Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Sun Shou Bo of Beijing, 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 February 17, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On February 25, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant confirmed its request that English be the language of the proceeding. 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 Respondent of the Complaint in both Chinese and English, and the proceeding commenced on March 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2015.
On March 9, 2015, the Respondent appeared to indicate that it would be willing to transfer the disputed domain name to the Complainant at a cost. On March 10, 2015, the Center invited the Complainant to indicate whether it wished to suspend the proceeding for the purpose of settlement. On the same day, the Complainant confirmed that it would like to proceed with the case. The Respondent did not submit any Response. On March 24, 2015, the Center informed the parties that it should proceed with the panel appointment.
The Center appointed Yijun Tian as the sole panelist in this matter on April 7, 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
Complainant, Sanofi of Paris, France, is a company incorporated in Paris, France. It is a leading multinational pharmaceutical company, which engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market. With sales of EUR 34, 94 billion in 2012 and EUR 32, 95 billion in 2013 (Annex 4 to the Compliant), it is the fourth world’s largest multinational pharmaceutical company by prescription sales. It is settled in more than 100 countries, including China, and employs 110,000 people (Annex 5.1 to the Compliant).
Complainant has exclusive rights in numerous trademarks comprising the keyword “sanofi” (hereafter “SANOFI Marks”). Complainant is the owner of well-known registered SANOFI Marks globally, such as French (since 1988), Community trademark (since 1997), and international registration covering China (since 1992) (Annex 7.12 to the Compliant). It also owns the domain name since October 13, 1995.
Respondent is Sun Shou Bo of Beijing, China. The disputed domain name was registered by Respondent on July 4, 2014, long after the SANOFI Marks were registered. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
(a.1.) Complainant is the owner of well-known registered SANOFI Marks globally, such as French (since 1988), Community trademark (since 1997), and international registration covering China (since 1992).
It also owns many domain names, which contains the key word “sanofi”, such as registered on October 13, 1995, registered on March 12, 2006 and registered on October 10, 2006.
Respondent could simply not ignore Complainant whose trademarks and domain names are also present in China.
(a.2.) By comparing Complainant’s trademarks and domain names, the disputed domain name reproduces the SANOFI trademarks and domain names, which, as themselves, do not have any particular meaning and are therefore highly distinctive.
Complainant is a multinational company in the pharmaceutical field and it has used its SANOFI trademark and trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI-branded pharmaceutical products in countries all over the world, including China.
Complainant has long maintained a significant presence in China. It has sold its SANOFI-branded products in China for years and has operated a Chinese website for many years. The SANOFI marks are widely known and recognized in China and beyond.
The reproduction of Complainant’s trademarks and domain names as the dominant part of the disputed domain name is confusingly similar to the prior above cited trademarks, regardless of the generic Top-Level Domain (“gTLD”) and descriptive extension “wang”.
The new gTLD extension made up of the word “wang” which is a transliteration of the Chinese character which translates loosely to “website” adds further confusion with Complainant’s trademarks and domains names as Complainant’s marks remain the dominant component of the disputed domain name. It is insufficient to alleviate the likelihood of confusion between Complainant’s trademarks and disputed domain name .
The disputed domain name could lead average consumers to mistakenly believe that the disputed domain name is related to the official Sanofi website or at least that it leads to an official website belonging to Sanofi.
Previous UDRP Panel has already considered that the SANOFI Marks are well-known in many jurisdictions.
Therefore, the disputed domain name is confusingly similar to the trademarks and domain names in which Complainant has rights.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent does not have any legitimate interest in using the disputed domain name since the names “Sun Shoubo” or “Huaxon” mean nothing and do not bear any resemblance with the word “sanofi”, which has no meaning and is therefore highly distinctive.
Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide trademarks and domain names of Complainant.
Complainant has never licensed or otherwise authorized Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks.
