WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Laboratoires Servier v. Ping Chen, Chen Ping
Case No. D2016-2252
1. The Parties
Complainant is Les Laboratoires Servier of Suresnes Cedex, France, represented by IP Twins S.A.S., France.
Respondent is Ping Chen, Chen Ping of China1.
2. The Domain Name and Registrar
The disputed domain name <nihonservier.com> is registered with West263 International Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2016. On November 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On November 7, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 7, 2016, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.
The Center verified that 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 of the Complaint, and the proceedings commenced on November 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 7, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on December 14, 2016. 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
A. Complainant
Complainant, Les Laboratoires Servier, is a company incorporated in Suresnes Cedex, France. It is the leading French independent pharmaceutical company and the second largest French pharmaceutical company worldwide. It has branches in 140 countries, achieving 82 percent of its sales outside France. The annual sales of its ACE inhibitor, Coversyl (perindopril), in 2006 and 2007 exceeded USD 1 billion. In 2015, it generated a turnover of EUR 3.9 billion.
Complainant has exclusive rights in SERVIER and SERVIER relatedmarks (hereinafter "SERVIER marks"). Complainant is the exclusive owner of several SERVIER marks worldwide, including an international trademark registration for LES LABORATOIRES SERVIER registered since October 22, 1965 (international registration number 304005); an international trademark registration for SERVIER registered since September 30, 1986 (international registration number 506404); a Japanese trademark NIHON SERVIER registered since August 15, 1997 (registration number 4044712) (Annex 8 to the Complaint). Complainant also owns and operates several domain names which contain the SERVIER mark in entirety, such as <servier.com> registered on December 29, 1998; and <nihonservier.co.jp> registered on December 19, 2005 (Annex 9 to the Complaint).
B. Respondent
Respondent is Ping Chen, Chen Ping of China. The disputed domain name <nihonservier.com> was registered on August 31, 2015, long after the SERVIER marks were registered.
5. Parties' Contentions
A. Complainant
Complainant contends that the disputed domain name is highly similar to the SERVIER marks and likely to create confusion in the mind of the general public. The disputed domain name fully incorporates the Complainant's prior trademarks SERVIER and NIHON SERVIER.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name <nihonservier.com> be transferred to it.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) Complainant has undertaken a reverse WhoIs search for domain names owned by Respondent and found several domain names containing English words, such as <dukejournals.com>, <finetech-nippon.com>, <jasonjetsets.com>, <kaigaiadvisers.com>, <koizumistudio.com>, <nihonbinary.com>, <wallet-shoppu.com>, <yahoomyworld.com>, and <angie-life.com> (Annex 4 to the Complaint). They all contain English words, and this indicates that Respondent is in position to understand the English language. It would not be unfair to Respondent to conduct these proceedings in English.
b) Complainant has sent a cease-and-desist letter in English on October 14, 2016, along with an automated translation in Chinese (Annex 5 to the Complaint). As of the day of filing of the present Complaint, Complainant has received no response whatsoever to that letter, despite several reminders. It may indicate that Respondent has no particular interest in the disputed domain name and that the fact that the proceedings are undertaken in English must not be seen as detrimental to Respondent.
c) Complainant is not able to communicate in Chinese. Being a French entity, 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. English language is not the native language of Complainant or its representative. Therefore it would not give him unfair advantage over Respondent.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows 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 to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states:
"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement" (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from France, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters and words "nihon" and "servier" (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <nihonservier.com> is registered in Latin characters, rather than Chinese script; (b) The websites resolved from the disputed domain name is in Japanese and English (it contains English words, such as "sale", "outlet", and "brand store"), and Respondent was apparently doing business in Japanese through the website (Annex 11 to the Complaint); (c) the websites appear to have been directed to users worldwide (particularly Japanese speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant's request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the SERVIER and NIHON SERVIER marks acquired through registration. The SERVIER marks have been registered internationally since 1986, and the NIHON SERVIER mark has been registered in Japan since 1997.
The disputed domain name <nihonservier.com> comprises the SERVIER mark, and, particularly NIHON SERVIER mark in their entirety. The disputed domain name only differs from Complainant's trademarks by the generic Top-Level Domain ("gTLD") suffix ".com" to the NIHON SERVIER marks. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademarks and the disputed domain name. WIPO Overview 2.0 states:
"The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark". (paragraph 1.2).
Thus, the Panel finds that the gTLD suffix ".com" is not sufficient to negate the confusing similarity between the disputed domain name and the NIHON SERVIER marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant's trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
According to the Complaint, Complainant is a leading French independent pharmaceutical company and the second largest French pharmaceutical company worldwide. It has branches in 140 countries, achieving 82 percent of its sales outside France. In 2015, it generated a turnover of EUR 3.9 billion. Complainant has rights in the SERVIER marks since 1986 and NIHON SERVIER mark since 1997, which long precede Respondent's registration of the disputed domain name (2015).
Moreover, Respondent is not an authorized dealer of SERVIER branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "nihon servier" in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SERVIER marks or to apply for or use any domain name incorporating the SERVIER marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <nihonservier.com> in 2015, long after the SERVIER marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant's SERVIER marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent is using email addresses in @nihonservier.com (such as "sale@nihonservier.com" and "enjoy@nihonservier.com"), which are displayed on several websites offering to purchase goods which are not related to the Complainant's activity (see Annex 11 the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the SERVIER marks with regard to its products and services. Complainant has registered its SERVIER marks since 1965. It is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain name (in 2015). The Panel therefore finds that the SERVIER Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.
Moreover, Respondent has chosen not to respond to Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
b) Used in Bad Faith
Complainant also has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites".
To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the SERVIER marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the SERVIER marks. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
Moreover, at the time this decision is rendered, the disputed domain name is currently inactive. In terms of inactive domain name, the WIPO Overview 2.0 provides: "with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith" (paragraph 3.2., WIPO Overview 2.0).
The WIPO Overview 2.0 further states: "The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa."
Based on the information provided by Complainant, Complainant is the leading French independent pharmaceutical company, and the second largest French pharmaceutical company worldwide. It has branches in 140 countries, achieving 82 percent of its sales outside France. The annual sales of its ACE inhibitor, Coversyl (perindopril), in 2006 and 2007 exceeded USD 1 billion. In 2015, it generated a turnover of EUR 3.9 billion (as introduced above). As such, Complainant's SERVIER Marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that subsequent inactive use of the disputed domain name <nihonservier.com> by Respondent is in bad faith also.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant's well-known trademarks, intended to ride on the goodwill of Complainant's trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves and the offer to sell the disputed domain name to Complainant are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
7. Decision
For all 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 <nihonservier.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: December 29, 2016
1 The Panel notes that the address associated with Respondent appears to be a fake address, i.e., indicating "Xi Zu" and "MO" as the city and province.