The Complainant is Les Laboratoires Servier, France, represented by IP Twins S.A.S., France.
The Respondent is FanYuLong, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2020, 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 January 7, 2020 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 amended Complaint in English on January 20, 2020. On January 7, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on January 17, 2020. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 January 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2020. The Center appointed Joseph Simone as the sole panelist in this matter on February 26, 2020. 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 Founded in 1954 by Dr. Jacques Servier, the Complainant, Les Laboratoires Servier, is a large French pharmaceutical group with global presence. It owns numerous trademarks worldwide for SERVIER, including the following: - SERVIER, European Union trademark registration No. 004279171, registered on October 15, 2007, in international classes 5, 35, 41 42 and 44; - SERVIER, international trademark registration No. 814214, registered on August 5, 2003 in international classes 5, 35, 41, 42 and 44 and protected in jurisdictions including China; - SERVIER and Device, international trademark registration No. 571972, registered on May 29, 1991 in international classes 1, 3 and 5 and protected in jurisdictions including China; - SERVIER and Device, international trademark registration No. 549079, registered on January 19, 1990 in international classes 1, 3, 5, 10, 16, 35, 41 and 42 and protected in jurisdictions including China. The Complainant also owns a large portfolio of domain names incorporating its trademark SERVIER, both within generic Top-Level Domain (“gTLD”) and country code Top-Level Domain (“ccTLD”), such as The disputed domain name The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark SERVIER. The disputed domain name reproduces SERVIER in its entirety, and adds to it the descriptive term “home” – the mere addition of which cannot escape a finding of confusing similarity. Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no indication that the Respondent has been commonly known by the disputed domain name; it does not hold any trademarks incorporating SERVIER – a surname in French with no specific meaning – and has not been provided a license, or is otherwise authorized, by the Complainant to use its trademark. Further, the Respondent is using the disputed domain name to direct users to an active website hosting pornographic content, which is the exact opposite of “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain.” Lastly, the Complainant argues that the disputed domain name was registered and is being used in bad faith within the meaning of the Policy. In this regard, the distinctiveness and well-known status of the Complainant’s trademark SERVIER make it highly unlikely that the Respondent did not know about the Complainant when it registered the disputed domain name. And by registering a domain name which combines the Complainant’s distinctive trademark with an additional descriptive term, the Respondent is clearly creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, further showcasing its bad faith. Finally, the Complainant contends that the Respondent not only attempts to attract Internet users to the disputed domain name for commercial gain, but also tries to tarnish the Complainant’s name and fame by redirecting the disputed domain name to a pornographic website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 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, the default language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, as it would not be able to effectively communicate in Chinese and would have to bear a great deal of additional expense and delay if it were required to submit all documents in Chinese. The key consideration in choosing the language of the proceeding is to ensure that each party has a fair opportunity to present its case. The Respondent was notified of each step of the proceedings in both Chinese and English and did not respond regarding the choice of the language, or submit a formal response. Therefore, the Panel believes that there would be no prejudice caused to the Respondent by proceeding in English. On the other hand, requiring the Complainant to submit the Complaint in Chinese would be a waste of resources. Therefore, the Panel has decided that the language of the proceeding shall be in English and shall proceed with a decision in English. 6.2 Substantive Issues A. Identical or Confusingly Similar Under the first element of the Policy, a complainant must prove that a 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). The Complainant has provided evidence of several trademark registrations for SERVIER, thereby showing that it has rights in the trademark. The test for whether a domain name is identical or confusingly similar to a complainant’s trademark is fairly straightforward and 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). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term may however bear on assessment of the second and third elements (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284). In this case, the disputed domain name is composed of the Complainant’s distinctive trademark SERVIER in its entirety plus the term “home”, the mere addition of which cannot prevent a finding of confusing similarity. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests The second element is established where a complainant demonstrates that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy). While the overall burden of proof rests with the complainant, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof for this element shifts to the respondent to produce evidence demonstrating its rights or legitimate interests in the domain name. Otherwise, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant asserts that is has never licensed its trademark to the Respondent, or otherwise authorized the Respondent to use it in any way. Nor is there any evidence that the Respondent is commonly known by the disputed domain name. Instead, the Respondent has registered a domain name that fully incorporates the Complainant’s widely-known trademark, which the Complainant has expended considerable resources to develop for many years. Under these circumstances, and certainly in the absence of any explanation by the Respondent, the Respondent has not rebutted the prima facie case which the Complainant has made out. Additionally, in accordance with paragraph 4(c) of the Policy, the Panel may also consider whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers. This is certainly not the case here. The Complainant has submitted evidence to show that the Respondent has redirected the disputed domain name to a pornographic website, presumably for its own commercial interest. And this cannot confer rights or legitimate interests on the Respondent. In light of the above, the Panel finds that the second condition of the Policy has also been met. C. Registered and Used in Bad Faith Under the final element of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). Bad faith under the Policy is understood to include circumstances where: “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location” (paragraph 4(b)(iv) of the Policy). Further, “the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 of the WIPO Overview 3.0). The present case involves a disputed domain name that fully contains SERVIER – the Complainant’s widely-known trademark that is also the last name of the Complainant’s founder, Dr. Jacques Servier, which the Complainant has been developing in commerce since 1954. The Complainant registered its trademark as early as 1990 and its own domain name On the other hand, the disputed domain name was registered in 2019, dozens of years after the Complainant’s trademark and domain name were first registered and is confusingly similar to the Complainant’s widely-known trademark. Thus, it is very difficult to imagine that the Respondent was unaware of the Complainant’s trademark and business when it registered the disputed domain name. The Panel therefore finds that the Respondent registered the disputed domain name in bad faith, and with the Complainant’s trademark and business in mind. The Respondent then proceeded to redirect the disputed domain name to a website displaying pornographic content, with no obvious purpose than to mislead consumers for its own commercial gain. In the process, the Respondent has also diverted consumers away from the Complainant’s business and tarnished the Complainant’s good name. As the disputed domain name is confusingly similar to the Complainant’s trademark, it is most likely that consumers, when searching for the Complainant’s business, would be redirected to the pornographic website and mistakenly believe that it is somehow affiliated with the Complainant. Thus, the Respondent’s actions clearly indicate that it is using the disputed domain name in bad faith. Given the foregoing, the Panel concludes that the final element of the Policy is also met. 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 Joseph Simone
Sole Panelist
Date: March 9, 2020
Full & Egal Universal Law Academy