WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Liu Huaxiang (刘华祥）
Case No. D2020-0746
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Liu Huaxiang (刘华祥), China.
2. The Domain Name and Registrar
The disputed domain name <sanofivaccines.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 March 27, 2020. On March 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2020, 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 April 6, 2020 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 April 7, 2020.
On April 6, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 7, 2020, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent, in English and Chinese, of the Complaint, and the proceedings commenced on April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on May 19, 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
The Complainant, headquartered in France, is a large multinational pharmaceutical company. The Complainant owns the French trademark registration over SANOFI & device (number 92412574, registered on March 26, 1992) and a number of other registrations over SANOFI and SANOFI & device in France and the European Union. Through the International trademark registration system, the Complainant has acquired the trademark registrations over SANOFI in China and many other countries.
The disputed domain name <sanofivaccines.com> was registered on March 3, 2020. According to the Complaint, the disputed domain name resolves to a website indicating that the disputed domain name is for sale.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark SANOFI.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Rules, paragraph 11(a), 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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness and equal treatment to the parties as well as expedition for domain name dispute resolution. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the panel for the proceeding should be non‑prejudicial to either party to present the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004) (See section 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Registration Agreement for the disputed domain name is in Chinese. The Complainant requests the language of the proceeding be English. The Respondent does not make any submission in response to the Complainant’s request.
The Panel notes that the website to which the disputed domain name <sanofivaccines.com> resolves is in English only, which shows that the Respondent has sufficient capacity to use English as a working language. On the other hand, the Complainant is not in a position to conduct this proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
The Panel finds that making English as the language of the proceeding won’t affect the Respondent’s ability to present its case and can effectively avoid the considerable delays and expenses by requiring the Complaint be translated into Chinese.
In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case.
B. Identical or Confusingly Similar
The Panel notes that the Complainant has proved its trademark rights over SANOFI and SANOFI & device in France, China, and many other countries or regions by providing the trademark registration certificates issued by the competent authorities.
In assessing the degree of similarity between the Complainant’s marks and the disputed domain name, the Panel notes that apart from the generic Top-Level Domain “.com”, the disputed domain name obviously consists of “sanofi” plus “vaccines”.
It has been established by prior UDRP decisions made under the Policy that addition of a generic word to a complainant’s mark does not preclude a finding of confusing similarity (see Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367).
In the present case, The Panel finds that the disputed domain name is not sufficiently distinctive from the Complainant’s marks of SANOFI by adding the term of “vaccines” to “sanofi”. The disputed domain name therefore is confusingly similar to the marks in which the Complainant has rights. The Complainant successfully proves the first element required by paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent does not provide any information to the Panel of any rights or legitimate interests he/she may have in the disputed domain name.
It is apparent from the Complaint that there was no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel notes that long before the Respondent registered the disputed domain name, the Complainant has acquired the trademark rights over SANOFI & device in China where the Respondent resides. Given that the Complainant’s distinctive mark SANOFI has no particular meaning and has acquired worldwide reputation especially on vaccines and other pharmaceutical products, there is no likelihood that the Respondent coincidentally registered the disputed domain name that consists of “sanofi” and “vaccines”.
According to the evidence provided by the Complainant, the Respondent makes the disputed domain name resolve to a website without no content other than the offering to sell the disputed domain name at the price of USD 5,000. In the absence of any rebuttal by the Respondent, the Panel finds that the use of the disputed domain name indicates that the Respondent primarily registered the disputed domain name for the purpose of selling it to the Complainant or anyone else for exorbitant prices, which constitutes the evidence of bad faith under the paragraph 4(b)(i) of the Policy.
Through examining the foregoing evidence, the Panel finds that it is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent’s malicious attempt to profit from public interest in potential coronavirus vaccines in the midst of a global pandemic constitutes further evidence of bad faith.
In sum, the Complainant successfully proves the third element required by paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sanofivaccines.com> be transferred to the Complainant.
Dr. Hong Xue
Date: June 2, 2020