WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biofarma and Les Laboratoires Servier v. Wang Feng Lin, Bei Jing Hua Sheng Hua Da Yi Yuan Guan Li You Xian Gong Si
Case No. D2019-1416
1. The Parties
The Complainants are Biofarma (“First Complainant”) and Les Laboratoires Servier (“Second Complainant”), France, represented by IP Twins S.A.S., France.
The Respondent is Wang Feng Lin, Bei Jing Hua Sheng Hua Da Yi Yuan Guan Li You Xian Gong Si, China.
2. The Domain Name and Registrar
The disputed domain name <we-health.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2019. On June 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On June 27, 2019, the Center also transmitted 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 1, 2019. The Respondent did not comment on the language of the proceeding. The Complainant also filed an amended Complaint in English on July 1, 2019.
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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 9, 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 Complainants are part of the Servier group, which produces and markets pharmaceuticals. “Wehealth” is the name of a department of the Servier group that was launched in 2016 and is focused on creating and developing partnerships between that group and promising startups in the domain of digital health. The First Complainant owns trademark registrations in multiple jurisdictions for WEHEALTH, including international trademark registration number 1329611, registered on October 5, 2016. The Second Complainant owns trademark registrations in multiple jurisdictions for WEHEALTH BY SERVIER, including International trademark registration number 1361896, registered on November 10, 2016. Both these trademark registrations designate multiple jurisdictions, including China; both specify goods and services in classes 5, 9, 10 and 44; and both registrations remain current.
The Respondent is an individual and company located in China. The latter part of the company name appears to be a transliteration of Chinese words meaning “Hospital Management Co. Ltd”.
The disputed domain name was registered on November 28, 2017. Evidence from the Internet archive presented by the Complainant shows that in 2018, prior to the filing of the Complaint, the disputed domain name resolved to a webpage in English that solicited offers and displayed the message “Buy now for USD999”. The disputed domain name does not currently resolve to an active website; rather, it is passively held.
5. Parties’ Contentions
The disputed domain name is identical to the First Complainant’s WEHEALTH trademark. The hyphen in the disputed domain name should not be considered an element that could decrease the risk of confusion with the Complainant’s trademarks. The disputed domain name is confusingly similar to the Second Complainant’s WEHEALTH BY SERVIER trademark, as WEHEALTH is a fanciful term and the dominant part of that trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name, which redirects toward an error page. The Respondent holds no trademark right in respect of WEHEALTH. The disputed domain name is not used on the web. The Respondent has never been granted authorization, license or any right whatsoever to use the Complainants’ trademarks. The Respondent is not commercially linked to the Complainants.
The disputed domain name was registered and is being used in bad faith. The Servier group is so widely well known that it is very unlikely that the Respondent was ignorant of the Complainants’ rights to the term “Wehealth”. This is a fanciful term comprising a combination of English dictionary words. The disputed domain name was offered for sale in 2018 and is not currently used by the Respondent.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Procedural Issues
A. Multiple Complainants
The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group and both own registrations for trademarks that consist of, or include, WEHEALTH. The Panel finds that the Complainants have a common grievance against the disputed domain name registrant and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.
Nevertheless, the Panel notes that the remedy requested is a transfer of the disputed domain name to the First Complainant. In view of the Panel’s findings in relation to the disputed domain name and the WEHEALTH mark, the Panel does not consider it necessary to assess the arguments regarding the WEHEALTH BY SERVIER mark.
B. Language of the 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 Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is a combination of two English words which suggests that the Respondent has at least an operational understanding of the English language, while the Complainant is not in position to conduct these proceedings in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint. The Respondent did not comment on the language of the proceeding.
Paragraphs 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 takes 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 notes that in the present proceeding the Complaint was filed in English. The website to which the disputed domain name formerly resolved was in English, which suggests that the Respondent is able to communicate in that language. Further, despite the Center having sent a communication regarding the language of the proceeding and written notice of the Complaint in English and Chinese to the Respondent’s contact addresses, the Respondent did not express any interest in responding to the Complaint or otherwise participating in this proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice 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. The Panel would have accepted a Response in Chinese but none was filed.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a 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 presented, the Panel finds that the First Complainant has rights in the WEHEALTH mark.
The disputed domain name is visually identical to the First Complainant’s WEHEALTH mark, but for the insertion of a hyphen between the words “we” and “health” and the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”. The disputed domain name is aurally identical to the First Complainant’s mark, but for the addition of the gTLD suffix. A gTLD suffix is generally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of 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.
As regards the first and third circumstances set out above, the Respondent currently makes only passive use of the disputed domain name. That is not a use in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance above, the name of the Respondent individual is “wang feng lin” and the Respondent organization is “bei jing hua sheng hua da yi yuan guan li you xian gong si”, not “we-health”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.
In summary, 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 name. The Respondent failed to rebut that case because it did not reply to the Complainant’s contentions.
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 name. 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. The first circumstance is the following:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name.”
With respect to registration, the Panel observes that the disputed domain name is visually almost identical, and in fact aurally identical, to the Complainant’s WEHEALTH trademark but for the addition of a gTLD suffix, which is a technical requirement of registration. The Respondent registered the disputed domain name after the Complainant registered its trademark, including in China where the Respondent is located. The Complainant’s WEHEALTH trademark is a coined word with no other meaning. Although the Respondent inserted a hyphen between the dictionary words “we” and “health” that comprise the mark, the Respondent gives no explanation for its choice of the disputed domain name. Therefore, the Panel considers it more likely than not that the Respondent was aware of the Complainant and its trademark at the time that it registered the disputed domain name. The Panel finds that the Respondent registered the Complainant’s trademark in the disputed domain name in bad faith.
With respect to use, the Respondent currently makes only passive use of the disputed domain name 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 disputed domain name formerly resolved to a webpage that solicited offers for the disputed domain name and offered it for a price of USD 999. The Panel considers that price very likely to have been in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. In any case, the Respondent has not documented any out-of-pocket costs. The Respondent has made no other apparent active use of the disputed domain name. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <we-health.com> be transferred to the First Complainant.
Date: August 17, 2019