The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Wang Le, Shang Cheng Xin Xi Ke Ji Shang Hai You Xian Gong Si of Shanghai, China, self-represented. 2. The Domain Names and Registrars
The disputed domain names and are 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 June 20, 2018. On June 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 27, 2018.
On June 26, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 28, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 July 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2018. The Respondent submitted an informal email in Chinese on July 2, 2018, but did not file a formal Response. On July 23, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Joseph Simone as the sole panelist in this matter on July 26, 2018. 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
Sanofi is a French multinational pharmaceutical company headquartered in Paris (France) and is ranked one of the world’s largest multinational pharmaceutical companies by prescription sales. Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also over-the-counter medication. Sanofi had consolidated net sales of EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014.
Sanofi is a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA). The company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011.
Sanofi offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
Sanofi’s worldwide reputation was recognized in the annual “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey issued April 18, 2011, in which it appeared in the “Flash of Genius” section in reference to its promoting patient resources.
Sanofi currently owns the below trademark registrations in various jurisdictions over the globe:
- French trademark SANOFI (+device) registration number 3831592, registered on May 16, 2011 in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44, notably covering pharmaceutical products;
- French trademark SANOFI registration number 96655339, registered on December 11, 1996 in classes 1, 3, 5, 9, 10, 35, 40 and 42, notably covering pharmaceutical products;
- French trademark SANOFI (+device) registration number 92412574, registered on March 26, 1992 in class 5 covering pharmaceutical products;
- French trademark SANOFI registration number 1482708, registered on August 11, 1988 in classes 1, 3, 4, 5, 10, 16, 25, 28 and 31 notably covering pharmaceutical products;
- European Union trademark SANOFI registration number 010167351, filed on August 2, 2011 and registered on January 7, 2012 in classes 3 and 5, notably covering pharmaceutical products;
- European Union trademark SANOFI registration number 004182325, filed on December 8, 2004 and registered on February 9, 2006 in classes 1, 9, 10, 16, 38, 41, 42 and 44, notably covering pharmaceutical products and medical spheres;
- European Union trademark SANOFI registration number 000596023, filed on July 15, 1997 and registered on February 1, 1999 in classes 3 and 5, notably covering pharmaceutical products;
- International trademark SANOFI (+device) registration number 1091805, registered on August 18, 2011 in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44 notably covering pharmaceutical products, and designating, among other countries, Georgia, Russian Federation and Ukraine;
- International trademark SANOFI registration number 1092811, registered on August 11, 2011 in classes 1, 9, 10, 16, 38, 41, 42 and 44 notably covering pharmaceutical products and medical spheres and designating, among other countries, Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation and Ukraine;
- International trademark SANOFI registration number 1094854, registered on August 11, 2011 in classes 3 and 5, notably covering pharmaceutical products, and designating, among other countries, Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation and Ukraine;
- International trademark SANOFI registration number 674936, registered on June 11, 1997 in classes 3 and 5, notably covering pharmaceutical products and designating among others Switzerland, Cuba, Romania, Russia Federation and Ukraine;
- International trademark SANOFI (+device) registration number 591490, registered on September 25, 1992 in class 5 covering pharmaceutical products, and designating, among other countries, Switzerland, China, Cuba, Romania and Russian Federation;
- United States of America trademark SANOFI registration number 4178199, filed on August 12, 2011 and registered on July 24, 2012 in class 5 notably covering pharmaceutical products;
- Chinese trademark 赛诺菲 (pronounced “sainuofei”) number 747304, registered on May 28, 1995 in class 5, notably covering pharmaceutical products;
- Chinese trademark SANOFI registration number 1154668, registered on February 28, 1998 in class 5, notably covering pharmaceutical products;
- Chinese trademark SANOFI registration number 1202329, registered on August 28, 1998 in class 5, notably covering pharmaceutical products;
- Chinese trademark SANOFI registration number 1330148, registered on November 7, 1999 in class 3;
- Chinese trademark SANOFI registration number 1386355, registered on April 21, 2000 in class 5 notably covering pharmaceutical products;
- Chinese trademark SANOFI registration number 7993681, filed on January 14, 2010 and registered on February 7, 2011 in class 5, notably covering pharmaceutical products; and
- Chinese trademark SANOFI registration number 9504488, filed on May 24, 2011 and registered on March 7, 2014 in class 5, notably covering pharmaceutical products.
The Complainant is also the owner of the below domain names, and many of which are registered and put into active use by the Complainant in connection with its activities:
- registered on October 13, 1995;
- registered on March 12, 2006;
- registered on October 10, 2006;
- registered on May 16, 2002;
- registered on May 16, 2003;
- registered on January 05, 2004;
- registered on November 19, 2001;
- registered on August 24, 2001;
- registered on July 12, 2001;
- registered on June 20, 2006;
- registered on March 17, 2011;
- registered on April 28, 2004.
