WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Zheng Hang

Case No. D2018-1380

1. The Parties

The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.

The Respondent is Zheng Hang of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <sanofipasteur-rabies.com> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2018. On June 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2018, the Registrar transmitted by email to the Center its response confirming that the Respondent is listed as the registrant and providing his contact details. On June 22, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 25, 2018. The Respondent did not comment on the language of the proceeding before the designated due date.

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 in English and Chinese of the Complaint, and the proceedings commenced on July 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018. The Respondent did not submit any response. The Center then notified the Respondent’s default on July 24, 2018.

The Center appointed Joseph Simone as the sole panelist in this matter on July 30, 2018. 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 paragraph 7 of the Rules.

4. Factual Background

Sanofi is a French multinational pharmaceutical company headquartered in Paris (France) and is ranked one of the world’s largest multinational pharmaceutical companies for sales of prescription drugs. Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also for over-the-counter medications. Sanofi had consolidated net sales of EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014.

Sanofi is a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA).

The company began using the name “Sanofi-Aventis” in 2004 following the merger of Aventis and Sanofi-Synthélabo, and changed its name to “Sanofi” in May 2011.

Sanofi offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.

Sanofi’s worldwide reputation was recognized in the annual “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey issued April 18, 2011, in which it appeared in the “Flash of Genius” section in reference to its promoting patient resources.

“Sanofi Pasteur” is the name of the vaccines division of Sanofi and it produces more than 1 billion doses of vaccines every year, making it possible to immunize more than 500 million people in the world. It offers a broad range of vaccines, protecting against 20 infectious diseases. With over EUR 1 million invested every day in research and development, Sanofi Pasteur employs nearly 13,000 people worldwide and generated EUR 3,897 million in revenue in 2012. Sanofi Pasteur also has 13 production and/or R&D sites located in France, United States of America (“US”), Canada, Argentina, China, India, Mexico and Thailand. It holds approximately a quarter of the world’s vaccine market.

Sanofi currently owns the below trademark registrations in various jurisdictions over the globe:

- French trademark SANOFI (+device) number 3831592, registered on May 16, 2011 in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44, notably covering pharmaceutical products;

- French trademark SANOFI number 96655339, registered on December 11, 1996 in classes 1, 3, 5, 9, 10, 35, 40 and 42, notably covering pharmaceutical products;

- French trademark SANOFI (+device) number 92412574, registered on March 26, 1992 in class 5 covering pharmaceutical products;

- French trademark SANOFI number 1482708, registered on August 11, 1988 in classes 1, 3, 4, 5, 10, 16, 25, 28 and 31 notably covering pharmaceutical products;

- European Union trademark SANOFI number 010167351, filed on August 2, 2011 and registered on January 7, 2012 in classes 3 and 5, notably covering pharmaceutical products;

- European Union trademark SANOFI number 004182325, filed on December 8, 2004 and registered on February 9, 2006 in classes 1, 9, 10, 16, 38, 41, 42 and 44, notably covering pharmaceutical products and medical spheres;

- European Union trademark SANOFI number 000596023, filed on July 15, 1997 and registered on February 1, 1999 in classes 3 and 5, notably covering pharmaceutical products;

- International trademark SANOFI (+ device) number 1091805, registered on August 18, 2011 in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44 notably covering pharmaceutical products, and designating, among other countries, Georgia, Russian Federation and Ukraine;

- International trademark SANOFI number 1092811, registered on August 11, 2011 in classes 1, 9, 10, 16, 38, 41, 42 and 44 notably covering pharmaceutical products and medical spheres and designating, among other countries, Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation and Ukraine;

- International trademark SANOFI number 1094854, registered on August 11, 2011 in classes 3 and 5, notably covering pharmaceutical products, and designating, among other countries, Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation and Ukraine;

- International trademark SANOFI number 674936, registered on June 11, 1997 in classes 3 and 5, notably covering pharmaceutical products and designating among others Switzerland, Cuba, Romania, Russian Federation and Ukraine;

- International trademark SANOFI (+ device) number 591490, registered on September 25, 1992 in class 5 covering pharmaceutical products, and designating, among other countries, Switzerland, China, Cuba, Romania and Russian Federation;

- US trademark SANOFI number 4178199, filed on August 12, 2011 and registered on July 24, 2012 in class 5 notably covering pharmaceutical products;

The Complainant is also the owner of the below domain names, and many of which are registered and put into active use by the Complainant in connection with its activities:

- <sanofi.com> registered on October 13, 1995;

- <sanofi.eu> registered on March 12, 2006;

- <sanofi.fr> registered on October 10, 2006;

- <sanofi.us> registered on May 16, 2002;

- <sanofi.net> registered on May 16, 2003;

- <sanofi.ca> registered on January 5, 2004;

- <sanofi.biz> registered on November 19, 2001;

- <sanofi.info> registered on August 24, 2001;

- <sanofi.org> registered on July 12, 2001;

- <sanofi.mobi> registered on June 20, 2006;

- <sanofi.tel> registered on March 17, 2011;

- <sanofipasteur.com> registered on May 19, 2004;

- <sanofipasteur.fr> registered on December 23, 2004;

- <sanofipasteur.ca> registered on December 22, 2004.

