The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is zhangxiaoming of Quanzhou, Fujian, China / xia men yi ming wang luo you xian gong si of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 12 and 13, 2015, the Registrar transmitted by email to the Center its verification responses 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 Complainant on October 13, 2015 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 on the same day.
On October 13, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 both Chinese and English, and the proceeding commenced on October 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on November 16, 2015. 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 currently ranked as the world’s fourth largest multinational pharmaceutical company by prescription sales, with consolidated net sales of 33,77 billion Euros in 2014 and 32,95 billion Euros in 2013. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and is a leader in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. Besides engaging in research and development, manufacturing and marketing of pharmaceutical products, principally in the prescription market, the company also develops over-the-counter medication. It has offices in more than 100 countries across the five continents employing 110,000 people. The Complainant was formed in 2004 under the name Sanofi-Aventis as a result of the merger between Aventis and Sanofi-Synthélabo. The name was changed to its current name, Sanofi, in May 2011.
The Complainant is the owner of the trade mark SANOFI (the “Trade Mark”) with trade mark registrations globally including China in a number of classes. The earliest trade mark registration submitted in evidence is a French trade mark registration which dates back to 1988. The Complainant also owns and uses many domain names consisting of and incorporating the Trade Mark. These include:
registered on October 13, 1995
registered on March 12, 2006
registered on October 10, 2006
registered on May 16, 2002
registered on May 16, 2003
registered on January 05, 2004
registered on November 19, 2001
registered on August 24, 2001
registered on July 12, 2001
registered on June 20, 2006
registered on March 17, 2011
registered on April 28, 2004
The Respondent registered the Domain Name on April 27, 2015. The Domain Name does not appear to be connected to any active website. The Complainant sent the Respondent a cease and desist letter via email on August 3, 2015 but did not receive any response. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark SANOFI, 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 transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11, 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. The Complainant contends that its international business is operated primarily in English and is not able to communicate in Chinese. The Domain Name is in Latin characters and the English language rather than Chinese script. If the Complainant had to submit documents in Chinese, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Further the language of the registration agreement is available in English.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese especially in circumstances where the Respondent has elected not to file a Response to the proceeding. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent cannot avail itself of the excuse that it had no knowledge or did not understand that a proceeding has been filed against it. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that SANOFI is a well known trade mark and the Complainant has established that it has registered and unregistered rights to the Trade Mark for purposes of the Policy.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Trade Mark SANOFI in its entirety which is identical to the Trade Mark. 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 country code Top-Level Domain (“ccTLD”) suffix “.pw”.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the 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 trademark 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 paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) 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 allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that the Trade Mark SANOFI does not bear any resemblance to the Respondent’s name and it has no prior rights or legitimate interests in the name. The Complainant has not licensed or otherwise authorized the Respondent to use the SANOFI Trade Mark as a domain name or in any other way. The word SANOFI is a highly distinctive mark and has no other meaning other than being that of the name of the Complainant.
There is no active use of the Domain Name which means that there is no evidence of the Respondent using or making any preparations to use the Domain Name for a bona fide offering of goods or services. Neither is there any evidence of legitimate noncommercial 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 not responded 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, a complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Domain Name is not connected to an active website. This does not prevent a finding of bad faith. The consensus view in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. UDRP panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
The SANOFI Trade Mark is a well-known mark and used and registered by the Complainant extensively and for a substantial period of time all over the world including in China where the Respondent is based before the Domain Name was registered. The word Sanofi does not have any ordinary meaning in the English language. A search on Google revealed only references to the Complainant. It would be inconceivable that the Respondent had no knowledge and actual notice of the Trade Mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Name is being used in bad faith. The Complainant’s Trade Mark is a famous trade mark with a global reputation and the Trade Mark has no other meaning other than in reference to the Complainant. Further the Respondent’s contact addresses in Fujian China does not include a flat or house number and appear likely to be false. The Center was unable to deliver the Written Notice to the Respondent at these addresses. Also, the Respondent failed to respond to the cease and desist letter or file a Response.
Considering the circumstances, the Panel considers that the Domain Name was also used in bad faith.
The Panel finds that the Domain Name was registered and is being used in bad faith. 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 be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: December 1, 2015
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