The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Li Qiong Shi, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2020. On February 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2020, 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. 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 of the Complaint, and the proceedings commenced on March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020. The Center appointed Olga Zalomiy as the sole panelist in this matter on April 9, 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 Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case: The Complainant is a French pharmaceutical company. The Complainant is the owner of the SANOFI trademark worldwide, which is evidenced by multiple trademark registrations around the world, such as: -French trademark SANOFI No. 96655339, registered on December 11, 1996; -French trademark SANOFI No. 1482708, registered on August 11, 1988; -International trademark SANOFI No. 674936, registered on June 11, 1997. The Respondent registered the Domain Name on December 7, 2019. The Respondent used the Domain Name to direct to a website that was designed to look like an official website of the city of Jiaxing for the purposes to promote the Respondent’s gambling activities. Later, the Respondent disabled the website associated with the Domain Name. Currently, the Domain Name resolves to a website with a pornographic content. 5. Parties’ Contentions A. Complainant The Complainant alleges that it is a French multinational pharmaceutical company, which is the fourth largest pharmaceutical company by prescription sales in the world, with consolidated net sales of EUR 34,46 billion euros in 2018. The Complainant claims that the Domain Name is identical or confusingly similar to its registered trademark SANOFI because the Domain Name incorporates its distinctive SANOFI trademark in its entirety. The Complainant asserts that addition of the descriptive term “oil” in the Domain Name is insufficient to avoid confusing similarity. According to the Complainant, the likelihood of confusion between the Domain Name and the SANOFI trademark is exacerbated by the trademark’s notoriety. The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, because his name, Li Quiong Shi, has no resemblance with the distinctive SANOFI mark. The Complainant alleges that the Respondent has neither prior rights nor legitimate interests in the well-known SANOFI trademark. Further, the Complainant asserts it has given no license or authorization of any kind to the Respondent to use the SANOFI trademark. In the Complainant’s view, the Respondent does not use the Domain Name in connection with bona fide offering of goods or services, because the Domain Name is used to resolve to a website posing as a website of a Chinese government website. According to the Complainant, the Respondent’s website displays an url of the official website of the city of Jiaxing and reproduces layout of that website. The Complainant argues that the Respondent is not making legitimate noncommercial or fair use of the Domain Name because he is using the Domain Name to attract users to its website that is promoting its lottery. The Complainant asserts that the Respondent registered the Domain Name in bad faith because the Respondent registered the Domain Name that is identical or confusingly similar to the Complainant’s famous SANOFI trademark. The Complainant claims that the Domain Name was registered for the purpose of attracting Internet users to the Respondent’s website and taking unfair advantage of the Complainant’s reputation by creating false association with the Complainant. The Complainant further alleges that the Domain Name is being used in bad faith because the Respondent is using the Domain Name to direct to a website for the purposes of disrupting the Complainant’s business and to gain unfair advantage of the Complainant’s trademark’s goodwill and reputation. The Complainant argues that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or enforcement of his website or of his services because the Respondent is advertising his lottery on the website associated with the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The evidence on file shows that the Complainant owns several trademark registrations for the SANOFI trademarks. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Domain Name consists of the Complainant’s SANOFI trademark, the word “oil”, and the generic top-level domain (“gTLD”) “.com”. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.1 Because the SANOFI trademark is recognizable within the Domain Name, the addition of the term “oil” does not prevent a finding of confusing similarity under the first element.2 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”3 Thus, the Domain Name is confusingly similar to the Complainant’s SANOFI trademark and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests To prove the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.4 The Panel finds that the Complainant has made out the prima facie case in respect of lack of rights or legitimate interest of the Respondent. First, the Complainant has not licensed or permitted the Respondent to use the Complainant’s well-known SANOFI trademark in domain names, or for any other purpose. Second, the evidence on file also shows that the Respondent Li Quiong Shi has not been commonly known by the Domain Name. Third, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name because the Respondent used to use the Domain Name to attract consumers to his website posing an official website of the city of Jiaxing in an attempt to mislead customers seeking the Complainant’s goods and services, to promote the Respondent’s gambling services. Fourth, the Respondent is not using the Domain Name in connection with bona fide offering of goods or services. Currently, the Respondent is using the Domain Name to direct to a website with pornographic content. Even if it was a legitimate business of the Respondent, there is no apparent or legitimate reason for the Respondent’s selection of a domain name comprised of the SANOFI trademark for a Chinese website advertising pornographic videos. Because the Complainant has made out the prima facie case, the burden of producing evidence demonstrating he has rights or legitimate interests in the Domain Name has shifted to the Respondent.5 The Respondent failed to present any rebutting evidence, so the Complainant is deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to 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. See Policy, paragraph 4(b)(iv). A complainant can prove that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark, among others, by showing that the respondent registered a domain name confusingly similar to a well-known mark. Prior “[p]anels have consistently found that 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.”6 Here, the Respondent registered the Domain Name that incorporated the Complainant’s well-known SANOFI trademark and a descriptive word “oil”, therefore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark. The Respondent’s current use of the Domain Name to direct to a website with pornographic contend is further evidence of his bad faith because the Respondent’s use of the Domain Name may tarnish the Complainant’s trademark. It is well-established that pornographic content featured on a respondent’s website is sufficient for finding of bad faith, irrespective of the respondent’s motivation. Therefore, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith. The Complainant has satisfied the third element of the UDRP. 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 Olga Zalomiy 1 Section 1.7, WIPO Overview 3.0. 2 Section 1.8, WIPO Overview 3.0. 3 Section 1.11.1, WIPO Overview 3.0. 4 Section 2.1, WIPO Overview 3.0. 5 Section 2.1, WIPO Overview 3.0. 6 Section 3.1.4, WIPO Overview 3.0.
Sole Panelist
Date: April 22, 2020
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