WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Cai Rui Qiao
Case No. D2017-1765
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Cai Rui Qiao of Shanghai, China, self-represented.
2. The Domain Names and Registrar
The disputed domain names <sanofi-aventis.group>, <sanofiaventis.group>, <sanofi-aventis.ltd>, <sanofiaventis.ltd> and <sanofiaventis.top> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all the disputed domain names and providing the contact details.
On September 15, 2017, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. On September 18, 2017, the Respondent requested that Chinese be the language of the proceeding.
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 proceeding commenced on September 21, 2017. On September 24, 2017, the Respondent reiterated his request that Chinese be the language of the proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2017. However, at the request of the Respondent, in accordance with the Rules, paragraph 5(b), the due date for submission of a Response was extended to October 15, 2017. The Response was filed with the Center on October 15, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 20, 2017. 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 multinational pharmaceutical company headquartered in Paris, France. The Complainant was formed as “Sanofi-Aventis” upon the merger of Aventis and Sanofi-Synthélabo in 2004 and changed its name to “Sanofi” in May 2011. The Complainant has registered multiple trademarks for SANOFI-AVENTIS including international trademark registration number 839358, registered from October 1, 2004, designating multiple jurisdictions, including China, and specifying goods in classes 1, 3, 5, 9, 10, 16, 38, 41, 42 and 44. That trademark registration remains current. The Complainant has also registered multiple domain names consisting of “sanofi-aventis” and various Top-Level Domain (“TLD”) suffixes, including <sanofi-aventis.com>, which the Complainant registered on March 14, 2004. Most but, not all of these domain names resolve to active websites.
The Respondent is a Chinese individual, located in Shanghai, China. He registered all the disputed domain names on August 17, 2017. None of the disputed domain names resolves to an active website.
5. Parties’ Contentions
The disputed domain names are identical or confusingly similar to the Complainant’s SANOFI-AVENTIS trademark. The Complainant is established in 100 countries around the world and ranks fourth among the world’s multinational pharmaceutical companies in terms of prescription sales. The disputed domain names reproduce or at least imitate the SANOFI-AVENTIS mark. The addition of TLD suffixes is insufficient to avoid confusing similarity with a trademark, on the contrary, they suggest that the disputed domain names are related to the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent’s name bears no resemblance to “sanofi-aventis” or “sanofiaventis”. The Complainant has never licensed or authorized the Respondent to use its trademark or to register any domain name including the Complainant’s trademark. The disputed domain names only resolve to inactive pages.
The disputed domain names were registered and are being used in bad faith. The disputed domain names are confusingly similar to SANOFI-AVENTIS, which is a well-known trademark. The choice to register domain names corresponding to that trademark cannot have been a mere coincidence. Given the famous and distinctive nature of the SANOFI-AVENTIS mark, it is likely that the Respondent had notice of the existence of that mark at the time that he registered the disputed domain names. The disputed domain names are only passively held.
The disputed domain names are not identical or confusingly similar to the Complainant’s mark. The Respondent disputes the fame and distinctiveness of the Complainant’s mark, submitting news reports of scandals, alleging that the Complainant is ranked bottom in terms of clinical test data and providing a link to a book about the inside story of the French pharmaceutical industry. Consumers have no legal channels, professional ability or desire to understand prescription drugs and that most industrialized countries prohibit advertising of prescription drugs directly to consumers. Commercial drug advertising is rarely seen in the mass media. All countries strictly regulate drugs, particularly prescription drugs. The Complainant changed its name from “Sanofi-Aventis” to “Sanofi” almost seven years ago and drug brands only have a reputation within the pharmaceutical industry; after seven years the general public has completely forgotten the earlier brand name.
The Respondent argues that “Sanofi-aventis” in its domain names has no relationship to the Complainant but rather refers to “SA Nofi – A vent is !” or “SA Nofi, A vent is !”. In this configuration, “SA” is an abbreviation for “Salvation Army”, “Nofi” is the name of a cartoonist, and the other elements are English words. The Respondent explains how each English abbreviation and word identifiable in the disputed domain names can be translated to Chinese.
The Respondent has rights and legitimate interests in respect of the disputed domain names. The disputed domain names refer to “SA Nofi – A vent is !” or “SA Nofi, A vent is !”. The Respondent possessed these disputed domain names before the commencement of this proceeding. The Respondent plans to use the disputed domain names for a cartoon sharing platform but it was impossible to set it up within the 29 days that elapsed from registration to the first communication from the Center to the Respondent. The Respondent’s creative caricature business has no relationship to the Complainant. The Respondent obtained no authorization from the Complainant to use the “Sanofi” name and has no desire to be associated with the Complainant. The Respondent notes that four of the Complainant’s own domain names resolve to inactive webpages.
The disputed domain names were not registered and are not being used in bad faith. Since the time of registration, the Respondent has not attempted to sell, rent or otherwise transfer the disputed domain names for valuable consideration. There are still many TLDs in which “sanofi” and “sanofiaventis” remain available. The Respondent did not register the disputed domain names to prevent the Complainant from reflecting the mark in a corresponding domain name. The meaning and use of the disputed domain names is described above. The pharmaceutical industry is highly professional and drugs can only be sold on prescription hence the Respondent with a few domain names cannot really impact the Complainant. The Respondent and the Complainant are not competitors. If the Complainant has not brought the Complaint in bad faith, why has it failed to register its trademark in so many other TLDs yet complained about five disputed domain names that relate to the Respondent himself? The Respondent does not use the disputed domain names to attract for commercial gain Internet users to his website. Internet users would hardly buy pharmaceutical products at the Respondent’s website; that would be illegal without a doctor’s prescription. The Respondent did not register or use the disputed domain names in opportunistic bad faith. The Respondent had only registered the disputed domain names 29 days before receiving notice of this proceeding – if that is bad faith use then isn’t the Complainant’s lack of active use of certain domain names even worse? The Complainant is guilty of reverse domain name hijacking.