Respondent has not made fair use of the disputed domain name – without intent for commercial gain to misleadingly divert consumers or to tarnish the well-known SANOFI Marks – so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy given that the website at the disputed domain name is clearly used as a bait and switch.
The disputed domain name is used by Respondent to redirect Internet users to the same webpage as the company HUAXON’s website, which mainly engaged in intelligent water and electric meter products.
Respondent is not making legitimate noncommercial or fair use of the disputed domain name, by taking unfair advantage of the reputation of Complainant’s trademarks and domain names.
Respondent is using the disputed domain name to obtain commercial gain by misleadingly diverting consumers in search for Complainant’s website or Sanofi products to his website.
Previous UDRP Panels regularly held that even if respondent is using its domain name in connection with an offering of goods and services, this does not prove that it had rights or legitimate interests in the domain name.
(c) The disputed domain name was registered and is being used in bad faith.
Previous UDRP Panels regularly recognize opportunistic bad faith in cases in which the disputed domain name appears confusingly similar to a complainant’s well-known trademarks.
(c.1.) The disputed domain name was registered in bad faith:
Respondent registered in bad faith the disputed domain name corresponding to the trademarks and domain names owned by Complainant, as this behavior can in no way be the result of a mere coincidence.
Respondent does not have any legitimate interests in registering or in using the disputed domain name since the names “Sun Shoubo” or “Huaxon” do not bear any resemblance with the word “sanofi”, which has no meaning and is therefore highly distinctive.
Respondent has neither prior right nor legitimate interest to justify the registration or use of the already well-known and worldwide trademarks and domain names of Complainant. The absence of legitimate interest somewhat induces the absence of good faith.
Given the famous and distinctive nature of the mark SANOFI, Respondent is likely to have had, at least, constructive, if not actual notice, as to Complainant’s mark at the time he registered the disputed domain name.
The disputed domain name has obviously been registered for the purpose of attracting Internet users to Respondent’s website by creating a likelihood of confusion between the SANOFI Marks and the disputed domain name .
Sanofi is nowadays one of the leaders among pharmaceutical companies, ranking first in Europe and ranked fourth in the world in the pharmaceutical industry.
Furthermore, it must be recalled that Complainant is the owner of the SANOFI trademarks which are worldwide well-known (Annex 7 to the Complaint) and different domain names reproducing the distinctive term “Sanofi”.
In cases in which the well-known status of a complainant’s trademarks is well-established, numerous panel decisions constantly acknowledge that this consideration is, in itself, indicative of bad faith registration and use.
Numerous UDRP panel decisions have recognized the reputation of the SANOFI trademarks.
Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name. This knowledge characterizes Respondent’s bad faith registration.
(c.2.) The disputed domain name is being used in bad faith
Given the famous and distinctive nature of the marks SANOFI, Respondent is likely to have had, at least, constructive, if not actual notice, as to Complainant’s mark at the time he registered the name. This suggests that Respondent acted with opportunistic bad faith in having registered the name in order to make an illegitimate use of it.
As the disputed domain name directs Internet users to a website which is not the official website of Complainant’s products, Respondent has registered the disputed domain name primarily for the purpose of trying to gain unfair benefit of Complainant’s goodwill and reputation.
It creates a likelihood of confusion with Complainant’s trademarks and domain names as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the products displayed/advertised for sale on it.
On December 29, 2014, Sanofi sent to Respondent a cease and desist letter, by email. Respondent responded by denying any wrongdoing and proposing to transfer his domain name for USD 1,400.
UDRP Panels repeatedly find that respondents’ offer to sell disputed domain names to complainants, without any documentation of respondents’ out-of-pocket costs directly related to the disputed domain name, is additional evidence of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions formally.
By contrast, he sent an email, which proposed to transfer the disputed domain name for USD 1,400. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the 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 on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is a worldwide international company whose headquarters are located in Paris with trademark registrations in multiple countries and whose international business is primarily operated in English. Complainant is not able to communicate in Chinese.