All of the above-mentioned trademarks and domain names were registered prior to the registration of the disputed domain name.

The disputed domain name <sanofipasteur-rabies.com> was registered on December 2, 2017. Previously, it resolved to a Chinese webpage offering gambling services and it currently redirects to a Chinese language porn website. On December 8, 2017, the Complainant sent the Respondent a cease-and-desist letter to which the Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name is identical or confusingly similar to the mark SANOFI in which it has rights, based on the following:

(i) The Complainant holds a number of SANOFI trademarks registered and used worldwide, all of which predate the disputed domain name. The trademark SANOFI has no particular meaning and is therefore of itself highly distinctive. The Complainant has used the trademark and trade name SANOFI for over 40 years and invested substantial financial resources in this time to advertise and promote the company and its SANOFI trademarks in countries all over the world, including China.

(ii) The disputed domain name reproduces the Complainant’s SANOFI trademarks and domain names, and particularly the domain names <sanofipasteur.com> and <sanofipasteur.ca>, which is sufficient to create a likelihood of confusion between the disputed domain name and the Complainant’s trademarks and domain names.

(iii) It is well established that the generic Top-Level Domain (“gTLD”) 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 trademarks in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, descriptive terms. The addition of the descriptive term “rabies” is insufficient to avoid confusing similarity, and on the contrary, merely suggests to Internet users that the disputed domain name is related to the Complainant’s activities against a disease (e.g., rabies). This likelihood of confusion is strengthened by the reputation of the Complainant’s trade name, trademarks, domain and goodwill, which previous UDRP panels have considered as “well known” in many jurisdictions.

Rights or legitimate interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name based on the following:

(i) The Respondent does not have any legitimate interests in using the disputed domain name since the name “Zheng Hang” does not bear any resemblance to the word “sanofi”, which has no particular meaning and is therefore highly distinctive.

(ii) The Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks.

(iii) The Respondent has not made fair use of the disputed domain name – without a voluntary intent for commercial gain to misleadingly divert consumers or to tarnish the well-known trademarks at issue – so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name is used by the Respondent as a bait and switch by redirecting Internet users to a website offering completely different goods and services, thereby riding on Sanofi’s goodwill and reputation to obtain commercial gain.

Registered and used in bad faith

The Complainant submits that the disputed domain name was registered in bad faith on the following grounds:

(i) UDRP panel decisions regularly recognize opportunistic bad faith in cases in which the contested domain names appear confusingly similar to a complainant’s well-known trademarks. In that regard, the Complainant cites Sanofi v. Bo Li, WIPO Case No. D2013-1971 involving Sanofi, in which the panel stated that the Complainant itself and its SANOFI trademark have obtained worldwide fame, reputation and notoriety though substantial use.

(ii) Given the famous and distinctive nature of the mark SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, of the Complainant’s marks at the time he registered the disputed domain name. Indeed, the Complainant’s websites are among the very first results for the search term “sanofipasteur-rabies” in the Google search engine (“https://www.sanofipasteur.com/en/immunization-essentials/rabies/”). According to WIPO statistics, the SANOFI trademark appeared as one of the most cyber-squatted trademarks in 2011. Given the lack of prior rights or legitimate interest, there exists no tangible explanation for choosing this domain name other than to deliberately ride-off the Complainant’s reputation.

(iii) Given the reputation of Sanofi’s trademarks previously mentioned, the Respondent must have undoubtedly been aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name because it could lead Internet users searching for official Sanofi or Sanofi Pasteur websites on rabies to the Respondent’s page.

The Complainant submits that the disputed domain name is being used in bad faith on the following grounds:

(i) Since the disputed domain name directs Internet users to a website which is not the official website of the Complainant’s products, this indicates the Respondent registered the disputed domain name primarily for the purpose of trying to unfairly benefit from Sanofi’s goodwill and reputation by creating a likelihood of confusion with the Complainant’s trademarks and domain names as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the goods and services displayed/advertised for sale on it.

(ii) Insofar as the Respondent’s website directly rides off the coattails of the Complainant, the Respondent registered and used the disputed domain name for the purpose of disrupting the Complainant’s business, which constitutes further evidence of its bad faith.

(iii) On December 8, 2017, the Complainant sent a cease-and-desist letter to the Respondent but the Respondent did not reply, which reinforces the inference of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of Proceeding

The Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons:

(i) One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. Sanofi is a worldwide international company with trademark registrations in multiple countries, including China, and for which international business is primarily operated in English. Therefore, the Complainant is not able to communicate in Chinese.

