WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Linpinfeng
Case No. D2018-1441
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Linpinfeng of Shenzhen, Guangdong, China, self-represented.
2. The Domain Names and Registrar
The disputed domain names <sanofiblockchain.com> and <sanofichain.com> are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2018. On June 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 29, 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 July 2, 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 July 6, 2018. The Respondent did not comment on the language of the proceeding by the specified due date. On July 9, 2018, the Complainant submitted an amended Complaint to comply with an administrative formality.
The Center verified that the Complaint together with the amended 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 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 1, 2018. On August 2, 2018, the Respondent submitted an informal email in Chinese.
The Center appointed Joseph Simone as the sole panelist in this matter on August 13, 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.
On August26, 2018, the Respondent sent a further informal email in Chinese to the Center.
4. Factual Background
Sanofi is a French multinational pharmaceutical company headquartered in Paris (France) and is ranked among 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 in the market 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's worldwide reputation was recognized in the annual "L2 Digital IQ Index: Pharmabrand & Healthcare Providers" worldwide brand survey issued April 18, 2011.
Sanofi owns numerous trademark registrations for SANOFI around the world, including in China, the location of the Respondent: see Chinese trademark number 1154668, registered on February 28, 1998 in class 5 covering pharmaceutical products.
Sanofi is also the owner of numerous domain names containing the trademark SANOFI, many of which are registered and put into active use by the Complainant in connection with its activities.
The disputed domain names <sanofichain.com> and <sanofiblockchain.com> were registered on March 15, 2018 and March 25, 2018, respectively. The disputed domain name <sanofichain.com> resolves to an inactive website, while <sanofiblockchain.com> resolves to a website on blockchain, available in both the Chinese and English languages. On March 23, 2018, and April 18, 2018, the Complainant sent two cease-and-desist letters to the privacy service listed as the registrant of the disputed domain names in the publicly-available WhoIs information. There was no response.
5. Parties' Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain names are identical or confusingly similar to a mark in which it has rights, based on the following:
(i) The Complainant holds a number of SANOFI trademarks and domain names containing SANOFI, all of which pre-date the disputed domain names. The Complainant has used the trademark and trade name SANOFI for over 40 years in countries all over the world, including China, and numerous UDRP panels have considered SANOFI as well-known;
(ii) The disputed domain names wholly reproduce the Complainant's trademark as the dominant element and are confusingly similar despite the addition of descriptive terms "chain" and "blockchain".
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names given that:
(i) The Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including its trademarks; and
(ii) The Respondent has not made fair use of the disputed domain names 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 <sanofichain.com> is inactive and <sanofiblockchain.com> resolves to a website regarding blockchain, but does not link anywhere to Sanofi, thereby misleadingly diverting consumers with a view to commercial gain.
Registered and used in bad faith
The Complainant submits that, given the well-known status of the SANOFI trademark and the likelihood that the Respondent knew of the Complainant's rights, registration with no prior right or legitimate interest in the mark is itself sufficient evidence of bad faith registration and use. In relation to the disputed domain name <sanofichain.com>, the Complainant appeals to prior UDRP cases which have held that passive holding can constitute "use" in bad faith, particularly in relation to well-known marks. Regarding <sanofiblockchain.com>, the Complainant submits that the disputed domain name was registered for the sole purpose of misleading the Complainant's consumers to the Respondent's own website on blockchain.
The Respondent did not formally reply to the Complainant's contentions, but sent an informal email to the Center in Chinese summarized as follows:
(i) The disputed domain names are not used for commercial purposes, only for information exchange;
(ii) The content of the websites is still being planned, and "if you really need this domain name, I hope you will have the good faith to communicate";
(iii) "If it is not permitted to register a domain name with SANOFI letters, then you should consult with Alibaba and other global domain registrars and exercise control at the source to prevent third-party registrations, but the reality is you did not. You cannot wait for someone else to register, then come back and take it. This is similar to the logic of robbers";
(iv) "I hope you will negotiate with me instead of prosecuting. If you negotiate well, I will consider giving permission. If you don't want to negotiate, I will sue you and the registrar in China."
The Respondent's email of August 26, 2018 essentially reiterated the Respondent's previous email.
6. Discussion and Findings
6.1 Language of the Proceedings
The Complainant filed the Complaint in English and requested that English be the language of the proceedings on the grounds that (i) the disputed domain names contain English terms and the Registration Agreement is available in English, suggesting the Respondent is familiar with English; and (ii) if the Complainant were to submit all documents in Chinese, the proceedings would be unduly delayed and the Complainant would incur substantial expenses for translation.
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 proceedings should be Chinese. However, noting the aim of conducting proceedings with due expedition while also ensuring parties are given a fair opportunity to present its 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 including evidence that the respondent understands the language of the complaint and potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.
