The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Zhao Jiaai, Guangzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2014. On December 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2014, 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.
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 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2015.
The Center appointed Professor François Dessemontet as the sole panelist in this matter on February 2, 2015. 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 is a French pharmaceutical company headquartered in Paris, France, ranking 4th among the world’s largest pharmaceutical corporations on the basis of the sales of medicines on prescription. The Complainant also develops over-the-counter medications. The Complainant is active in more than 100 countries with 110,000 employees.
The vaccines division of the Complainant is known as “Sanofi Pasteur”, and manufactures over 1 billion doses of vaccines against 20 infectious diseases every year.
Sanofi Pasteur hires approximately 13,000 employees throughout the world, and manages 13 production and/or Research and Development sites located in France, China, the United States of America, Canada, Argentina, Mexico, India, and Thailand.
Sanofi Pasteur has submitted a written worldwide consent to use the name “Pasteur” that has been issued by the French company Institut Pasteur. Institut Pasteur owns trademarks registrations containing the distinctive name “Pasteur” as under Annex 14 of the Complaint; see, e.g., the Community Trademark PASTEUR number 001 081 819, filed on February 19, 1999 for classes 01, 03, 05, 41 and 42, notably concerning products in pharmaceutical and medical use, registered on May 24, 2000. The Complainant itself owns numerous French, Community and International trademarks for SANOFI, notably concerning pharmaceutical products, registered as late as May 16, 2011 and as early as 1988, with other registrations dating back to 1992, 1997 and 2004.
The Complainant also owns at least 13 domain names with the element “sanofi”, including two domain names registered on May 19, 2004, and registered on December 23, 2004.
The Panel has received no information concerning the activities of the Respondent if any, as the Respondent has not submitted a Response. 5. Parties’ Contentions A. Complainant
The Complainant points out that all its trademarks and domain names have been registered prior to the registration of the disputed domain name on April 8, 2014. The Respondent could not have ignored then the existence of the trademarks of the Complainant, as the Complainant’s trademarks and domain names are also actively used in China.
Further, the disputed domain name reproduces the two distinctive elements of some of the marks that are used by the Complainant, SANOFIand PASTEUR. Those words are highly distinctive since they do not evidence any particular meaning. The element “pasteur” that is added to the word “sanofi”cannot prevent the public from believing that the disputed domain name is connected to the Complainant’s trademarks. The Complainant cites in favor of the likelihood of confusion the recent UDRP WIPO decision of July 21, 2014 in Sanofi v. VistaPrint Technologies Ltd,WIPO Case No. D2014-0842 concerning the domain names , and . Moreover, the Complainant mentions several other WIPO decisions regarding SANOFI trademarks taken over in domain names, from which it alleges that Sanofi’s distinctive signs have been recognized as well-known trademarks.
The Complainant concludes that the disputed domain name is to be deemed confusingly similar to the Complainant’s trademarks, domain names and corporate name of the Complainant.
Further, the Complainant argues that the Respondent does not appear to have any right or legitimate interest in respect of the disputed domain name. The Respondent’s name Zhao Jiaaiis devoid of any similitude to the disputed domain name. The Respondent has not been authorized through a license or otherwise to use the trademarks of the Complainant, with which he entertains no relationship at all. Finally, the Respondent does not appear to be making a legitimate noncommercial or fair use of the disputed domain name, as the page which is referenced under the disputed domain name is inactive (Annex 11 of the Complaint).
Rather, the Complainant alleges that the Respondent is guilty of opportunistic bad faith as his registration cannot be a mere coincidence. The Respondent must have known the well-known trademarks and domain names of the Complainant, as they are used worldwide. It is a fact that the Complainant’s trademarks are often cyber squatted, that is in itself evidence that they are well known. The Respondent is not making any use of the disputed domain name, which has been found in previous UDRP cases, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2003-0003, to be in itself evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Domain Name
The Panel finds that the disputed domain name is confusingly similar to the trademarks SANOFI and PASTEUR that are held by the Complainant directly or under an authorization to use. Between the disputed domain name and those well-known trademarks there is only the difference of the “.biz”Top-Level Domain, and there is no question that such an element cannot be found to be distinctive. Moreover, the Complainant has rightly observed that those two verbal elements are very distinctive, since they have no meaning in themselves (apart from the reference to the vaccine division of the Complainant). Therefore, the consumers and the other interested members of the public could not dissociate the disputed domain name and the activities of the Complainant, especially since the trademarks of the Complainant have been wholly incorporated into the disputed domain name. Further, the Panel notes that the Complainant already has registered two domain names and that are identical to the disputed domain name except for the Top-Level Domain. Confusingly similarity is therefore obvious. B. Rights or Legitimate Interests
The Respondent is not connected to the Complainant or its products in any manner whatsoever. The Respondent is not offering any goods or services under the disputed domain name, which is inactive. The Respondent has not been known as an individual or business organization by the disputed domain name or its constitutive elements. Nor has the Respondent alleged other prior rights or interests related to the disputed domain name. Finally, the Respondent is not attempting to make a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. In fact, the Respondent appears to make no use at all of the domain name and the webpage so referenced.
Therefore, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
The circumstances of the present case make it appropriate to find that the Respondent has registered and used the disputed domain name in bad faith. Although bad faith per se should not be presumed, the set of facts before the Panel leads to the finding of bad faith. First, the Respondent cannot have ignored that the Complainant uses its trademark, inter alia in China, as the extent of the Complainant’s activities is important in China too, as in the rest of the world, where half a billion people are administered yearly the vaccines manufactured by the Complainant. Second, the likelihood of confusion deriving from the fact that the only difference between the disputed domain name and the domain names of the Complainant, and , is the Top-Level Domain “.biz”,is also indicative of bad faith in the selection of the disputed domain name. That likelihood of confusion must have been intended by the Respondent. The Panel finds that the Respondent’s scheme was to attract Internet users to the disputed domain name to the detriment of the legitimate owner of the trademarks SANOFI and PASTEUR. 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.
Prof. François Dessemontet
Sole Panelist
Date: February 6, 2015
Full & Egal Universal Law Academy