The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is hao chen, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2019. On June 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2019 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 in English on June 25, 2019.
On June 21, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 24, 2019. The Respondent did not comment on the language of the proceeding.
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 June 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2019.
The Center appointed Linda Chang as the sole panelist in this matter on July 29, 2019. 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, a French multinational pharmaceutical company, engages in research and development, manufacturing and marketing of pharmaceutical products for sale in the prescription market and
over-the-counter medication. The Complainant settles in more than 100 countries on all five continents and ranks the fourth of the world’s largest multinational pharmaceutical company by prescription sales.
The Complainant is the rightful owner of numerous SANOFI trademarks, inter alia, French trademark registration number 1482708 registered on August 11, 1988, European Union trademark number 004182325 registered on February 9, 2006, and International trademark registration number 591490 registered on September 25, 1992 which designates China.
The Domain Name was registered by the Respondent on May 25, 2019, and currently redirects to a parking website offering an app for downloading to watch what appears to be pornographic videos. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name reproduces the SANOFI trademark and the dominant part of the Domain Name is confusingly similar to the Complainant’s trademark regardless of the adjunction of the descriptive geographical acronym “cn” and the general Top-Level Domain (“gTLD”) extension “.com”.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the SANOFI trademark. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name nor is he using the Domain Name in connection with a bona fide offering of goods or services.
The Complainant finally contends that the Respondent registered and is using the Domain Name in bad faith. Given the Complainant’s worldwide reputation, the Respondent should have been aware of the SANOFI mark prior to registering the Domain Name. The Respondent’s use of the Domain Name as a parking site to attract Internet users into clicking on the links and pornographic contents is an indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Registrar confirms that the language of the registration agreement for the Domain Name is Chinese, while the Complainant filed the Complaint in English and has requested for English to be the language of the proceeding, for the reasons that stated below:
(i) The Complainant is not able to communicate in Chinese.
(ii) The Domain Name is registered in Latin characters and particularly with a reference to English language via the use of “cn” which stands for China in English language. The choice made by the Respondent in selecting English terms and characters in the Domain Name advocates the fact it is inevitably acquainted with English language.
(iii) 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.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding by taking into consideration all relevant circumstances, to ensure fairness of both parties and due expedition of the proceeding.
The Respondent has been given a fair opportunity to comment on the language of the proceeding by the Center but chosen not to respond nor object to the use of English as the language of the proceeding. Considering the circumstances of this proceeding, the Panel agrees that using English as language of the proceeding would not be prejudicial to the Respondent in his ability to articulate the arguments for the case.
The Panel thus decides that the language of the proceeding shall be English and the decision will be rendered in English. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has registered trademark rights in the SANOFI mark.
The Panel accepts that the Domain Name comprises an exact reproduction of the SANOFI trademark, a geographical acronym “cn”, and a gTLD suffix “.com”. It has been well established that the gTLD suffix used as part of a domain name should be disregarded, and hence the dominant part of the Domain Name is “sanoficn”.
The Domain Name reproduces the Complainant’s SANOFI trademark in its entirety. The addition of the geographical acronym “cn” meaning China does not avert a finding of confusing similarity, but will, on the contrary, merely affirms such confusing similarity as it suggests to Internet visitors that the Domain Name is related to the Complainant’s activities in China.
Accordingly, the Panel holds the Domain Name is confusingly similar to the Complainant’s trademark, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has demonstrated rights in the SANOFI trademark, and confirms that the Respondent has not been licensed or authorized to use the SANOFI trademark or to register any domain name including the mark.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy, and the burden of production thus shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Respondent however has failed to file a response to prove his rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. Based on the evidence presented on the record, the Panel agrees that the Respondent’s use of redirecting the Domain Name to a website offering an app for downloading to watch what appears to be pornographic videos is not a legitimate noncommercial or fair use of the Domain Name.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, and the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Given the distinctive nature of the SANOFI trademark, as well as the market presence of the Complainant in numerous countries including China where the Respondent resides, the Panel is persuaded that the Respondent is likely to have had at least constructive knowledge as to the existence of the mark at the time of registering the Domain Name. The choice of the Domain Name incorporating the Complainant’s famous and distinctive trademark can in no way be the result of a mere coincidence but suggests that the Respondent acted with opportunistic bad faith in registering the Domain Name.
Registering a domain name that is confusingly similar to the famous trademark SANOFI by the Respondent that has no relationship to the Complainant is itself sufficient evidence of bad faith registration and use. The Domain Name has been clearly registered for the purpose of redirecting Internet users to a website for the purposes of attracting them into downloading an app to watch what appears to be pornographic videos for commercial gain. The Respondent is undeniably trying to take advantage of the Complainant’s reputation for commercial gain, which does not correspond to a bona fide noncommercial use. Such registration and use of the Domain Name constitute paragraph 4(b)(iv) of the Policy.
The Panel considers that the circumstances of the present case make it appropriate to find that the Domain Name was registered and is being used in bad faith, and the Complainant has satisfied the requirements of 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 Domain Name, , be transferred to the Complainant.
Linda Chang
Sole Panelist
Date: August 12, 2019
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