The disputed domain names and were registered on March 19, 2018. They resolve to inactive webpages. On March 23, 2018, the Complainant sent the Respondent a cease-and-desist letter to which the Respondent did not reply. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant contends that the disputed domain names are identical or confusingly similar to the mark SANOFI in which it has rights, based on the following:
(i) The Complainant holds a number of SANOFI trademarks registered and used worldwide, all of which predate the disputed domain names. The disputed domain names incorporate the Complainant’s SANOFI trademark in its entirety, and the same trademark is clearly recognizable within the disputed domain names without any modifications. It is generally accepted that the Top-Level Domain (“TLD”) “.com” suffix may be disregarded under the confusing similarity test.
(ii) The disputed domain names reproduce the Complainant’s trademark SANOFI, which previous UDRP panels have considered as well-known or famous. Many UDRP decisions have considered that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered trademark. The addition of the generic terms “asset” and “assetm” is insufficient to avoid any likelihood of confusion, especially given that “asset” is highly descriptive considering that Sanofi’s fields of activity deal with pharmaceutical assets (medicine patents, trademarks, etc.) and “assetm” can be interpreted as “Sanofi’s assets need to be Managed, or that these assets regard Medicines and the Medical business.
(iii) The Complainant has used the trademark SANOFI in connection with pharmaceutical products under the trademark and trade name Sanofi over the last 40 years and invested substantial financial resources in this time to advertise and promote the company and its SANOFI trademarks in countries all over the world, including China.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names based on the following:
(i) It is obvious that the Registrant does not have any legitimate interest in using the disputed domain names since the Respondent did not even indicate his/her/its identity. Indeed, the details provided on the identity of the Registrant are non-existing. Such incomplete details should serve to indicate an absence of legitimate interest as it does for bad faith registration and use.
(ii) The Respondent is not affiliated with the Complainant in any way and has not been authorized or licensed by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the SANOFI mark. Furthermore, the Respondent has no prior rights or legitimate interests to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant.
(iii) The Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. In fact, the disputed domain names simply resolve to inactive pages.
Registered and used in bad faith
The Complainant submits that the disputed domain name was registered in bad faith on the following grounds:
(i) There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.
(ii) UDRP decisions regularly recognize opportunistic bad faith in cases in which the domain names appear confusingly similar to a complainant’s well-known trademarks. In that regard, the Complainant cites Sanofi v. Bo Li,WIPO Case No. D2013-1971 involving the Complainant, in which the panel stated that the Complainant itself and its SANOFI trademark have obtained worldwide fame, reputation and notoriety though substantial use.
(iii) The provision of false, inaccurate or incomplete registrant details has been recognized as an indicator of bad faith and the Respondent has neither prior rights nor a legitimate interest to justify the registration or use of the already well-known trademarks of the Complainant which indicates an absence of good faith.
(iv) According to WIPO statistics, the SANOFI trademark appeared as one of the most cyber-squatted trademarks in 2011.
(v) Therefore, the Respondent must have undoubtedly been aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain names because it could lead Internet users searching for official information or Sanofi products to the Respondent’s pages.
(vi) Currently, the disputed domain names resolve to inactive pages and this falls under the behavior of “passive holding” which prior UDRP decisions have regarded as a characteristic of the domain name “being used in bad faith”.
(vii) The Complainant sent a cease-and-desist letter to the Respondent but the Respondent did not reply.
(viii) As such, the disputed domain names have both been registered and used intentionally in bad faith by the Respondent without any rights or legitimate interests. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions, however, in his communication with the Center, the Respondent indicated his willingness to transfer the disputed domain names to the Complainant, provided that he must be sure that the Complainant is indeed the rightful owner. 6. Discussion and Findings 6.1 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons:
(i) As stated in BACCARAT SA v. Sprout Ltd., Mamoru Shiga,WIPO Case No. D2010-1694, 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.
(ii) Sanofi is a worldwide international company with trademark registrations in multiple jurisdictions, including China, and for which international business is primarily operated in English. Therefore, the Complainant is not able to communicate in Chinese.
(iii) The disputed domain names contain the term “sanofi” which is an arbitrary word without particular signification and also include the term “asset” and the acronym “tm” which are purely descriptive English terms which may concern a company’s fields of activity.
(iv) In addition, the disputed domain names and are registered in Latin characters, specifically the English language, rather than Chinese script. Therefore, the choice made by the Respondent in selecting English terms and characters in the disputed domain names advocates the fact he is inevitably acquainted with English language.
(v) If the Complainant were to submit all documents in Chinese, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
(vi) As indicated by the Complainant in its Complaint, the language of the Registration Agreement is available in English, a copy of which is provided as Annex 3 to the Complaint.