(ii) The disputed domain name contains the terms “sanofi” and “pasteur” which are arbitrary words without particular signification. The term “rabies” is a purely descriptive English term in the medical field to designate an illness/ condition. As the disputed domain name <sanofipasteur-rabies.com> is registered in Latin characters, specifically the English language, rather than Chinese script, this choice advocates the fact that the Respondent is inevitably acquainted with English language.

(iii) If the Complainant were to submit all documents in Chinese, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

(iv) As indicated by the Complainant in its Complaint, the language of the Registration Agreement is available in English. The disputed domain name <sanofipasteur-rabies.com> was registered through Bizcn.com, Inc, which is a corporate company incorporating the English words or acronyms “Biz”, and “inc” (incorporated). Therefore, the choice made by the Respondent in selecting the Registrar Bizcn.com, Inc advocates the fact he is inevitably acquainted with English language.

The Respondent did not respond on this issue.

In accordance with paragraph 11 of the Rules:

“…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.”

Therefore, prima facie, the language of the proceeding should be Chinese.

But noting the aim of conducting proceedings with due expedition while also ensuring parties are given a fair opportunity to present their case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement.

These include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark and (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.

Although the disputed domain names are comprised of English characters, in the Panel’s view, it does not follow from this alone that the Respondent is necessarily familiar with the English language, nor does the choice by the Respondent to select the Registrar Bizcn.com, Inc. advocate he is inevitably acquainted with English language. As the registration agreement is in Chinese, it is highly likely that the Respondent registered the disputed domain name at the Chinese language website “www.bizcn.com” rather than the English language version at “www.bizcn.hostzealot.com” where the Complainant has located the English language version of the Registration Agreement. “www.bizcn.com” is also listed as the Registrar URL for Bizcn.com, Inc on WhoIs, rather than “www.bizcn.hostzealot.com”.

That said, because the Respondent was notified in both English and Chinese by the Center of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding, and because the Respondent failed to submit any response to the Complaint, the Panel does not believe it would be prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto were required to be translated into Chinese. In keeping with the Policy’s aim of facilitating a relatively time- and cost-efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).

That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Panel finds that the Complainant has registered rights in the mark SANOFI for which the Complainant has several trademark registrations. The Complainant also has unregistered rights by virtue of using the mark SANOFI in connection with pharmaceutical products around the world.

A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).

When comparing the domain name with the trademark, the gTLD “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).

In this case, the disputed domain name <sanofipasteur-rabies.com> incorporates the entirety of the Complainant’s trademark SANOFI. After removing the “.com” suffix, the elements that remain are “pasteur” and “rabies”, and it is well established that the addition of a merely descriptive term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra, WIPO Case No. D2004-0732).

The first requirement of the UDRP is therefore satisfied.

B. Rights or Legitimate Interests

A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name.

In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:

(i) There is no evidence that the Respondent is commonly known by the disputed domain name.

(ii) The Panel accepts the Complainant’s undisputed allegations that there is no relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name.

(iii) The Respondent has not made a fair use of the disputed domain name. Prior to notice of the dispute, the disputed domain name redirected to a website offering gambling services and it currently redirects to a porn website. This is clearly a bait and switch scenario in which the Respondent is riding on the reputation of the Complainant to attract Internet users searching for the Complainant and redirecting them to entirely different websites with a view to commercial gain.

Having prima facie established the Respondent’s lack of rights or legitimate interests, the burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0) and the Respondent has not presented any evidence to rebut the Complainant’s assertions.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

Given that “sanofi” is not a dictionary word and that the disputed domain name wholly incorporates the trademark SANOFI, in addition to the non-dictionary word “pasteur” which when read together refer to the Complainant’s vaccine subsidiary, the Panel believes the Respondent was fully aware of the Complainant and its trademark rights when registering the disputed domain name. Given the well-known status of the trade name and trademark SANOFI, it is implausible that registration of the disputed domain name was a coincidence and this in itself suggests opportunistic bad faith.

Further, paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) states:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel is satisfied that the Respondent fully intended to divert Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark. It is highly likely that Internet users would believe the disputed domain name is operated by the Complainant or its affiliate Sanofi Pasteur in relation to treatment for rabies and that the Respondent relied on this confusion with a view to commercial gain from referrals to gambling services.

The lack of any credible reason for choosing the disputed domain name other than to profit from the substantial goodwill of the Complainant and the Respondent’s failure to submit a response to both the cease-and-desist letter and the Complaint, lead to the conclusion that the disputed domain name was registered and used in bad faith.

Accordingly, the third requirement of the UDRP is satisfied.

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 <sanofipasteur-rabies.com> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: August 13, 2018