The First Complainant is Sanofi, France, and the Second Complainant is Genzyme Corporation, United States of America (“USA”), represented by Selarl Marchais & Associés, France.
The Respondent is 管其旭 (Qi Xu Guan), 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 November 10, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 11, 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 on November 13, 2020. On November 11, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 13, 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 of the Complaint, and the proceedings commenced on November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. On November 20, 2020, the Center received an informal email communication from the Respondent. No formal Response was filed with the Center. On December 18, 2020, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Karen Fong as the sole panelist in this matter on January 20, 2021. 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 is a French multinational pharmaceutical company headquartered in Paris and ranks fourth in the world by prescription sales. Its consolidated net sales in 2018 was EUR 34.46 billion. The First Complainant engages in research and development, manufacturing, and marketing of pharmaceutical products for sale, principally in the prescription market but also in over-the-counter medication. The First Complainant was formed as Sanofi-Aventis in 2004 by a merger of Aventis and Sanofi-Synthelabo and changed its name to Sanofi in 2011. The First Complainant has a presence in more than 100 countries on all five continents and employs over 100,000 people. The Second Complainant is an American biotechnology company founded in 1981 and owned by the First Complainant. In 2010, the Second Complainant was one of the world’s largest biotechnology companies, employing more than 11,000 people. As a subsidiary of the First Complainant, it now has a presence in approximately 65 countries. It is a major player in the global pharmaceutical market focusing on rare diseases and multiple sclerosis. The Second Complainant owns a portfolio of trade marks in different jurisdictions for the mark GENZYME including in China. The earliest trade mark registration submitted in evidence is USA Trade Mark registration No. 74/440305 for GENZYME registered on October 25, 1994 (the “Trade Mark”). The Second Complainant also owns many domain names, which incorporate the Trade Mark including The Domain Name was registered on September 24, 2020 to an entity or individual based in China. The Domain Name was connected to a website, which provided comments and a critical analysis on the Water Supply Industry Service Department of Chengdu (the “Website”). There were links on the Website, which resolve to blogs. The Website now appears to be inactive. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests that the Domain Name be cancelled. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. In its informal email to the Center on November 20, 2020, the Respondent appears to be saying that the Domain Name should be deleted and a new domain name registered. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. B. Language of the Proceeding The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. The Complainant submits that the language of the proceeding should be English for the following reasons: - the Complainant conducts its business mainly in the English language and is not able to communicate in Chinese; - the Domain Name is in Latin script rather than Chinese, the word “me” within the Domain Name is a personal pronoun in English and the Registrar’s corporate name incorporates English words, suggesting the Respondent’s familiarity with the English language; - the Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a formal response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. C. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case, the Domain Name comprises the Trade Mark in its entirety together with a hyphen and the word “me”. The addition of the hyphen and the term “me” do not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. D. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. None of the above apply in these circumstances. The Complainant has not authorised, licensed or permitted the Respondent to either register or use the Domain Name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark, which precede the Respondent’s registration of the Domain Name. The Complainant is not aware of any evidence, which demonstrates that the Respondent is commonly known by a name corresponding to the Domain Name nor has it applied to register or owns any registrations of the Domain Name as a trade mark, trade name or company name. The Trade Mark being an invented word has no other significance other than being obviously connected to the Complainant. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, and is not making any legitimate noncommercial or fair use of the Domain Name. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has failed to respond and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the Trade Mark was registered prior to registration of the Domain Name and that the Domain Name comprises the Complainant’s trade mark in its entirety. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith. The Panel also finds that the actual use of the Domain Name is in bad faith. The Website content is that of a commentary and analysis of an entity and subjects which have no connection whatsoever to the Complainant. The fact that the Complainant and the Trade Mark are well-known is further evidence that it is highly likely that web users when typing the Domain Name into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. The Respondent employs the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s websites are authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name Karen Fong
Sole Panelist
Date: February 8, 2021
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