The Complainants are Sanofi, France (the “First Complainant”), and Genzyme Corporation, United States of America (the “Second Complainant”), represented by Selarl Marchais & Associés, France.
The Respondent is xing liang yu, 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 July 17, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 20, 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 July 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2020. The Center appointed Martin Schwimmer as the sole panelist in this matter on August 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 The First Complainant, Sanofi, is a French multinational pharmaceutical company headquartered in France. Sanofi engages in the research, development, manufacturing and marketing of pharmaceutical products primarily in the prescription market. The First Complainant has operations in over 100 countries. It owns rights in the SANOFI mark including the French registration No. 1482708 for SANOFI registered on August 11, 1988. The Second Complainant, Genzyme Corporation, is an American biotechnology company founded in 1981. Genzyme Corporation is owned by the First Complainant Sanofi. Genzyme Corporation has operations in 65 countries and sells its products in 100 countries. It owns rights in the GENZYME mark including the United States of America registration No. 1859429 for GENZYME registered on October 25, 1994. The Respondent registered the Disputed Domain Name on June 1, 2020, which resolves to a website containing a link to a gaming site. 5. Parties’ Contentions A. Complainant Sanofi and Genzyme will be referred to collectively as “The Complainant”. The Complainant asserts that it owns rights in the SANOFI and GENZYME marks based on their notoriety and widespread registration and use in numerous countries around the world well before the Respondent registered the Disputed Domain Name. The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s well-known SANOFI and GENZYME marks in their entirety, as well as the descriptive acronym “ms” which means “medical survey” and the word “ambassadors”. The Complainant argues that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name because the Respondent (a) is not commonly known by the Disputed Domain Name, (b) has no relationship with the Complainant and is not licensed or otherwise authorized by the Complainant to use the Complainant’s SANOFI and GENZYME marks in the Disputed Domain Name, (c) is not making a legitimate noncommercial or fair use of the Disputed Domain Name, as the Respondent uses the Disputed Domain Name to redirect to an unrelated website. Finally, the Complainant asserts that the Respondent has registered and used the Disputed Domain Name in bad faith as the Respondent (a) has no rights or legitimate interests in, or connection to, the well-known SANOFI and GENZYME marks, (b) opportunistically registered the Disputed Domain Name, given that the Respondent was aware or should have been aware of the Complainant’s well-known marks when the Respondent registered the Disputed Domain Name, (c) uses the Disputed Domain Name to redirect to an unrelated website, and (d) did not respond to a demand letter that the Complainant had sent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1. The Complainant has provided evidence that it owns rights in the SANOFI and GENZYME marks in numerous countries around the world in connection with its pharmaceutical products and services, and that such rights arose well before the Respondent registered the Disputed Domain Name in 2020. As discussed further in Section C, the use of the term ‘ms ambassadors’, relevant to the business of the First and Second Complainant, supports a finding of confusing similarity. See, WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing rights in its SANOFI and GENZYME marks, and in showing that the Disputed Domain Name is identical or confusingly similar to those trademarks. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant must make at least a prima facie showing that the Respondent possesses no rights or legitimate interests in the Disputed Domain Name. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the Complainant makes such a prima facie showing, the burden of production shifts to the Respondent, the burden of proof always remains on the Complainant. If the Respondent fails to come forward with evidence showing rights or legitimate interests, the Complainant will have sustained its burden under the second element of the UDRP. The Respondent here uses the Disputed Domain Name to provide a link to a website promoting gambling and lotteries. The Complainant asserts that it has not authorized the Respondent’s use of the Complainant’s famous trademarks in any manner. The Respondent’s use had to have been initiated with prior knowledge of the Complainant’s prior rights in its famous trademarks, and thus is not made in good faith. As the Complainant has established that it owns rights in the SANOFI and GENZYME marks, and given the Respondent’s above noted actions and failure to file a response, the Panel concludes that the Respondent does not have a right or legitimate interest in the Disputed Domain Name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith According to the Policy, bad faith is understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see section 3.1 of the WIPO Overview 3.0). The Panel notes that section 3.1.4 of the WIPO Overview 3.0 states that the mere registration of a domain name that is identical to a registered and widely known trademark, by an unaffiliated entity can itself create a presumption of bad faith. The Panel also notes that using the term “ms ambassadors” as a search term in the Google search engine, produced a result from the National Multiple Sclerosis Society illustrating its use of the term “MS AMBASSADORS” to designate volunteers who disseminate information about Multiple Sclerosis. Furthermore, the Complainant identifies itself on its website as a leader in the treatment of Multiple Sclerosis. See “https://www.sanofigenzyme.com/en/areas-of-focus/multiple-sclerosis”. Accordingly, the use of the descriptive term “ms ambassadors” in connection with the Complainant’s Trademarks heightens the association of the Disputed Domain Name with the Complainant. Here, as discussed above, considering the Complainant’s extensive use, widespread business activities, numerous trademark registrations worldwide, and considering previous UDRP decisions which have held that the trademarks SANOFI and GENZYME of the Complainant are widely known in many jurisdictions, the Panel concludes that it is apparent that the Respondent must have been aware of the goodwill and reputation associated with the Complainant’s trademark. The Panel also notes that the Respondent did not respond to the Complaint. Finally, the Panel notes that the Disputed Domain Name provides a link to a gambling website. WIPO Overview 3.0, section 3.3 stipulates that: “[w]hile 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.” All of these factors weigh against the Respondent in this instance. Accordingly the Panel holds that 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 Disputed Domain Name Martin Schwimmer
Sole Panelist
Date: September 17, 2020
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