6. Discussion and Findings
6.1 Language of proceeding
Paragraph 11(a) of the Rules provides 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 Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant is not able to communicate in Chinese; that the disputed domain names are registered in Latin characters, not Chinese, with TLD suffixes in English; and that translation would cause undue delay and involve substantial expense.
The Respondent requests that the language of the proceeding be Chinese. Its main arguments are that the choice of language must respect the Rules; the Respondent can only fully and accurately present his case in Chinese; the Complainant is a multinational company with a Chinese trademark registration so it must be able to understand Chinese; if the use of Latin characters were sufficient to indicate familiarity with English then every dispute regarding a domain name in Latin characters would be in English; and the use of English creates an obstacle to the presentation of the Respondent’s case.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (see, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Panel observes that the Complaint in this proceeding was filed in English and the Response was filed in Chinese. Although the Respondent has gone to considerable lengths to show that he used an online translation tool to translate the Complaint and the Complainant’s language request, the Response includes a discussion of the meaning of several English words in order to explain the Respondent’s choice and proposed use of the disputed domain names. This reveals that the Respondent actually does understand English. The Panel is familiar with both Chinese and English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel notes that both Parties have been able to present their respective views on each element of the matter in dispute. Therefore, the Panel does not consider that accepting the original version of any document on file causes prejudice to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, and that it will accept the communications filed in Chinese without a translation.
6.2 Substantive issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the SANOFI-AVENTIS trademark.
The only distinctive element of each disputed domain name is the Complainant’s trademark. Two of the disputed domain names incorporate the Complainant’s trademark in its entirety. The other three disputed domain names incorporate the Complainant’s trademark but for the hyphen between the words which, as mere punctuation, makes no significant difference in this case.
The only additional element in each disputed domain name is a TLD suffix, variously “.group”, “.ltd” or “.top”, but a TLD suffix is generally disregarded for the purposes of the comparison of a disputed domain name and a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found the disputed domain names confusingly similar to the Complainant’s trademark. The Parties agree that the Complainant has not authorized the Respondent to register the disputed domain names but disagree as to whether such authorization is required.
The disputed domain names have never resolved to any active website, hence they have never been used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent’s name is Cai Rui Qiao, not “Sanofi-aventis” or “Sanofiaventis”. Therefore, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent asserts that he registered the disputed domain names because they mean “SA Nofi – A vent is !” or “SA Nofi, A vent is !”. The Panel finds this assertion implausible. The more likely explanation is that the string of letters is an exact match to the Complainant’s trademark. The Respondent submits that the disputed domain names are intended to create a cartoon sharing platform. However, he provides no evidence in support of this assertion. While the Respondent has submitted information available on Baidu regarding the works of a cartoonist named “Nofi”, this information has no apparent connection to the Respondent himself, let alone demonstrate the existence of any cartoon sharing platform associated with the disputed domain names. The Panel considers it more likely that the appearance of that cartoonist’s name in the disputed domain name is a coincidence derived from a choice to register the word “Sanofi”. The Respondent submits evidence critical of the Complainant but does not allege that the disputed domain names are for use on a criticism website. Nor does the Respondent explain why he registered five domain names for use with a single platform. For these reasons, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the disputed domain name was registered in 2017, many years after the Complainant registered its SANOFI-AVENTIS trademark, including in China, where the Respondent is located. The disputed domain names incorporate the Complainant’s trademark (in some cases minus the hyphen) with no additional element besides a TLD suffix, which is a technical requirement of registration. The Complainant’s trademark has no dictionary meaning, nor is it a combination of words with a dictionary meaning. The Panel does not consider this coincidental and there is no other plausible explanation on the record besides a deliberate targeting of the Complainant’s mark. Although the Complainant has not registered its trademark in certain TLDs, that does not constitute consent for third parties to register the Complainant’s trademark in these domains. Therefore, the Panel finds that the disputed domain names were registered in bad faith.
With respect to use, the Respondent makes only passive use of the disputed domain names but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has developed a strong reputation in its SANOFI-AVENTIS trademark in the pharmaceutical industry through use in connection with its goods and services, including in China, where the Respondent is located. Restrictions on advertising and dispensing of pharmaceuticals do not prevent the Complainant from acquiring a reputation in its mark among consumers through extensive use (such as on packaging). The disputed domain names incorporate the Complainant’s SANOFI-AVENTIS trademark (in some cases minus the hyphen) with no additional element besides a TLD suffix. The Respondent provided an implausible explanation of the intended use of the disputed domain names. Although the Complainant has not connected all its own domain names to an active website, that is irrelevant to the present case because the Complainant owns the SANOFI-AVENTIS trademark. Therefore, the Panel finds that the disputed domain names are being used in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. Reverse Domain Name Hijacking
For the reasons set out above, the Panel finds that the Complaint was not brought in bad faith.
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, <sanofi-aventis.group>, <sanofiaventis.group>, <sanofi-aventis.ltd>, <sanofiaventis.ltd> and <sanofiaventis.top> be transferred to the Complainant.
Date: October 29, 2017