WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi and Sanofi Biotechnology v. 权中俊 (Quan Zhong Jun)

Case No. D2020-0618

1. The Parties

Complainants are Sanofi and Sanofi Biotechnology, France, represented by Selarl Marchais & Associés, France.

Respondent is 权中俊 (Quan Zhong Jun), China.

2. The Domain Names and Registrar

The disputed domain names <duixent.com>, <dupixemt.com>, <dupixnt.com>, and <dupxent.com> (the “Domain Names”) are registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on March 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint in English on March 23, 2020.

On March 20, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 23, 2020, Complainants confirmed their request that English be the language of the proceeding. Respondent did not comment.

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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 20, 2020.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 11, 2020. 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

Sanofi is a multinational pharmaceutical company headquartered in Paris, France. Sanofi engages in Research and Development (R&D), manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication. Sanofi has an R&D investment of EUR 5.9 billion in 2018, and is settled in more than 100 countries over 5 continents, employing 100,000 people. Sanofi offers a wide range of patented prescription drugs to treat patients with diseases and has known positions in major therapeutic areas.

Sanofi Biotechnology, a subsidiary of Sanofi, has developed and sells a drug worldwide under the trademark DUPIXENT, for the treatment of adult patients with inadequately controlled atopic dermatitis. Complainant Sanofi Biotechnology is a subsidiary of Sanofi (together, “Complainants”). Complainants hold numerous trademarks for pharmaceutical preparations and products under the mark DUPIXENT, including, among others, International Trademark No. 1278059 (registered February 11, 2016); European Union Trade Mark No. 014683916 (registered January 28, 2016); Hong Kong, China, Trademark No. 303569996 (registered October 19, 2015); and United States of America Trademark No. 4978127 (registered June 14, 2016).

Complainant is also the owner of the following domain names corresponding to the DUPIXENT mark:

<dupixent.com> registered on May 29, 2015; <dupixent.ca> registered on July 21, 2016.

Complainants use the domain names and associated websites to inform customers about their DUPIXENT mark and pharmaceutical preparations and products. These trademark and domain name registrations were obtained prior to Respondent’s registration of the Domain Names.

From the record, the Domain Names were registered by Respondent all on the same day, on February 13, 2020. Respondent has no affiliation with Complainants and Complainants have not authorized any activities by Respondent, nor any use of their trademarks thereby. Respondent is using the websites associated with the Domain Names to provide sponsored links to commercial websites that offer services that are in competition with Complainants’ activities.

5. Parties’ Contentions

A. Complainant

Complainants contend that (i) the Domain Names are identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using the Domain Names in bad faith.

In particular, Complainants contend that they have trademark registrations for DUPIXENT and have rights in domain names incorporating DUPIXENT. Complainants contend that Respondent has merely used the Domain Names to set up parking websites meant to lure in customers looking for Complainants and their well-known pharmaceutical preparations and products, but instead are diverted to other websites offering various kinds of services in competition with Complainants’ activities. Complainants note that they have no affiliation with Respondent, and that Respondent has no rights or legitimate interests in the registration or use of the Domain Names. Rather, Complainants contend that Respondent has acted in bad faith in setting up the Domain Names and websites, when Respondent clearly knew of Complainants’ rights.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

6.1. Preliminary Procedural Issue – Language of the Proceeding

The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.

In its communication to the Center on March 23, 2020, Complainants noted that the language of the proceeding should be English. Complainants mainly contend that the Domain Names are formed by Latin characters rather than the Chinese script; If the documents have to be submitted in Chinese, Complainants would have to incur substantial expenses for translation.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including the Parties’ ability to understand and use the proposed language, time and costs. In particular, the Panel notes that Complainants provided evidence that the Domain Names resolved to a webpage in English, diverting consumers to other sponsored websites.

The Panel accepts Complainants’ submissions regarding the language of the proceeding. Complainants may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to respond to the Complaint and comment on the language of the proceeding.

Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names were registered and are 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainants provided evidence of their rights in the DUPIXENT marks, which have been used since at least as early as 2015, well before Respondent registered the Domain Names on February 13, 2020. With Complainants’ rights in the DUPIXENT trademarks established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the generic Top-Level Domain in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainants’ mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.

Here, the Domain Names are confusingly similar to Complainants’ DUPIXENT trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is strongly imitated in the Domain Names. The voluntary omission of the letters “e” or “p” or “i” in relation to the DUPIXENT mark in each of the respective Domain Names, <dupixnt.com>, <duixent.com>, and <dupxent.com> or the substitution of the letter “n” by the letter “m” in the Domain Name <dupixemt.com> does not change the overall impression produced by each of the Domain Names and is insufficient to avoid confusion between the Complainants’ trademarks and the Domain Names registered by Respondent.

Thus, Complainants have 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 its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainants and the DUPIXENT marks, and does not have any rights or legitimate interests in the Domain Names. Complainants have no relationship with Respondent. They have never licensed or otherwise authorized Respondent to use their trademarks or to register any domain name including Complainants’ DUPIXENT trademarks or any modification thereof.

In addition, Respondent has not used the Domain Names 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 Domain Names to redirect Internet users via sponsored links, to websites that are unaffiliated with Complainants or Complainants’ services. Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interest in the Domain Names, which Respondent has not rebutted.

Finally, Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainants’ assertion that the Respondent lacks rights or legitimate interests in the Domain Names.

Complainants have provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainants have met their 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 Domain Names 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 Complainants provided ample evidence to show that registration and use of the DUPIXENT marks long predates the registration of the Domain Names by Respondent. In addition, the DUPIXENT marks are owned by Complainants, who have a worldwide reputation. Therefore, Respondent was likely aware of the DUPIXENT marks when he registered the Domain Names, or knew or should have known that the Domain Names were confusingly similar to Complainants’ mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Under the circumstances, Respondent’s registration of the Domain Names strongly imitating Complainants’ well known DUPIXENT trademark, also suggests that Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the DUPIXENT mark, in an effort to opportunistically capitalize on the registration and use of the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875.

Accordingly, the Panel finds that Respondent has registered and used the Domain Names in bad faith and Complainants succeed under the third element of paragraph 4(b) 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 Domain Names <duixent.com>, <dupixemt.com>, <dupixnt.com>, and <dupxent.com> be transferred to Complainants.

Kimberley Chen Nobles
Sole Panelist
Date: May 25, 2020