WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BIOFARMA SAS v. 王晓文 and 程飞

Case No. DCN2021-0020

1. The Parties

The Complainant is BIOFARMA SAS, France, represented by IP Twins, France.

The Respondents are 王晓文 and 程飞, China.

2. The Domain Names and Registrar

The disputed domain names <tibsovo.cn> and <tibsovo.com.cn> are registered with 易介集团北京有限公司 (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the complete contact details. The Center sent an email communication to the Complainant on July 27, 2021 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 19, 2021. In accordance with the Rules, Article 17 and 49, the due date for Response was September 6, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 20, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on September 28, 2021. 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, Article 29.

4. Factual Background

The Complainant is part of the Servier Group: one of the largest French pharmaceutical group on an independent level and the second largest French pharmaceutical group in the world. The group is active in 150 countries and employs more than 22,000 people throughout the world. 100 million patients are treated daily with Servier medicinal products and generics.

TIBSOVO designates a medicine used to treat Acute Myeloid Leukemia (AML). In 2021, the Complainant acquired the TIBSOVO brand and the corresponding Trade Mark registrations from a United States of America based Biopharmaceutical company Agios Pharmaceuticals, Inc. In doing so, the Complainant was also granted the right to defend its newly acquired Trade Mark rights.

The Complainant is the registered owner of various Trade Marks for TIBSOVO such as:

European Trademark Registration TIBSOVO number 015977093, registered on the February 14, 2017;

International Trademark Registration TIBSOVO (word & device) number 1396761, registered on the February 21, 2018, notably designating the India, Republic of Korea, Japan and Singapore;

Chinese Trademark Registration TIBSOVO number 29313105, registered on the February 14, 2019; and

Chinese Trademark Registration TIBSOVO number 22179441, registered on the January 21, 2018.

The Complainant also owns numerous domain names such as: <tibsovo.com>, <tibsovo.net>, <tibsovo.org>, <tibsovo.fr>, <tibsovo.co.uk>, <tibsovo.de>, <tibsovo.es>, <tibsovo.ca>, and <tibsovo.it>.

The Respondents are individuals based in China, with 王晓文 being the registrant of <tibsovo.cn> and 程飞 being the registrant of <tibsovo.com.cn>. The two disputed domain names were registered on the same day, at the same time and share the same registrar as well as the same Nameservers and contact emails.

The disputed domain names were registered on July 24, 2018, and redirect towards error pages. In Parties’ correspondences in English, an offer was made to sell the disputed domain name <tibsovo.cn> for EUR 7,300.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names should be considered under common control. Because it is extremely unlikely that two different persons that do not know each other had the idea of registering domain names relating the term “tibsovo” on the same day, at the same time, with the same registrar. Therefore, it is far more likely that either a same person registered the disputed domain name under different identities to cover his or her tracks.

The Complainant contends the disputed domain names reproduce identically the TIBSOVO Trade Marks of the Complainant while the extensions “.cn” and “.com.cn” should be disregarded when comparing the disputed domain names and the prior Trade Marks because they have a simple technical purpose. The Complainant also contends that the extensions do nothing to minimize the confusing similarity between the disputed domain names and the prior Trade Marks.

The Complainant contends the Respondents have no rights and legitimate interests in the disputed domain names on the bases: (i) the Respondents are not known by the disputed domain names, the name “tibsovo”; (ii) the Respondents does not hold any Trade Mark in the terms “tibsovo” in China or anywhere else; (iii) the Respondents’ show no intent to use the disputed domain names in connection with a bona fide offering of goods or services; (iv) the Respondents are in no way related to the Complainant; (v) the Respondents’ primary intent for the disputed domain names appear to be their sale.

The Complainant further contends the disputed domain names were registered and used in bad faith. In relation to registration in bad faith, the bases are: (i) the Complainant’s Trade Marks and disputed domain names were already registered at the time of registration for the disputed domain names; (ii) “tibsovo” is a fanciful, arbitrary word that does not have a generic meaning in English or Chinese; (iii) the Respondents should have known the prior rights of the Complainants at the time of registrations of the disputed domain names; (iv) the Respondents engaged in a pattern of behavior registering domain names identical or similar to third party Trade Marks. In relation to use of disputed domain names in bad faith, the bases are: (i) the Respondents has registered the disputed domain names and passively holds them in order to prevent the Complainant from reflecting its Trade Marks in the corresponding domain name; (ii) the Respondents have not responded to the Complainant’s Cease & Desis letter; (iii) the Respondent offered the disputed domain names for sale; (iv) the Respondents’ passive holding of the disputed domain names amount to use in bad faith.

