ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. 石磊 (Lei Shi) Case No. D2024-2133 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is 石磊 (Lei Shi), China. 2. The Domain Name and Registrar The disputed domain name is registered with Cloud Yuqu LLC (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2024. On May 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2024, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 30, 2024 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 amendment to the Complaint in English on June 3, 2024. On May 30, 2024 the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On June 3, 2024, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. The Center verified that the Complaint together with the amendment to 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 in English and Chinese, and the proceedings commenced on June 5, 2024. In accordance with
page 2 the Rules, paragraph 5, the due date for Response was June 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2024. The Center appointed Hong Yang as the sole panelist in this matter on July 4, 2024. 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 Complainant is a French multinational pharmaceutical company headquartered in Paris, France. It is one of the largest pharmaceutical company in the world by prescription sales. It engages in research, manufacturing and marketing of wide-ranging pharmaceutical products. It has business presences in more than 100 countries on all five main continents, employing around 100,000 people worldwide, claiming a world-famous reputation. Back in 2011, it has been listed in the “Flash of Genius” in reference to its promoting patient resources in the annual “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey. The Complainant is proprietor of trademarks in various jurisdictions for the word or figurative mark incorporating the word, SANOFI, including: French Trademark Registration No. 1482708, registered on August 11, 1988, European Union Trademark Registration No. 000596023, registered on February 1, 1999, and International Trademark Registration No. 591490, registered on September 25, 1992, designating, amongst others, China. The Complainant also operates its businesses under various domain names using its SANOFI mark, including: registered on October 13, 1995, registered on May 16, 2003, and registered on April 28, 2004. The disputed domain name was registered on April 30, 2024. The unrebutted evidence provided by the Complainant shows that, at the time of filling of this Complaint, the disputed domain name resolved to a pay-per-click (PPC) website including links of, inter alia, “Pharmaceutical Laboratory”, “Language” and “Enterprise in the Cloud”, redirecting to promotions and website links of third parties appearing to be direct competitor of the Complainant. The Panel notes that the Respondent was identified as a respondent in at least 3 previous UDRP proceedings in respect of the Complainant’s SANOFI mark and was found with bad faith registrations in all the 3 cases. See Sanofi v. Lei Shi, WIPO Case No. D2019-2476, Sanofi v. Lei Shi, WIPO Case No. D2023-2264, and Sanofi v. Lei Shi, Case No. D2023-3770. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that: (1) the Complainant communicates in English and would be unfairly discomforted should it be required to participate in the proceedings in Chinese; (2) facts in this case demonstrate that the Respondent understands English; (3) the script of the disputed domain name incorporates Complainant’s trademark in Latin characters plus the English word (although with a presumed typo) of “conectus” as well as the generic Top-Level Domain (“gTLD”) “.com”. The Respondent had, moreover, been notified by the Center, in both Chinese and English, of the commencement of the proceeding, the language of the proceeding, and deadline for filing a Response in Chinese or English. The Respondent did not make any specific submissions with respect to the language of the proceeding and did not comment on the Complainant’s request for the language of the proceeding be English. 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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Having considered all the matters above, and in the absence of any rebuttal argument or justification therefore by the Respondent, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of another term “conectus” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel notes that the composition of the disputed domain name itself carries a risk of implied affiliation, with the unrebutted fact that the Respondent was not affiliated, licensed or otherwise authorized by the Complainant, or held any registration of the SANOFI mark anywhere. There is no evidence indicating that the Respondent has rights and legitimate interests in or might be commonly known by the disputed domain name. Particularly, the additional term of “conectus” is descriptive as it refers to a meaning close to “connect with us” or “contact us”, in spite of a misspelling/typo difficult to notice, where an “n” is missing for “connect”. The combination of Complainant’s well-known mark with that additional term may thus suggest sponsorship or endorsement by the Complainant. Where a domain name consists of a trademark plus an additional term, panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1. The evidence provided by the Complainant shows that, at the time of filling the Complaint, the disputed domain name resolved to a parked website comprising PPC links, which redirected to third-party information relevant to the Complainant’s typical fields of pharmaceutical business, as well as further sponsored links redirecting Internet users to third-party websites including those of alleged competitors of the Complainant. Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion. According to the evidence provided by the Complainant, the Respondent used without any license or authorization the Complainant’s trademark in its entirety in the disputed domain name, adding descriptive terms suggesting Complainant’s sponsorship/endorsement. The Complainant’s trademark SANOFI is globally well-known. Moreover, the Complainant’s registration and use of its mark as well as official domain names incorporating that mark in areas including the Respondent’s reported residence region much predate the Respondent’s registration of the disputed domain name. Thus, the Panel opines that the Respondent must have been aware of the Complainant’s mark at the time of registering the disputed domain name. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.
page 5 The available record also shows that, PPC links on the Respondent’s website under the disputed domain name relate to the Complainant’s field of business (i.e., Pharmaceuticals) and direct Internet users to promotions and contents about those appearing to be alleged competitors of the Complainant, as well as their sponsored website links. The Panel is convinced that the Respondent targets the Complainant to attract Internet users to its website by creating a likelihood of confusion, and intends to gain unlawful revenues from the PPC links, taking unfair profits from the Complainant’s famous SANOFI mark. The disputed domain name was thus registered and used in bad faith, according to paragraph 4(b)(iv) of the Policy. Furthermore, the Panel notes that the Respondent seemed to have engaged in a pattern of trademark-abusive registrations of domain names related to the Complainant, as the Respondent has been identified as a respondent in at least 3 previous UDRP proceedings, being held with bad faith under paragraph 4(b) of the Policy for the registration of domain names incorporating the Complainant’s SANOFI mark. This further corroborates the finding of bad faith in the present case. Based on the available record, the Panel finds that the Complainant has established the third element 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 be cancelled. /Hong Yang/ Hong Yang Sole Panelist Date: July 18, 2024
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