WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Zhang John, EST
Case No. D2014-2147
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Zhang John of Shanghai, China.
2. The Domain Names and Registrar
The disputed domain names <sanofiipad.com>, <sanofiipad.net>, <sanofipad.com> and <sanofipad.net> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2014. On December 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 11, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2014, 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 December 22, 2014.
On December 19, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 19, 2014, the Complainant confirmed its request that English be the language of the proceeding. On December 22, 2014 and January 6, 2015, the Respondent requested that Chinese be the language of the proceeding.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. The Respondent did not submit any response. Accordingly, the Center informed the parties that it would proceed with the panel appointment on January 28, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on February 11, 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 ranked the world’s fourth largest pharmaceutical company by prescription sales. The Complainant is engaged in research and development (“R&D”) and the manufacturing and marketing of pharmaceutical products for sale. In 2013 alone, its R&D investment value was EUR 4.77 million. Its patented prescription drugs are available for the treatment of serious diseases in seven major therapeutic areas. The Complainant’s business spans across more than 100 countries with an employee count of about 110,000. The SANOFI mark has been in use for over 40 years. Substantial financial resources have been spent to advertise and promote the company and its SANOFI trade mark in many countries across the world.
The Complainant’s domain name registrations are many including <sanofi.com> (registered on October 13, 1995), <sanofi.eu> (registered on March 12, 2006), <sanofi.info> (registered on August 24, 2001) and <sanofi.biz> (registered on November 19, 2001).
The disputed domain names were registered on May 8, 2014 and all lead to an inactive page.
The Complainant’s requested remedy is for the disputed domain names to be cancelled.
5. Parties’ Contentions
The Complainant asserts that:
(1) The disputed domain names are confusingly similar to the SANOFI trade mark in which it has rights. The SANOFI marks (i.e., including marks which are stylized and/or contain a device) have been registered in many jurisdictions including in France and China. The SANOFI mark has been held to be well known by many UDRP panelists in earlier domain name dispute proceedings. The disputed domain names reproduce the SANOFI trade mark. The addition of the terms “ipad” or “pad” does not remove the confusion with the Complainant’s SANOFI mark as these terms are commonly used and/or are generic terms.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names which incorporate the well-known trade mark of the Complainant. The Complainant has never licensed or otherwise authorized the Respondent to use the SANOFI trade mark or to register any domain name incorporating the SANOFI trade mark. There is no relationship whatsoever between the parties. The Respondent is not making a legitimate non commercial or fair use of the disputed domain names nor is it using the disputed domain names in connection with a bona fide offering of goods or services.
(3) The disputed domain names were registered and are being used in bad faith. The registration of the disputed domain names which incorporate the well-known trade mark of the Complainant suggests opportunistic bad faith. Many earlier UDRP panel decisions have established a line of authority which states that such registrations are in themselves evidence of bad faith registration and use. The Respondent must have known of the Complainant and its SANOFI trade mark and intended to exploit the goodwill of the Complainant’s business and trade mark and to profit from it.
Except for the email communications regarding the language request received from the Respondent on December 22, 2014 and January 6, 2015 respectively, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that:
“Unless 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.”
The Complaint was filed in English but the language of the Registration Agreements is Chinese. The Complainant requested that the language of the proceeding be English for the following reasons. The Complainant’s international business is conducted primarily in English and it is not able to communicate in Chinese. The disputed domain names contain the term “sanofi” which is an arbitrary word and the words “ipad” or “pad” designate, in English, a tablet computer marketed by Apple/a communication device, respectively. The disputed domain names are not in Chinese script but in Latin characters which suggests that the Respondent is acquainted with the English language. If the Complainant were required to submit all the documents in Chinese, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. The Respondent requested that Chinese be the language of the proceeding for the reason that the Respondent is located in China.
Taking into consideration the circumstances of this case, in the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel holds that English shall be the language of the administrative proceeding. The Respondent’s choice and selection of the combination of the disputed domain names show a sufficient level of appreciation of and comfort with the English language. The significant costs that would potentially be involved in having the Complaint and evidence translated into Chinese would be a heavy burden upon the Complainant and slow down the administrative process and resolution of the dispute. The Panel finds it appropriate to make its ruling in English and determines that English should be the language of the proceeding.
Substantive Elements of the Proceeding
A. Identical or Confusingly Similar
The disputed domain names incorporate the word SANOFI which is a trade mark in which the Complainant has clear rights in. The fame of the SANOFI mark has been confirmed in a number of UDRP decisions (e.g., Sanofi v. Benoit Menetrieux, WIPO Case No. D2014-1288; Sanofi v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0842 and Sanofi v. Farris Nawas, WIPO Case No. D2014-0705).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s well-known SANOFI trade mark. The addition of the descriptive terms “pad” and “ipad” in the disputed domain names does nothing to distinguish the disputed domain names from the Complainant’s mark. The SANOFI trade mark is immediately recognizable within the disputed domain names especially since the word “sanofi” appears in the first part of each of the disputed domain names.
The Panel therefore concludes that the Complainant has proven that the disputed domain names are confusingly similar to the Complainant’s SANOFI trade mark in which it has rights. Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not been licensed or permitted to use the Complainant’s SANOFI trade mark or to register the disputed domain names incorporating that mark. Neither is there evidence that the Respondent has been commonly known by the disputed domain names even if it has not acquired trade mark rights to it (paragraph 4(c)(ii) of the Policy). There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy). Bearing in mind the well-known nature of the SANOFI trade mark, the Panel does not find any basis which could conceivably lead to a finding that there might perhaps be a legitimate noncommercial or fair use of the disputed domain names (paragraph 4(c)(iii) of the Policy).
The Respondent did not reply to the cease and desist communication which was sent to it by the Complainant nor rebut the Complainant’s contentions in this proceeding.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent had knowledge of the Complainant and its SANOFI trade mark when it registered the disputed domain names. The adoption and/or incorporation (in four domain names) of a non-generic word which happens to be a well-known trade mark by someone that has no obvious connection to the word is indeed suspicious, and it would require a very thorough and credible explanation by the Respondent before the Panel would be prepared to accept the registration and use of the relevant domain names to be in good faith. Short of that and especially since the Respondent has remained silent in this proceeding, the Panel finds that the Respondent has registered the disputed domain names in bad faith.
The reasonable conclusion to be made is that by registering the disputed domain names incorporating the well-known trade mark of the Complainant, the Respondent’s intention must have been to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the SANOFI trade mark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website or other location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). The Respondent’s passive holding of the disputed domain names is not an obstacle to a finding of bad faith registration and use. This is a position that has been well established in many earlier UDRP panel decisions.
The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 names <sanofiipad.com>, <sanofiipad.net>, <sanofipad.com> and <sanofipad.net> be cancelled.
Date: February 26, 2015