(b) The disputed domain name contains the term “sanofi” which is an arbitrary word without particular signification and the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script.
(c) The gTLD extension “.wang” is the transliteration of the word “website”, so the implementation of a “.wang” extension is meant to provide a domain space for Chinese users who are also fluent in a Latinate language, or are comfortable using Latin characters. There is a link on the webpage displays a link which provides an English version of the site.
(d) The disputed domain name was registered through Chengdu West Dimension Digital Technology Co. Ltd, which is a corporate company incorporating the English words “Dimension” “digital” “technology” “co.” (company) “Ltd” (limited). The choice made by Respondent in selecting the Registrar Chengdu West Dimension Digital Technology Co. Ltd, in the disputed domain name advocates the fact he is inevitably acquainted with English language.
(e) In Respondent’s responses to the cease and desist letter sent from Complainant dated December 30, 2014 and January 23, 2015, Respondent responded in English and this inevitably demonstrates that Respondent is able to adequately respond and understand English.
(f) If Complainant were to submit all documents in Chinese, the administrative proceeding would be unduly delayed and Complainant would have to incur substantial expenses for translation.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances of the case. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainant is a company from France, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that Respondent’s website is in Chinese (but contains some English words) and the disputed domain name includes Latin characters “sanofi” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters, rather than Chinese script; (b) The content on the website at the disputed domain name is in Chinese, but it does contain some English words, such as “English” and “Copyright”; (c) Respondent’s responses to the cease and desist letter sent from Complainant were written in in English; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has not objected to Complainant’s request that English be the language of the proceeding; and (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds that 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards 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 Panel finds that Complainant has rights in the SANOFI Marks acquired through registration. The SANOFI Marks have been registered worldwide including in France, Europe and China, and Complainant has a widespread reputation as one of the world’s largest multinational pharmaceutical companies by prescription sales.
The disputed domain name comprises the SANOFI Mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the top-level suffix of “.wang” to the SANOFI Marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. WIPO Overview 2.0 states:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (paragraph 1.2).
Thus, the Panel finds that the suffix “.wang” is not sufficient to negate the confusing similarity between the disputed domain name and the SANOFI Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel 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 respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the SANOFI Marks globally, including international trademark registration covering China since 1992 which long precedes Respondent’s registration of the disputed domain name (July 4, 2014).
According to the Complaint, with sales of EUR 34, 94 billion in 2012 and EUR 32, 95 billion in 2013, Complainant is the fourth world’s largest multinational pharmaceutical company by prescription sales. It is settled in more than 100 countries, including China, and employs 110,000 people.
Moreover, Respondent is not an authorized dealer of SANOFI branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Although it seems that Respondent is using the disputed domain name in connection with an offering of goods and services, Respondent proposed to transfer the disputed domain name for USD 1,400 as soon as Respondent received the cease and desist letter sent from Complainant. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “sanofi” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SANOFI Marks or to apply for or use any domain name incorporating the SANOFI Marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on July 4, 2014, long after the SANOFI Marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant’s SANOFI Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, in Respondent’s responses to the cease and desist letter sent from Complainant, Respondent proposed to transfer the disputed domain name for USD 1,400.
The Panel finds that Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. 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 the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the SANOFI Marks with regard to its products. Complainant has registered its SANOFI Marks internationally, including international registration covering China (since 1992). Based on the information provided by Complainant, Complainant is the fourth world’s largest multinational pharmaceutical company by prescription sales. It is settled in more than 100 countries, including China, and employs 110,000 people.
It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2014).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. By contrast, Respondent proposed to transfer the disputed domain name for USD 1,400. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s advertised SANOFI-branded products. b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”.
After Respondent received the cease and desist letter sent from Complainant, Respondent proposed to transfer the disputed domain name for USD 1,400.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the SANOFI Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the SANOFI Marks. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves and the offer to sell the disputed domain name to Complainant are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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.
Yijun Tian
Sole Panelist
Dated: April 23, 2015
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