The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is zhang jia gang shi bo ji long ji xie you xian gong si, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 28, 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 July 4, 2019.
On June 28, 2019, the Center transmitted an email in both English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on July 4, 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 July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2019.
The Center appointed Francine Tan as the sole panelist in this matter on August 5, 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 is a French multinational pharmaceutical company headquartered in Paris, France. It is the world’s fourth largest multinational pharmaceutical company by prescription sales. The Complainant engages heavily in research and development, with an investment of EUR 5.47 billion in 2017; and is also engaged in manufacturing and marketing of pharmaceutical products for sale. The Complainant’s business is established in more than 100 countries, with an employment count of about 100,000 people.
The Complainant owns many trade mark registrations for the word SANOFI and other figurative marks containing the word SANOFI. These include French trade mark Registration Nos. 3831592, registered on May 16, 2011, 96655339, registered on December 11, 1996, and 1482708, registered on August 11, 1988; European Union trade mark Registration Nos. 000596023, registered on February 1, 1999 and 004182325, registered on February 9, 2006. The SANOFI trade mark has also been registered in China under International trade mark Registration No. 591490, registered on September 25, 1992.
Additionally, the Complainant owns numerous domain name registrations containing the word “Sanofi”. These include:
i. registered on October 13, 1995;
ii. registered on March 12, 2006;
iii. registered on October 10, 2006;
iv. registered on May 16, 2003;
v. registered on August 24, 2001;
vi. registered on June 20, 2006; and
viii. registered on April 28, 2004.
These trade mark and domain name registrations were obtained prior to the registration of the disputed domain name.
The disputed domain name was registered on May 4, 2015 and resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s SANOFI trade mark in which it has rights. The disputed domain name contains the distinctive word “sanofi” and includes a descriptive country symbol “cn”, which represents “China”. The addition of this abbreviation suggests to Internet users that the disputed domain name is related to the Complainant’s activities in China.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never licensed or authorized the Respondent to use or to register any domain name incorporating the trade mark SANOFI. There is no relationship between the Complainant and the Respondent. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Neither is it using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it.
The disputed domain name was registered and is being used in bad faith. The Complainant’s mark is well known and reputable. As such, the Respondent’s registration of the disputed domain name constitutes opportunistic bad faith. The Respondent must have known of the Complainant’s SANOFI mark but chose to exploit its fame and goodwill. The Respondent’s intention was to attract Internet users to the Respondent’s website by creating confusion with the Complainant’s SANOFI trade mark. The passive holding of a disputed domain name does not mean that there can be no finding of bad faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue
Language of the Proceeding
The Registration Agreement applicable to the disputed domain name is in Chinese but the Complaint was filed in English. The Complainant requested that English be adopted as the language of the proceeding for these reasons:
a) the Complainant is not able to communicate in Chinese;
b) the disputed domain name is composed of Latin characters and the English abbreviation for China, “cn”, rather than Chinese script, which shows that the Respondent is familiar with the English language;
c) should the Complainant have to furnish all the documents required for the administrative proceeding in Chinese, substantial financial expenses have to be incurred and cause a delay.
The Respondent did not respond to the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that “[u]nless 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”.
Bearing in mind the mandate set out in paragraph 10(c) of the Rules, namely that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel is satisfied that it would be appropriate in this case for English to be the applicable language for the proceeding. The Respondent appears to be familiar with the English language since the disputed domain name comprises Latin characters and the English abbreviation for “China”. The Complainant’s assertions were not rebutted by the Respondent whereas a delay in the proceeding and requiring the Complainant to incur additional substantial costs do not seem warranted in this case. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Complainant has established it has rights in the SANOFI trade mark. The trade mark is identifiable in the disputed domain name. The Panel agrees that the addition of the letters “cn” in the disputed domain name does not remove the confusing similarity with the SANOFI trade mark.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trade mark and domain name registrations which comprise or contain the trade mark SANOFI predate the registration of the disputed domain name by many years.
The Panel agrees that SANOFI is a well-known mark. No licence or authorization has been extended by the Complainant to the Respondent for the use of the “sanofi” word as a trade mark or in a domain name. There is also no evidence that the Respondent is commonly known by the disputed domain name or other name containing the word “sanofi”. There is no evidence that the Respondent has been commonly known by the name “cnsanofi” or “sanofi, or that there have been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. SANOFI is such a well-known trade mark that it is inconceivable for the Respondent to be able to assert any right or legitimate interest in the disputed domain name.
The Respondent failed to respond or file any evidence to rebut the Complainant’s case.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The incorporation of the entire trade mark SANOFI, which is a distinctive word, in the disputed domain name gives rise to a strong presumption that the Respondent had registered the disputed domain name for the specific intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Although the disputed domain name is not in active use, one can surmise that the Respondent must have been aware of the reputation of the Complainant and its business, which is why it adopted the disputed domain name and added a reference to China by the addition of the abbreviation “cn”.
The Respondent did not offer any explanation for how it came to adopt this term for the disputed domain name. In view of the extensive global presence the Complainant has, it is highly improbable that the Respondent was not aware of the Complainant’s business and rights in the trade mark SANOFI at the time it registered the disputed domain name. SANOFI has such a unique and distinct identity that is associated exclusively with the Complainant. For this reason, that there can be no contemplated good faith use of the disputed domain name. The fact that the disputed domain name is passively held does not prevent a finding of bad faith registration and use since the mark is widely known and recognized. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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.
Francine Tan
Sole Panelist
Date: August 8, 2019
Full & Egal Universal Law Academy