The Complainants are Sanofi, France, and Sanofi-Aventis Deutschland GmbH, Germany, represented by Selarl Marchais & Associés, France.
The Respondent is 权中俊 (Quan Zhong Jun), China. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 15, 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 Complainants on October 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to Complaint in English on October 23, 2020. On October 20, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 23, 2020, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amendment to 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 October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2020. The Center appointed Peter J. Dernbach as the sole panelist in this matter on December 17, 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 Complainants are Sanofi, a multinational pharmaceutical company with operations in more than 100 countries on five continents with headquarters in Paris (France) and Sanofi-Aventis Deutschland GmbH, a subsidiary of Sanofi. The Complainants engage in research and development, manufacturing and marketing of pharmaceutical products for sale mainly in the prescription market, but also in the framework of over-the-counter medication. The Complainants have developed and sold throughout the world a laxative that stimulates bowel movements in order to treat constipation or to empty the bowels under the trademark DULCOLAX. International trademark DULCOLAX No. 165781 has been registered by Sanofi-Aventis Deutschland GmbH on December 10, 1952 in classes 1 and 5 notably concerning pharmaceutical products and designating amongst others Switzerland, Australia, Island, Israel, Albania, Morocco, Egypt, Croatia, Viet Nam, Ukraine. European Union trademark DULCOLAX No. 002382059 has been also filed by Sanofi-Aventis Deutschland GmbH on September 19, 2001 and registered on November 29, 2002 and in class 5 notably concerning pharmaceutical products. Sanofi-Aventis Deutschland GmbH filed and registered International trademark No. 937960A on August 16, 2007 in class 5 notably concerning pharmaceutical products and designating amongst others Switzerland, Australia, European Union, Japan, the Republic of Korea, Norway, Singapore, United States of America, Russian Federation. The Complainants have also registered the domain name The Disputed Domain Name The Complainants' submissions may be summarized as follows: (i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights. The Disputed Domain Name It is well established that the generic Top-Level Domain ("gTLD") used as part of a domain name should be disregarded as it does not serve to distinguish domain names. It is also well established that where a domain name wholly incorporates a complainant’s distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a descriptive term, in this case “liquid”. Adding the descriptive term “liquid” can even be found to increase the confusing similarities at stake. It could lead average consumers to mistakenly believe that the domain name (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has no prior rights and/or legitimate interest to justify the use of DULCOLAX trademarks and domain name. 权中俊 (Quan Zhong Jun) does not bear any resemblance with the word “dulcolax”. The Complainants have never licensed or otherwise authorized the Respondent to use their trademarks or to register any domain name including the above-mentioned trademarks. The Disputed Domain Name resolves to a parking website displaying PPC links and has been registered only for the purpose of attracting Internet users into clicking on the sponsored links. The Respondent is obviously not using the Disputed Domain Name in connection with a bona fide offering of goods or services. And the Respondent is obviously using the domain name to obtain commercial gain by misleadingly diverting consumers. (iii) The Disputed Domain Name was registered and is being used in bad faith. a. The domain name was registered in bad faith The Complainants are the owners of the DULCOLAX series trademarks, which are well known worldwide. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known trademarks and domain names of the Complainants. The Respondent is likely to have had, at least, constructive notice, if not actual notice, as to the existence of the Complainants’ marks at the time he registered the Disputed Domain Name. This suggests that the Respondent acted with opportunistic bad faith in registering the Disputed Domain Name. The domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion – or at least an impression of association between DULCOLAX trademarks and the Disputed Domain Name. It can only be found that the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the Disputed Domain Name since it could lead Internet users searching for official DULCOLAX websites to the disputed page. This knowledge characterized the Respondent’s bad faith usage. b. The domain name is being used in bad faith Given the famous and distinctive nature of the marks “DULCOLAX”, the Respondent acted with opportunistic bad faith in registering the Disputed Domain Name in order to make an illegitimate use of it. This is sufficient to characterize a bad faith use under paragraph 4(b)(i) of the Policy. The Respondent is using the Disputed Domain Name The use of the Disputed Domain Name particularly close to those used by the Complainants that resolves to a parking site is likely to cause irreparable prejudice to their general goodwill because Internet users could be led to believe that Complainants are not on the Internet or worse that Complainants are out of business. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. 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”. Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainants requested that the language of the proceeding be English. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. Given the following factors, the Panel decides that the language of the proceeding be English. A. The Disputed Domain Name B. The Complainants are not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese. Hence, the use of Chinese in the proceeding would impose burden on the Complainants, and will cause an unwarranted delay in the present proceeding; C. Screen shots from the website to which the Disputed Domain Name resolves show text in English, showing that the content is directed to Internet users who understand English; and D. The Center sent an email communication to the Parties in both Chinese and English on October 20, 2020 inviting them to comment on the language of the proceeding. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Center also formally notified the Respondent in both Chinese and English of the Complaint on October 29, 2020. However, the Respondent has chosen not to file a Response. Given these facts, the Panel is satisfied that the Respondent has been given an opportunity to participate and has chosen not to respond. Therefore, it would not be prejudicial to the Respondent in his abilities to articulate his arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainants to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (Dolce & Gabbana S.r.l. v. Zhang Yali,WIPO Case No. D2013-1101). The Panel does not consider it prejudicial to the Respondent to adopt English as the language of the proceeding, and determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. 7. Discussion and Findings In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, cancellation of the Disputed Domain Name), the Complainants must prove that each of the three following elements are present: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainants allege that the Disputed Domain Name The Complainants have established that they are the owner of DULCOLAX trademarks. The Disputed Domain Name comprises: (a) an exact reproduction of the Complainants’ DULCOLAX trademark; (b) combined with a descriptive term “liquid” and (c) followed by a gTLD suffix “.com”. “Panelists have consistently held that the mere addition of descriptive wording to well-known marks, or confusingly similar derivatives thereof, does not avert a finding that the disputed domain name is confusingly similar.” (Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127). And it is well established that the gTLD used as part of a domain name should be disregarded as it does not serve to distinguish domain names. The Panel finds that the only distinctive part of the Disputed Domain Name is the word “dulcolax”, which is identical to the Complainants’ DULCOLAX series of trademarks. The Panel finds that the addition of the descriptive term “liquid” to the Disputed Domain Name does not eliminate the confusing similarity with the Complainants’ DULCOLAX trademarks. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]” Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Complainants have established that they are the owners of the DULCOLAX series trademarks, and that they have neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “Dulcolax” or any similar name. Panels have held that “[t]he use of the domain name as a parking site is not a bona fide non-commercial use pursuant to paragraph 4 (c) (iii) of the Policy” (F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451). Since the Disputed Domain Name resolves to a parking website with links to commercial websites, such parking website obviously is not a noncommercial or fair use of the Disputed Domain Name. Such parking website obviously does not correspond to a bona fide use in connection with offering of goods or services either. The Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name. Having considered the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”. Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: […] (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”. The Complainants’ DULCOLAX trademarks have been registered in many countries around the world. These registrations were made long prior to the registration of the Disputed Domain Name. The Respondent chose the identical “Dulcolax” term as the distinctive part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the “Dulcolax” term for any reason other than the reputation of the Complainants’ trademarks. The Panel finds that the Disputed Domain Name has been registered in bad faith. The Disputed Domain Name resolves to a typical parking website with links to commercial websites. “The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page” (Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715). The Panel finds that the Respondent’s use of the Disputed Domain Name attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. This use of the Disputed Domain Name is in bad faith. Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainants fulfill the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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 Peter J. Dernbach
Sole Panelist
Date: December 30, 2020
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