B. Respondents

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

6. Discussion and Findings

6.1. Consolidation of proceedings

The Complaint requests that under Article 11 of the Policy the proceedings be consolidated on the basis the disputed domain names were registered on the same day, at the same time and share the same registrar as well as the same Nameservers and the prefix of the contact emails. The Complainant contends that it is likely that the same person registered the disputed domain names under different identities to hide the common ownership.

The Panel is given a wide discretion under Article 11 to determine whether to consolidate proceedings. For the reasons submitted by the Complainant the Panel accepts the proceedings to be consolidated.

6.2. Language of Proceeding

According to Article 6 of the Policy and Article 8 of the Rules, the language of the domain name dispute resolution proceedings shall be Chinese, unless otherwise agreed by the parties or determined by the Panel. In accordance with the Policy and Rules, the Panel has the authority to determine the language of the proceedings based on the circumstances of the case.

Based on the given evidence, there is no agreement between the Complainant and the Respondents regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding principally on the following grounds:

(a) The Complainant and its attorneys are established in France and are in no position to conduct proceedings in Chinese without incurring substantial expenses and delay, whereas they are able to communicate in English.

(b) Previous proceedings on “.cn” domain names were conducted in English.

(c) Email exchanges between Complainant and the Respondents in relation to <tibsovo.cn> indicates they have a working knowledge of the English language.

Having reviewed the Complainant’s submission and that the Respondents have chosen not to respond to the Complainant’s request for the proceedings to be conducted in English. The email correspondence in relation to <tibsovo.cn> shows the Respondent in that case (who the Panel has found is related to the other Respondent) understands English. In accordance with Article 31 of the Rules, the Panel hereby determines that the language of the proceeding shall be English.

6.3. Substantive Issues

Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled:

i. the disputed domain name is identical with or confusingly similar to the Complainant's name or mark in which the Complainant has civil rights or interests;

ii. the disputed domain name holder has no right or legitimate interests in respect of the disputed domain name or major part of the disputed domain name;

iii. the disputed domain name holder has registered or has been using the disputed domain name in bad faith.

Article 7 of the Policy states that the complainant and the respondent shall bear the burden of proof for their own claims.

A. Identical or Confusingly Similar to the Complainant’s name or mark in which the Complainant has civil rights or interests

The Panel finds that the disputed domain names are identical to the Complainant’s Trade Marks. The Complainant has established its right to the TIBSOVO Trade Mark by submitting evidence of its registration in China as well as in a number of other countries. The disputed domain names are made up of the Complainant’s TIBSOVO trademark in full and the country-code Top-Level Domain (“ccTLD”) “.cn” which represents China.

The ccTLD “.cn” and the country code Second Level Domain (“ccSLD”) “.com.cn” are typically disregarded under the first element confusing similarity test.

The Complainant has therefore satisfied the first element under Article 8 of the Policy.

B. Rights or Legitimate Interests

The Respondents have not asserted any rights or legitimate interests in relation to the disputed domain names.

The Complainant has asserted that the Respondents have no business with and is in no way affiliated with the Complainant. The Respondents are not authorised nor licensed to use the Complainant’s TIBSOVO Trade Mark or to apply for registration of the disputed domain names.

The Respondents have not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests, which have not been rebutted by the Respondents. Accordingly, the Respondents have no rights or legitimate interests in regard to the disputed domain names.

The Complainant has therefore satisfied the second element under Article 8 of the Policy.

C. Registered or Used in Bad Faith

Based on the given evidence, the disputed domain names were registered and are being used in bad faith.

Article 9 of the Policy states that any of the following circumstances may be the evidence of the registration and use of a domain name in bad faith:

(a) The purpose for registering or acquiring the domain name is to sell, rent or otherwise transfer the domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits.

(b) The disputed domain name holder, on many occasions, registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names.

(c) The disputed domain name holder has registered or acquired the domain name for the purpose of damaging the Complainant's reputation, disrupting the Complainant's normal business or creating confusion with the Complainant’s name or mark so as to mislead the public.

(d) Other circumstances which may prove the bad faith.

The Panel is satisfied that the Respondents were aware of the Complainant and its TIBSOVO Trade Mark when they registered the disputed domain names. TIBSOVO is a fanciful, arbitrary word that does not have a generic meaning in Chinese or English. The disputed domain names have not been used but has been put up for sale by way of email correspondence for a price that would result in unjustified benefits. The offer to sell one of the disputed domain names for EUR 7,300 is further evidence of registration or use in bad faith.

For the above reasons, the Panel finds that the disputed domain names were registered and used in bad faith.

The Complainant has therefore satisfied the third element under Article 8 of the Policy.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain names, <tibsovo.cn> and <tibsovo.com.cn>, be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: October 17, 2021