The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Zhangwenhao of Beijing, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2017. On August 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2017, 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 August 24, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Respondent requested that Chinese be the language of the proceeding and the Complainant requested that English be the language of the proceeding.
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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2017. On September 4, 2017, the Complainant submitted a supplemental filing. The Response was filed with the Center on September 5, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 13, 2017. 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, Sanofi, a French multinational pharmaceutical company headquartered in Paris. The Complainant is ranked among the world's largest multinational pharmaceutical companies.
The Complainant reported consolidated net sales of EUR 33.82 billion in 2016, EUR 34.06 billion in 2015, and EUR 31.38 billion in 2014.
The Complainant is a multinational company settled in more than 100 countries on all continents employing 100,000 people.
The Complainant is the owner of numerous trademark registrations for the SANOFI mark. For example: French trademark registration number 96655339, with the registration date of December 11, 1996;
European Union trade mark registration number 010167351, with the registration date of January 7, 2012; International trademark registration number 1092811, with the registration date of August 11, 2011, and many more.
The Complainant also holds numerous domain names incorporating the SANOFI trademark. For example: , , , and many others.
The disputed domain name was registered on June 16, 2017.
Currently, the disputed domain name is inactive. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant further argues that the disputed domain name reproduces the Complainant's SANOFI trademarks and domain names, and that is sufficient to create a likelihood of confusion between the disputed domain name and the Complainant's trademarks and domain names.
The Complainant further argues that the ".site" suffix is insufficient to alleviate the likelihood of confusion between the Complainant's trademark and the disputed domain name.
The Complainant further argues that the reputation of the Complainant's good will was also recognized in numerous previous UDRP's cases.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that it has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the Complainant's trademark.
The Complainant further argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is he using the disputed domain name in connection with a bona fide offering of goods or services, where the disputed domain name is inactive.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further contends that the Respondent is not using the disputed domain name and this passive holding was considered in previous UDRP decisions as bad faith registration and use of a domain name.
The Complainant further contends that it has sent the Respondent a cease-and-desist letter on July 20, 2017, to which the Respondent replied that he will sell the disputed domain name to the highest bidder, and this is another indication of the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent is a college student.
The Respondent argued he acquired the disputed domain name at his own expense and without knowledge of the Complainant.
The Respondent argues that the Complainant has requested that he unconditionally transfer to it the disputed domain name, and that this will cause him a significant loss.
The Respondent further argues that he hoped to receive from the Complainant a reasonable fee back, to mitigate his loss, but the Complainant has been unreasonable.
The Respondent further argues that he hopes that the Panel will be fair to settle this dispute, while maintaining the good order of the domain name system, and also of the sunrise period, reduce the damage caused by the persons, businesses, and institutions in bad faith. C. Additional Submissions
On September 4, 2017, the Complainant has filed a supplemental filing indicating that the Respondent had correspondence with it in English, and offered to sell it the disputed domain name for USD 1,000, and this demonstrated the Respondent's bad faith. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) 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."
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of August 21, 2017.
The Complainant requested that the language of the proceeding be English.
The Respondent requested that the language of the proceeding be Chinese.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The disputed domain name was registered under the generic Top-Level Domain ("gTLD") ".site" which is meaningful in English;
(iii) The Respondent has been communicating with the Complainant in English;
(iv) The Complainant has no knowledge of Chinese, and in the present case, requiring the Complainant to translate the Complaint into Chinese would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the SANOFI mark. For example: French trademark registration number 96655339, with the registration date of December 11, 1996; European Union trade mark registration number 010167351, with the registration date of January 7, 2012; International trademark registration number 1092811, with the registration date of August 11, 2011, and many more.
The disputed domain name reproduces entirely the Complainant's SANOFI trademark with the addition of the gTLD ".site".
The addition of the gTLD suffix ".site" does not have the capacity to distinguish the disputed domain name from the Complainant's SANOFI registered trademark and is disregarded when comparing the disputed domain name with the Complaint's trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the SANOFI trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has filed a response to the Complaint, but has not submitted any substantive Response to the Complaint and did not claim nor provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the SANOFI trademark since at least the year 1992. In view of the evidence filed by the Complainant, and the widespread use of the SANOFI trademarks, it is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is identical to the Complainant's trademark. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
The Panel takes into consideration the fact that the Respondent did not deny the Complainant's assertion of rights in the SANOFI trademark and that the Respondent requested to sell the disputed domain name to the Complaint. The request made by the Respondent, in excess of his documented out-of-pocket expenses is considered by the Panel as bad faith use and registration of the disputed domain name. The Respondent did not provide any evidence or explanation why he selected the Sanofi name, nor indicated that he plans to make use of the disputed domain name.
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In this case there are appropriate circumstances, including the fact that there is no plausible use of the disputed domain name which would not end up interfering with the Complainant's trademark, said trademark is comprised of an arbitrary word, and the Respondent's failure to use the disputed domain name or provide clear evidence of intent to use coupled with a clear explanation as to why he selected the disputed domain name. These circumstances are considered to be indications of the Respondent's bad faith registration and use of the disputed domain name.
Having regard to the evidence, the Panel finds that the disputed domain name was registered and is being held by the Respondent with knowledge of the Complainant and in bad faith. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith."
Based on the evidence that was presented to the Panel, including the Complainant's registered trademark, the use of the Complainant's trademark in the disputed domain name, the absence use of the disputed domain name and the Respondent's offer to sell the disputed domain name to the Complainant, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 the Complainant.
Jonathan Agmon
Sole Panelist
Date: September 27, 2017
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