencing that the Respondent is conversant and familiar with the English language; and (c) 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 Respondent has responded to the Complaint in Chinese and this suggests that the Respondent is conversant in the English language and is able to adequately respond. 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 elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. 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 submissions and evidence introduced by the Parties 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 trade mark for pharmaceutical products in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trade mark rights in the SANOFI mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s SANOFI mark is a widely-known trade mark for pharmaceutical products offered by the Complainant in many jurisdictions. This conclusion is consistent with the conclusions held by numerous prior UDRP panels namely, Sanofi v. Joseph DonovanWIPO Case No. DCO2013-0015; Sanofi v. PrivacyP/ICS INC.WIPO Case No. D2012-1293; Sanofi v. Contact Privacy Inc. Customer 01291388820/ICS INC.,WIPO Case No. D2012-1314; Sanofi-Adventis v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2010-0426; Sanofi-Adventis v. Naby Diaw,WIPO Case No. D2007-1619; Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited.,WIPO Case No. D2007-1641.
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. The issue of degree of similarity between the Complainant’s trade 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. Given the extensive reach of the Complainant and its products both in the brick-and-mortar world as well as online, the average Internet consumer seeking to purchase or download information about the Complainant’s products may comprise of but is not necessarily limited to one which originates from China. The fame of the Complainant and its SANOFI trade mark is thus to be considered from an Internet user’s perspective that is beyond China in which the Respondent appears to reside.
The disputed domain name consists of the Complainant’s trade mark SANOFI in its entirety; the English word “china” and the generic Top-Level Domain (gTLD) suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term “sanofi” which for all intents and purposes is identical to the Complainant’s registered trade mark SANOFI and which is highly distinctive. The Panel accepts the Complainant’s contention that the word “china” is generic and/or descriptive in nature and the addition of such a word to the trade mark SANOFI is non-distinctive. Anyone looking at the composition “chinasanofi” is likely to come to the conclusion that the word “china” describes the geographical source or origin of SANOFI’s products or services and that it is affiliated to the Complainant’s operations in China. Given the fame and notoriety of the Complainant’s SANOFI trade mark, the addition of suffixes such as “.com” or “.net” being the gTLD is furthermore not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s SANOFI trade mark as a result of its fame and notoriety and (b) the distinctive character of the Complainant’s SANOFI trade mark, the Panel therefore finds that the disputed domain name is identical or confusingly similar to the SANOFI trade mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “chinasanofi” in its business operations except a bare assertion that it is the legitimate registrant of the disputed domain name;
2. there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the SANOFI trade mark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Here, the mere creation of a website by the Respondent displaying an array of goods or services per se without substantiating evidence does not in the opinion of the Panel show a bona fide offering of goods or services;
4. the Complainant and its SANOFI trade mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the pharmaceutical sector and is a registered trade mark in many countries all over the world, including China. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the SANOFI trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] 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 trade mark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
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 trade mark or service mark or to a competitor of the 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 of the respondent’s website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Taking into account the worldwide reputation of the Complainant and its SANOFI trade mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant’s pharmaceutical products are widely available on the Internet via its official website “www.” as well its many other websites and Internet addresses as stated above. A simple search on the Internet would reveal the presence of the Complainant’s trade mark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products. However, the Respondent has not provided a plausible explanation of his choice in the disputed domain name.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trade mark and where the trade mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. As mentioned above, the mere creation of a website by the Respondent without substantiating evidence such as a certificate of incorporation of company; sales invoices etc does not establish that the Respondent is using the disputed domain name for the purpose of bona fide offering of goods or services over the Internet. In this regard, the Panel finds that the Respondent has not provided any plausible explanations. It should be noted that the Complainant is the registered owner of the SANOFI and 赛诺菲trade marks in China as well as in many jurisdictions and the use of the term “sanofi” or a transliteration of “sanofi” such as “sainuofei” without the Complainant’s consent is potentially an infringement of the Complainant’s registered trade mark rights. The Panel finds that unless the Respondent is able to offer plausible explanations, which it has not, such a conduct is indicative of bad faith as the Respondent’s act of registering and using a disputed domain name which is identical or confusingly similar to a trade mark in which the Complainant has registered rights on a website which purports to sell goods or services constitutes a misrepresentation to Internet users that the Respondent is connected to or affiliated with the Complainant when this is not true.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s SANOFI trade mark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous trade mark in the disputed domain name, the unauthorized use of the term “sanofi” or a transliteration of “sanofi” such as “sainuofei” in the Respondent website onto which the disputed domain name resolves are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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 the Complainant.
Susanna H.S. Leong(br)Sole Panelist
Date: February 4, 2014
Full & Egal Universal Law Academy