(vii) Moreover, the disputed domain names and were registered through Alibaba Cloud Computing Ltd. d/b/a HiChina, which is a corporate company incorporating the English words or acronyms “Cloud”, “computing”, “hichina” and “ltd” (limited). Therefore, the choice made by the Respondent in selecting the Registrar “Alibaba Cloud Computing Ltd. d/b/a HiChina” in the disputed domain names advocates the fact he is inevitably acquainted with English language.
The Respondent did not respond on this issue, and he did not object for English to be the language of the proceeding
In accordance with paragraph 11 of the Rules:
“…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.”
Therefore, prima facie, the language of the proceeding shall be Chinese.
Noting the aim of conducting proceedings with due expedition while also ensuring parties are given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement.
These include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark and (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.
Although the disputed domain names are indeed comprised of English characters, in the Panel’s view, it does not follow from this alone that the Respondent is necessarily familiar with the English language, nor does the choice by the Respondent to select the Registrar “Alibaba Cloud Computing Ltd. d/b/a HiChina” advocate he is inevitably acquainted with English language, as the English name is highly likely a result of an automatic translation at the WhoIs server.
That said, because the Respondent was notified in both English and Chinese by the Center of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding, and because the Respondent failed to submit any substantive response to the Complaint and did not object for English to be the language of the proceeding, the Panel does not believe it would be prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto were required to be translated into Chinese. In keeping with the Policy’s aim of facilitating a relatively time- and cost-efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Panel finds that the Complainant has registered rights in the mark SANOFI for which the Complainant has international and Chinese trademark registrations. The Complainant also has unregistered rights by virtue of using the mark SANOFI in connection with pharmaceutical products around the world.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962).
When comparing the domain names with the trademark, the TLD “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite,WIPO Case No. DCC2007-0003).
In this case, the disputed domain names and obviously incorporate the entirety of the Complainant’s trademark SANOFI. After removing the “.com” suffixes, the elements that remain are the descriptive terms “asset” and “assetm” respectively, and it is well established that the addition of a merely descriptive term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra,WIPO Case No. D2004-0732).
The first requirement of the UDRP is therefore satisfied. B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name.
In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:
(i) There is no evidence that the Respondent is commonly known by the disputed domain names.
(ii) In this case, the Complainant makes the undisputed allegations that there is no relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain names.
(iii) The Respondent does not appear to have used the disputed domain names in connection with an active website at any time since its creation.
Having prima facie established the Respondent’s lack of rights or legitimate interests, the burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0) and the Respondent has not presented any evidence to rebut the Complainant’s assertions.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and the second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Given that “sanofi” is not a dictionary word and that the disputed domain names are virtually identical to the trademark SANOFI, the Panel accepts that the Respondent likely knew of the Complainant’s trademark when it registered the disputed domain names. The integral reproduction of the SANOFI trademark in and can hardly be the result of a coincidence, and shows in the Panel’s view that the Respondent was aware of the Complainant’s rights and activities.
Accordingly, the Panel finds that the disputed domain names were registered in bad faith.
As to whether the disputed domain names are being used in bad faith, the Respondent has not made any active use of the disputed domain names, which do not resolve to active websites.
From the inception of the UDRP, panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The facts of this case are similar to those in Telstra Corporation Limited v. Nuclear Marshmallows, supra, in which it was found that passive holding of a domain name satisfied the requirement in paragraph 4(a)(iii) of “being used in bad faith”.
(i) The Complainant is well-known and the trademark in question is highly distinctive.
(ii) By failing to respond to the Complainant’s cease-and-desist letter and failing to submit a formal Response to the Complaint, the Respondent did not provide any evidence or indication of any actual or contemplated good-faith use of the disputed domain names.
(iii) Given the exact replication of the trademark SANOFI in the disputed domain names beside descriptive terms, and the absence of any relationship between the Respondent and the Complainant, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain names.
It has not been established that the Respondent took active steps to conceal its identity; rather, the registrant’s details appear to be incomplete. Nevertheless, taking into account the above, the Panel cannot conceive of any plausible use of the disputed domain names that would be legitimate, absent an authorization from the Complainant. As the disputed domain names strictly incorporate the Complainant’s distinctive mark, it is highly likely that consumers would deem a website associated with either of the disputed domain names as operated or endorsed by the Complainant, when this is not the case.
Therefore, the Panel concludes that the passive holding of the disputed domain names in this case amounts to use in bad faith.
For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, and that the Complainant has satisfied the condition set forth in 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 names and be cancelled.
Joseph Simone
Sole Panelist
Date: August 9, 2018
Full & Egal Universal Law Academy