WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Fei Liujun
Case No. D2019-0173
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Fei Liujun of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <sanofi.club> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, 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 25, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On January 28, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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 of the Complaint in Chinese and English, and the proceedings commenced on February 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2019.
The Center appointed Francine Tan as the sole panelist in this matter on March 15, 2019. 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, raking 4th in the world in terms of size. It engages in research and development, manufacturing, marketing and sales of prescription as well as over‑the-counter pharmaceutical products and drugs. The Complainant’s net sales in 2017 was EUR 35.05 billion.
The Complainant is present in more than 100 countries, with around 100,000 employees.
The Complainant has trade mark registrations for the word SANOFI in many countries. Its trade mark registrations include French Trade mark Registration No. 96655339, registered on December 11, 1996, European Union Trade mark Registration No. 010167351, registered on January 7, 2012, International Trade mark Registration No. 1092811, registered on August 11, 2011, International Trade mark Registration No. 591490, registered on September 25, 1992 (including a designation of China), and United States of America Trade mark Registration No. 85396658, registered on July 24, 2012.
The Complainant has various domain name registrations which include the trade mark SANOFI, examples being <sanofi.com>, <sanofi.eu>, <sanofi.fr>, <sanofi.us>, <sanofi.net> and <sanofi.biz>.
The disputed domain name was registered on January 3, 2019. It does not resolve to any active website.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the SANOFI trade mark in which the Complainant has rights. The SANOFI trade mark is reproduced in the disputed domain name. The generic Top-Level domain (“gTLD”) “.club” does not suffice to avoid confusing similarity with the Complainant’s trade mark.
The Complainant’s SANOFI trade mark has been regarded as well-known in many earlier UDRP decisions, e.g., Sanofi v. steven shao, WIPO Case No. D2018-1747; Sanofi v. Constantin Routing, Rocket Consult Ltd, WIPO Case No. D2018-1678; Sanofi v. Linpinfeng, WIPO Case No. D2018-1441; and Sanofi v. Wang Le, Shang Cheng Xin Xi Ke Ji Shang Hai You Xian Gong Si, WIPO Case No. D2018-1379.
The Respondent has no rights or legitimate interests in respect of the disputed domain name and this is borne out by the following circumstances: The trade mark SANOFI is highly distinctive, having no meaning. The Respondent’s name bears no resemblance to “Sanofi”. The Respondent has never been licensed or authorised by the Complainant to use the SANOFI trade mark or to register a domain name incorporating the mark. There is no relationship between the Complainant and the Respondent. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name does not resolve to any active website.
The disputed domain name was registered and is being used in bad faith. Given the well-known nature of the SANOFI trade mark, the Respondent’s conduct constitutes opportunistic bad faith. The Respondent must have known of the Complainant’s SANOFI trade mark at the time it registered the disputed domain name and chose to register it for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion or an impression of association with the Complainant’s SANOFI trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement in this case is Chinese. The Complainant, however, requested that the language of the proceeding be English for these reasons:
(i) the Complainant’s international business is operated primarily in English and it is not able to communicate in Chinese;
(ii) the disputed domain name and the gTLD are not in Chinese but in English and Latin characters; and
(iii) the Respondent’s choice in selecting the disputed domain name shows that it is acquainted with the English language.
The Respondent did not respond on the issue of the language of the proceeding.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding is to 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 Panel has considered the circumstances of this case, namely the Complainant’s request, the Respondent’s lack of response (whereas it had the opportunity to put forward arguments in Chinese if it so wished), the fact that the Respondent chose the “.club” gTLD which is in English, and the fact that having Chinese as the language of the proceeding would lead a delay, which does not appear to be merited. The Panel remains to be persuaded that the Respondent would be prejudiced by the proceeding being conducted in English.
In the circumstances, the Panel rules that the language of proceeding shall be English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the trade mark SANOFI.
The Panel finds that the disputed domain name is identical to the Complainant’s SANOFI trade mark in view of the fact that the trade mark has been incorporated in its entirety therein, and in view of the well‑established principle that the gTLD is to be disregarded when considering the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(i) of the Policy has been established by the Complainant.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has demonstrated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted any licence to nor has it authorised the Respondent to use the SANOFI trade mark or to register the disputed domain name. Having done so, the burden shifts to the Respondent to establish, with evidence, circumstances showing that it has rights or legitimate interests in the disputed domain name. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Respondent completely failed to do so. In the circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been established by the Complainant.
C. Registered and Used in Bad Faith
The Panel is persuaded in this case that the Respondent registered the disputed domain name with the aim to mislead Internet users into thinking it is in some way connected with, sponsored or endorsed by, or affiliated with the Complainant and its SANOFI trade mark. The Panel finds it more likely than not that the registration of the disputed domain name was based on previous knowledge of and familiarity with the Complainant’s SANOFI trade mark. It would be difficult to believe that the Respondent was unaware of the Complainant, a global company with an extensive reach across the world.
Many earlier UDRP decisions have established the principle that the passive holding of a domain name under appropriate circumstances can constitute use in bad faith. The Panel finds that the Respondent’s passive holding of the disputed domain name which identically incorporates the Complainant’s famous trade mark constitutes bad faith use and registration under the Policy. The Panel’s decision is in line with rationale underlying the seminal decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and section 3.3 of the WIPO Overview 3.0. The Panel is persuaded of the Respondent’s bad faith registration and use of the disputed domain name in view of the fame and highly distinctive nature of the Complainant’s SANOFI trade mark, the Respondent’s failure to submit a response, and the implausibility of any good faith use to which the disputed domain name may be put by the Respondent.
Paragraph 4(a)(iii) of the Policy has been established by the Complainant.
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 <sanofi.club> be transferred to the Complainant.
Date: March 17, 2019