WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi, Genzyme Corporation v. ZhangPeng (张朋)
Case No. D2018-0100
1. The Parties
The Complainant is Sanofi of Paris, France; Genzyme Corporation of Cambridge, Massachusetts, United States of America (“US”), represented by Selarl Marchais & Associés, France.
The Respondent is ZhangPeng (张朋) of Xi An, Shan Xi, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <sanofigenzyme.top> is registered with Jiangsu Bangning Science & Technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2018. On January 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 24, 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 the same day. The Respondent did not comment on the language of the proceeding by the specified 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 January 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2018. On February 1, 2018, the Respondent filed an informal email in Chinese, but did not submit a formal response by the due date. On February 22, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 12, 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 the Rules, paragraph 7.
4. Factual Background
Sanofi (formerly Sanofi-Aventis), is a French pharmaceutical company headquartered in Paris (France). The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market. The Complainant also develops over-the-counter medication.
SANOFI is one of the world’s largest multinational pharmaceutical companies by prescription sales.
The Complainant enjoyed consolidated net sales of EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014.
The Complainant is settled in more than 100 countries on 5 continents employing 100,000 people.
The Complainant 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.
Genzyme Corporation is an American biotechnology company founded in 1981 and owned by Sanofi. As a subsidiary of Sanofi, Genzyme Corporation has a presence in approximately 65 countries, including 17 manufacturing facilities and 9 genetic-testing laboratories; its products are sold in 100 countries.
Sanofi and Genzyme Corporation (The Complainant) are major players on the worldwide pharmaceutical market and composed of two business units – Rare Diseases and Multiple Sclerosis – that develop treatments for serious and debilitating diseases in the fields of genetic, endocrine and cardiovascular diseases.
The Complainant is the owner of numerous trademarks for the marks SANOFI and GENZYME, including, for example international trademark number 1092811, SANOFI, registered on August 11, 2011 in classes 1, 9, 10, 16, 38, 41, 42, 44; international trademark number 1094854, SANOFI, registered on August 11, 2011 in classes 3 and 5; international trademark number 674936, SANOFI registered on June 11, 1997 in classes 3 and 5; US trademark No. 1859429, GENZYME, filed on September 27, 1993 and registered on October 25, 1994 in class 5; European Union Trade Mark No. 002348852, GENZYME, filed on August 10, 2001 and registered on April 17, 2003 in classes 1, 5 and 42; Chinese trademark No. 3160697, GENZYME, filed on April 26, 2002 and registered on June 21, 2003 in class 5; Chinese trademark No. 3160699, GENZYME, filed on April 26, 2002 and registered on November 7, 2003 in class 42; and Chinese trademark 健赞 (Chinese characters) No. 4208493, filed on August 6, 2004 and registered on June 21, 2007 in class 5.
The Complainant is also the owner of the following domain names containing the marks SANOFI and GENZYME:
- <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;
- <genzyme.fr> registered on March 19, 2003;
- <genzyme.cn> registered on June 11, 2004;
- <genzyme.com> registered on August 14, 1996;
- <genzyme.net> registered on August 5, 2000;
- <genzyme.org> registered on August 5, 2000; and
- <genzyme.com.cn> registered on December 16, 2002.
The disputed domain name <sanofigenzyme.top> was registered on November 17, 2017.
The disputed domain name does not resolve to any active website.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered marks and GENZYME and because it contains a combination of these marks in their entirety.
The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its marks and did so due to the international reputation it has acquired in the marks SANOFI and GENZYME.
The Complainant further argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant. It is further alleged that the Respondent has never used and does not intend to use the marks SANOFI and GENZYME in connection with a bona fide offering of goods or services or in any other legitimate commercial or noncommercial way. Therefore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent registered the disputed domain name long after the Complainant owned trademark registrations for SANOFI and GENZYME. The Complainant argues that it has enormous good will in the SANOFI and GENZYME trademarks. The Complainant argues that these circumstances and the Respondent’s passive holding of the disputed domain name suggest that the Respondent has registered and used the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not submit a substantive reply to the Complainant’s contentions, beyond asserting that it did not register the disputed domain name in bad faith, claiming to be a domain name enthusiast.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the SANOFI and GENZYME marks (see above and in Annex 8 of the Complaint).
The disputed domain name <sanofigenzyme.top> integrates the Complainant’s SANOFI and GENZYME trademarks in their entirety.
The combination of the related names “Sanofi” and “Genzyme” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademarks. Moreover, previous UDRP panels have found that when a complainant’s trademark is recognizable, the addition of another mark is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark. The present case is no exception as both trademarks SANOFI and GENZYME are registered and recognizable. These two trademarks are not commonly combined and their combination will only create further confusion. (See Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 (<chevron-texaco.com>); Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195 (<yahooebay.org> et al.); Bayerische Motoren Werke AG v. Gary Portillo, WIPO Case No. D2012-1937 (<rockvilleaudibmw.com> et al.); Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603 (<gucciipadcase.net> et al.)).
The disputed domain name and the Complainant’s trademarks differ in the addition of the generic Top-Level Domain (“gTLD”) “.top” to the disputed domain name. This addition does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Volkswagen AG v. Hui Min Wang, Wang Hui Min, WIPO Case No. D2017-0860). The gTLD “.top” iswithout significance in the present case since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to come forward with evidence to demonstrate its rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks SANOFI and GENZYME or a combination thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services and holds no trademark registration for any SANOFI or GENZYME marks. There is no legitimate noncommercial of fair use of the disputed domain name.
The Respondent has not submitted a substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the SANOFI trademark since at least August 11, 1988, and for the GENZYME mark since October 25, 1994, while the Respondent owned the disputed domain name since November 17, 2017. Considering the Complainant’s numerous trademarks, the Respondent could have easily found one of the Complainant’s SANOFI and GENZYME registrations in a simple trademark search.
Furthermore, UDRP panels have already considered that Sanofi’s trademarks are “well known” (Sanofi v. Registration Private, Domains By Proxy, LLC / Donald Goecke, WIPO Case No. D2017-1414; Sanofi v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Simon Huang, YouChuang, WIPO Case No. D2017-1418; for the complete list see pages 16-19 of the Complaint.)
In cases in which the well-known status of a complainant’s trademarks is well established, UDRP decisions acknowledge that this consideration is, in itself, indicative of bad faith registration and use (Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384). The registration and use of the combination of trademarks that carry the registered names “Sanofi” and “Genzyme” is likely to create a false impression and therefore indicative of the Respondent’s bad faith.
In view of the Complainant’s prior registrations, and the widespread use and goodwill of the Complainant in the SANOFI and GENZYME trademarks, it is suggestive of the Respondent’s bad faith in these circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The disputed domain name includes the Complainant’s trademarks SANOFI and GENZYME in their entirety. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095).
On December 8, 2017, the Complainant’s counsel sent to the Respondent a cease-and-desist letter and requested the transfer of the disputed domain name. The Respondent did not answer. The Respondent’s failure to express any denial or explanation despite the opportunity offered to him reinforces the inference of bad faith registration and bad faith use (Sanofi-Aventis v. Above.com Domain Privacy/ Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634). In the totality of the circumstances, the Panel considers the Respondent’s passive holding of the disputed domain name to be in bad faith. The Respondent has failed to come forward with any evidence of any contemplated good-faith use of the disputed domain name, and the Panel is unable to conceive of any such use.
Based on the evidence presented to the Panel, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith and that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <sanofigenzyme.top> be transferred to the Complainant.
Date: March 24, 2018