WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Lei Shi

Case No. D2019-2476

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Lei Shi, China.

2. The Domain Name and Registrar

The disputed domain name <sanofiusbenefit.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 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 October 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 16, 2019.

On October 15, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 16, 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 together with the amendment to 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, in English and Chinese, the Respondent of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 27, 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 with its headquarters located in Paris, France. It is the fourth largest pharmaceutical company in the world by prescription sales. The Complainant has a business presence in more than 100 countries and employs more than 100,000 people worldwide.

The Complainant is the owner of numerous trademarks worldwide for the SANOFI marks, including but not limited to the following:

- SANOFI (Registration No. 96655339) registered in France on December 11, 1996;
- SANOFI (Registration No. 1482708) registered in France on August 11, 1988;
- SANOFI (Registration No. 010167351) registered in the European Union on January 7, 2012;
- SANOFI (International Registration No. 1092811) registered on August 11, 2011; and
- SANOFI (Registration No. 85396658) registered in the United States of America on July 24, 2012.

The Complainant is also the owner of various domain names, including but not limited to the following:

- <sanofi.com> registered on October 13, 1995;
- <sanofi.net> registered on May 16, 2003; and
- <sanofi.org> registered on July 12, 2001.

The disputed domain name was registered on September 28, 2019 and presently resolves to a website containing pay-per-click links (“PPC links”) relating to, inter alia, “Health Insurance”, “Best Liquid Foundation for Mature Skin” and “Employee Benefits Insurance”. According to the Complaint, the disputed domain name resolved to a website containing PPC links, relating to, inter alia, “Sanofi Recrutement [sic]”, “Sanofi”, and “Pharma”.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain name is confusingly similar to the SANOFI mark on the basis that the disputed domain name wholly incorporates the SANOFI mark and only differs from the SANOFI mark by the addition of the geographical acronym “us” and the descriptive term “benefit”.

The Complainant also argues that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent was not identified in the WhoIs database prior to verification by the Registrar. In addition, the Respondent is not affiliated with the Complainant nor did the Complainant license or authorize the Respondent to use the SANOFI mark.

The Complainant further argues that the disputed domain name has been registered and is being used in bad faith as the Respondent should have known of the Complainant’s SANOFI mark at the time of registration of the disputed domain name. The Complainant also asserts that the disputed domain name is being used in bad faith as the disputed domain name resolves to a webpage containing PPC links and thus the Respondent is using the disputed domain name with the intention to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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.” (See 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 disputed domain name consists of the English word “benefit”;
(iii) the website that the disputed domain name resolves to contains PPC links in English;
(iv) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and
(v) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Having regard to 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.

The Complainant has provided evidence of its numerous trademark registrations for the SANOFI mark in numerous jurisdictions.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <sanofiusbenefit.com> incorporates the Complainant’s SANOFI mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The disputed domain name differs from the SANOFI mark by the addition of the letters “us”, the English word “benefit”, and the generic Top-Level Domain (“gTLD”) suffix “.com”. The letters “us” is a common abbreviation for the geographical designation, United States of America.

It is well-established where a complainant’s trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Novartis AG v. Radu Luca WIPO Case No. D2016-2582). Thus, the addition of the letters “us” and the English word “benefit” does not avoid confusing similarity.

It is also established that the addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the gTLD “.com” is without significance and does not prevent a finding of confusing similarity.

In the particular circumstances of the present case, the Panel is of the view that the disputed domain name is identical or confusingly similar to the Complainant’s 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 show that it has rights or legitimate interests in respect to the disputed domain name (see 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 Complainant has provided evidence that it owns numerous trademark registrations in many jurisdictions long before the disputed domain name was registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s SANOFI mark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

In addition, the evidence submitted by the Complainant shows that all the details of the registrant on the WhoIs database are redacted for privacy. Although the WhoIs record is redacted for privacy, the Registrar has confirmed that the disputed domain name is registered under the Respondent “Lei Shi” which bears no resemblance to the disputed domain name in any way (see Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3).

Finally, the Complainant has submitted evidence showing that the disputed domain name redirects to a page containing PPCs relating to the Complainant. Past UDRP panels have found that the use of a domain name to host a parking page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; WIPO Overview 3.0, section 2.9). When the Panel assessed the disputed domain name, the website that the disputed domain name resolved to contained PPC links relating to health insurance, which is closely connected to the pharmaceutical industry that the Complainant operates in. Thus, the Panel finds that the use of the disputed domain name in the present case to host a parking page comprising PPC links does not represent a bona fide offering.

In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show 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 also show that the respondent registered and is using the disputed domain name in bad faith (see 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’s trademark registrations. According to the evidence filed by the Complainant, the Complainant has owned registrations for its SANOFI marks since at least 1988 and these registrations were active at the time the Respondent registered the disputed domain name in 2019. The Complainant has also shown evidence that the Complainant enjoys considerable reputation and goodwill worldwide, and that several other UDRP panels have considered that the Complainant’s SANOFI trademark is “well‑known”. Therefore, the Panel draws the inference that the Respondent knew or should have known about the Complainant’s SANOFI mark. Further, it is the Complainant’s evidence that the SANOFI mark has no inherent meaning other than in relation to the Complainant and its business. The Panel therefore finds it inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademarks and intention of benefiting from confusion with such trademarks (see Leite’s Culinaria, Inc. v. Gary Cieara, WIPO Case No. D2014-0041; WIPO Overview 3.0, section 3.2.2).

Furthermore, the disputed domain name is confusingly similar to the Complainant’s SANOFI trademark which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels ruled that in such circumstances “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). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Complainant has submitted evidence that the disputed domain name <sanofiusbenefit.com> redirects to a website that displays PPC links relating to, inter alia, “Sanofi”, “Pharma” and “Sanofi Recrutement [sic]”. When the Panel accessed the disputed domain name, the disputed domain name resolved to a website displaying PPC links relating to, inter alia, “Health Insurance”, “Best Liquid Foundation for Mature Skin” and “Employee Benefits Insurance”. “Health insurance” is a term that is closely related to the Complainant’s industry. Taken together with the confusing similarity between the disputed domain name and the Complainant’s SANOFI mark, this further indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

In addition, the Respondent did not submit a Response in this proceeding. This may be further indications of the Respondent’s bad faith, which was considered by the Panel.

Based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s trademark, the confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent’s use of the disputed domain name and the failure of the Respondent to submit a response, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <sanofiusbenefit.com> be cancelled.

Jonathan Agmon
Sole Panelist
Date: December 11, 2019