WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Zihao Zhu
Case No. D2019-0369
1. The Parties
Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Zihao Zhu of Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <sanofihouseware.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2019. On February 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on February 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 19, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 25, 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
Complainant is Sanofi, a multinational pharmaceutical company headquartered in Paris, France. Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication. The company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. Sanofi owns trademark registrations for the SANOFI mark in many jurisdictions around the world, including the European Union and France specifically, as well as the United States of America, and a number of international registrations with effect in a number of jurisdictions around the world including Australia, Japan, the Republic of Korea, and the Russian Federation. Sanofi owns various domain names corresponding to the SANOFI mark, including <sanofi.com>, registered in 1995. Registrations for the SANOFI mark date back to at least as early as 1988. The <sanofi.com> domain name, as well as other domain names owned by Complainant composed of the SANOFI mark at the second-level, resolve to a website operated by Complainant that relates to its pharmaceuticals business.
The disputed domain name, <sanofihouseware.com>, was registered by Respondent on August 15, 2018 and resolves to a website entitled “Beijing University of Chinese Medicine”.
5. Parties’ Contentions
Complainant asserts that the disputed domain name reflects the SANOFI trademark, which is distinctive as it has no other meaning than as Complainant’s trademark. Complainant asserts that it advertises and promotes the company and its SANOFI trademarks in countries all over the world, including China where Respondent is located. It also cites numerous prior UDRP decisions finding that Complainant’s SANOFI mark is identified as famous or well-known. Complainant states that the disputed domain name is confusingly similar to its SANOFI trademark because it incorporates the SANOFI trademark as the dominant part of the disputed domain name, combined with a descriptive term “houseware” and the generic Top-Level Domain (“gTLD”) “.com”. According to Complainant, where a domain name wholly incorporates a Complainant’s distinctive trademarks in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, of a descriptive term. Complainant asserts that the term “houseware” in the disputed domain name serves to enhance confusion because it is related to Complainant’s pharmaceutical cleaning and hygienic goods.
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name, given that: Respondent is not commonly known by the disputed domain name, Complainant has never licensed use of its mark to Respondent, there is no relationship between Complainant and Respondent and Respondent incorporated Complainant’s SANOFI trademark into the disputed domain name without authorization, and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is he using the disputed domain name in connection with a bona fide offering of goods or services. Complainant asserts that the disputed domain name leads to an ostensible educational website, but that this website is merely a pretext, noting that the disputed domain name is the property of an individual and not of Beijing University of Chinese Medicine as suggested on the website. According to Complainant, the website’s sole purpose is to attempt to justify Respondent’s registration of the disputed domain name whilst falsely suggesting that Respondent is somehow affiliated or otherwise connected to Complainant through the indication “Chinese Medecine,” and thereby acting in a field competing with Complainant’s activities, when in fact it is not. Complainant also notes that the website may be linked to gambling activities, as the website tab heading contains a reference to Hubei Welfare Lottery in Chinese script.
Complainant asserts that the disputed domain name has been registered and used in bad faith. Complainant asserts that given the famous and distinctive nature of the mark SANOFI, Respondent is likely to have had, at least, constructive notice, if not actual notice, as to the existence of Complainant’s marks at the time he registered the disputed domain name and that this suggests that Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make illegitimate use of it. Complainant asserts that the disputed domain name has been registered for the purpose of attracting Internet users to Respondent’s website by creating a likelihood of confusion – or at least an impression of association – between SANOFI trademarks and the disputed domain name. According to Complainant, the disputed domain name directs Internet users to a website which is not the official website of Complainant’s products, suggesting that Respondent registered and used the disputed domain name primarily for the purpose of disrupting Complainant’s business through the attraction of Internet users to Respondent’s website by creating a likelihood of confusion between SANOFI trademarks and domain names and the disputed domain name, and trying to gain unfair benefit of SANOFI’s goodwill and reputation by using the disputed domain name in connection with a pretextual educational site when the site is also apparently tied to promoting gambling services.
Accordingly, Complainant requests that the disputed domain name be transferred to it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the SANOFI Marks, which have been used since at least as early as 1988, well before Respondent registered the disputed domain name on August 15, 2018. With Complainant’s rights in the SANOFI trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name, typically disregarding the gTLD in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc/Joseph Gross, WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to Complainant’s SANOFI trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is fully incorporated into the disputed domain name at the second level, and the addition of the descriptive or generic term “houseware” after the mark does nothing to prevent a finding of confusing similarity. See, e.g. Comerica Bank v. Kimberly Barnes, WIPO Case No. D2014-1052.
Thus, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained their burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the SANOFI Marks, and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the disputed domain name to redirect Internet users to a website purportedly associated with “Beijing University of Chinese Medicine,” but the tab heading for which also references the Hubei welfare lottery – a gambling service. Regardless of whether the website it is pretextual or is actually used in connection with educational program related services, Respondent cannot justify the registration of a domain name containing Complainant’s distinctive mark to redirect Internet users to its own website. This does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
The Panel finds that Complainant provided ample evidence to show that use and registration of the SANOFI Marks long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the SANOFI Marks when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.1; seealso TTT Moneycorp Limited v. Privacy Gods/Privacy Gods Limited, WIPO Case No. D2016-1973.
Respondent’s use of the SANOFI trademark in connection with a website that purports to offer educational program related services, but which may be pretextual and which also advertises the Hubei welfare lottery, violates paragraph 4(b)(iv) of the Policy, insofar as this use indicates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on the website. See, e.g., Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177.
Insofar as Respondent’s website can be said to compete with Complainant because it relates to Chinese medicine, which may be considered in the same field of activity as Complainant’s pharmaceuticals business, the Panel also finds that Respondent registered and used the disputed domain name primarily for the purpose of disrupting the business of a competitor within the meaning of Policy paragraph 4(b)(iii). See WIPO Overview 3.0, section 3.1.3 (“[P]anels have applied the notion of a ‘competitor’ beyond the concept of an ordinary commercial or business competitor to also include the concept of ‘a person who acts in opposition to another’ for some means of commercial gain, direct or otherwise”).
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) 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, <sanofihouseware.com>, be transferred to Complainant.
Brian J. Winterfeldt
Date: April 5, 2019