In the Panel's view, a disputed domain name containing English terms does not alone indicate the necessary familiarity with the English language, however in this case the content of the website to which the active disputed domain name resolves is available in both English and Chinese. Although the Respondent's Chinese-language email suggests a preference for Chinese, the Respondent appears to be familiar with both languages. As the Respondent failed to express a preference or submit a formal Response, the Panel believes there will be no prejudice caused by proceeding in English. By contrast, requiring translation of the Complaint to Chinese would cause undue delay and expense. Therefore, the Panel will proceed in English.
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 Complainant has given evidence of its numerous trademark registrations for SANOFI. The Complainant had also demonstrated unregistered rights in the trademark by virtue of its extensive use of the trade name 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 general Top-Level Domain ".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 names <sanofichain.com> and <sanofiblockchain.com> incorporate the entirety of the Complainant's trademark SANOFI. After removing the ".com" suffixes, the elements that remain are "chain" and "blockchain", 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).
Therefore, the Panel is satisfied the disputed domain names are confusingly similar to the Complainant's mark and the first requirement of the UDRP is 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).
The Panel accepts the Complainant's submission 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 incorporating its trademark.
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.
Paragraph 4(c)(i) states:
"before any notice 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"
The website to which <sanofiblockchain.com> resolves is in active use to advertise a blockchain technology application called "Walker Chain" or "WAL". The White Paper provided on the website states that the application can store travel document information for verification purposes, avoid the high commission and low return in engaging travel agencies, help enterprises and government manage employee travel and upgrade the quality of travel, etc. As such, this suggests "evidence of business formation" and "investment in website development" which may be examples of the types of behavior envisaged by paragraph 4(c)(i) of the Policy (section 2.2 of WIPO Overview 3.0).
However, demonstrating rights in the disputed domain name inevitably involves demonstrating rights in the term "sanofi" or "sanofi blockchain". Nowhere does the Respondent's website or White Paper indicate any link to the term "sanofi". Nor is there evidence that the Respondent is commonly known by the term "Sanofi Blockchain", rather its business name appears to be "Walker Chain". The Respondent does not offer any defense in this regard, merely stating that "if you are not allowed to carry the letters of SANOFI, you should consult with Alibaba and other global domain name registrars, and exercise control at the source to prevent third parties from registering".
Nor can the Respondent be said to be making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (paragraph 4(c)(iii) of the Policy). The Respondent states that the websites are purely for information exchange and not commercial purposes, however the website clearly indicates a commercial objective, referring to how WAL can "provide users with an extremely high user experience and investment experience." Given the fame and reputation of the Complainant, incorporation of the trademark in the disputed domain name appears to be a mechanism purely intended to attract Internet users to the Respondent's website.
As there is no justifiable explanation for incorporating the term "sanofi" in the disputed domain name, the stated use of the website cannot confer rights or legitimate interests on the Respondent.
With regard to <sanofichain.com>, the associated website is currently inactive. The Respondent states that the content of the website is still being planned. Accepting this submission, the Respondent still provides no evidence of plans nor justification for the use of the term "sanofi" or "sanofi chain". In the absence of such evidence, the Panel finds that the Respondent also has no rights or legitimate interests in this disputed domain name.
Accordingly, the Panel finds 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 names wholly incorporate the word "sanofi", which is an inherently distinctive and well-known trademark, the Panel accepts that the Respondent likely knew of the Complainant's trademark when it registered the disputed domain names. The Respondent does not dispute this fact, but suggests that if it is not allowed to incorporate the letters of SANOFI mark, then this is an issue for the Complainant and the Registrar. The Respondent states that waiting for a third party to register a domain name only to seize it later on is similar to the logic of robbers. On the contrary, as stated in paragraph 2 of the Policy, which is incorporated into the Respondent's Registration Agreements with the Registrar, when someone registers a domain name, they represent and warrant that to their knowledge, registration of the domain name names will not infringe upon the rights of a third party. Therefore, it was the Respondent's duty to verify that the disputed domain did not infringe any trademark rights. Considering the fame and worldwide reputation of the Complainant, its rights in SANOFI were easily ascertainable and in the absence of authorization, registration of domain names containing such a well-known trademark suggests opportunistic bad faith.
In addition, 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. In particular, subparagraph (iii) 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."
By incorporating the trademark SANOFI in the disputed domain names with no plausible explanation, the Panel is satisfied that the Respondent intended to divert Internet users to its websites by creating a likelihood of confusion with the Complainant's mark for commercial gain. The inactive status of the second disputed domain name does not alter this conclusion, as it is well established that "non-use" can support a finding of bad faith given other circumstances which have been outlined above (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The failure of the Respondent to submit evidence to the contrary nor a substantive formal Response reinforces this conclusion.
Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith and the third requirement of the UDRP is 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 <sanofiblockchain.com> and <sanofichain.com> be cancelled.
Date: August 23, 2018