WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Liu Huaxiang（刘华祥）
Case No. D2020-0617
1. The Parties
Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Liu Huaxiang（刘华祥), China.
2. The Domain Name and Registrar
The disputed domain name <sanofivaccine.com> (the “Domain Name”) 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 12, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on March 20, 2020.
On March 19, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 20, 2020, Complainant requested 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 28, 2020.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 1, 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
Complainant, Sanofi, is a multinational pharmaceutical company headquartered in Paris, France. Complainant 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. Complainant has a R&D investment of EUR five billion in 2018, and its vaccine division, Sanofi Pasteur, produces more than one billion doses of vaccines each year, offering immunization to more than 500 million people worldwide. Sanofi Pasteur employs almost 15,000 people worldwide and generated ERU 5.118 million in revenue in 2018. It has 12 production and/or R&D sites located worldwide, including in China, where Respondent resides.
Complainant has rights in trademark registrations for the SANOFI mark in many jurisdictions around the world, including the European Union and France specifically, as well as the United States of America, and a number of international registrations with effect in a number of jurisdictions around the world. Registrations for the SANOFI mark date back to at least as early as 1988. These include:
- French trademark Registration No. 3831592, registered on May 16, 2011;
- French trademark Registration No. 96655339, registered on December 11, 1996;
- French trademark Registration No. 1482708, registered on August 11, 1988;
- European Union Trade Mark Registration Nos. 000596023, registered on February 1, 1999 and 004182325, registered on February 9, 2006;
- International trademark Registration No. 591490, registered on September 25, 1992, designating multiple jurisdictions, including China.
Complainant and/or its related companies owns various domain names corresponding to the SANOFI mark, including <sanofi.com>, registered in 1995. These include:
(i) <sanofi.com> registered on October 13, 1995;
(ii) <sanofi.eu> registered on March 12, 2006;
(iii) <sanofi.fr> registered on October 10, 2006;
(iv) <sanofi.us> registered on May 16, 2002;
(v) <sanofi.ca> registered on January 5, 2004;
(vi) <sanofi.biz> registered on November 19, 2001;
(vii) <sanofi.info> registered on August 24, 2001;
(viii) <sanofi.org> registered on July 12, 2001;
(ix) <sanofi.mobi> registered on June 20, 2006;
(x) <sanofi.tel> registered on March 17, 2011; and
(xi) <sanofi.cn> registered on April 28, 2004.
These trademark and domain name registrations were obtained prior to Respondent’s registration of the Domain Name. The <sanofi.com> domain name, as well as other domain names composed of the SANOFI mark at the second level, resolve to the website(s) operated by Complainant and/or its related companies that relates to its pharmaceuticals business.
The Domain Name <sanofivaccine.com> was registered by Respondent on March 3, 2020, and resolved to a parking webpage offering the Domain Name for sale. At the time of the Decision, the Domain Name does not resolve to any active website.
5. Parties’ Contentions
Complainant asserts that the Domain Name reflects the SANOFI trademark, which is distinctive, as it has no other meaning than as Complainant’s trademark. Complainant asserts that it advertises and promotes the company and its SANOFI trademarks in countries all over the world, including China, where Respondent is located. It also cites numerous prior UDRP decisions finding that Complainant’s SANOFI mark is famous or well known. Complainant states that the Domain Name is confusingly similar to its SANOFI trademark because it incorporates the SANOFI trademark as the dominant part of the Domain Name, combined with a descriptive term “vaccine” and the generic Top-Level Domain (“gTLD”) “.com”. According to Complainant, where a domain name wholly incorporates a Complainant’s distinctive trademarks in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, of a descriptive term. Complainant asserts that the term “vaccine” in the Domain Name serves to enhance confusion because this term directly relates to Complainant’s vaccine business.
Complainant also asserts that Respondent has no rights or legitimate interests in the Domain Name, given that: Complainant has never licensed use of its mark to Respondent, there is no relationship between Complainant and Respondent and Respondent incorporated Complainant’s SANOFI trademark into the Domain Name without authorization, and Respondent is not making a legitimate noncommercial or fair use of the Domain Name nor is Respondent using the Domain Name in connection with a bona fide offering of goods or services. Complainant asserts that the Domain Name leads to a parking website indicating that the Domain Name is for sale.
Complainant asserts that the Domain Name has been registered and used in bad faith. Complainant asserts that given the famous and distinctive nature of the mark SANOFI, Respondent is likely to have had, at least, constructive notice, if not actual notice, as to the existence of Complainant’s marks at the time he registered the Domain Name and that this suggests that Respondent acted with opportunistic bad faith in registering the Domain Name in order to make illegitimate use of it. Complainant asserts that the Domain Name has been registered for the purpose of attracting Internet users to Respondent’s website by creating a likelihood of confusion – or at least an impression of association – between SANOFI trademarks and the Domain Name. According to Complainant, the Domain Name directs Internet users to an inactive parking website, which constitutes passive holding of the Domain Name. According to Complainant, passive holding under the appropriate circumstances falls within the concept of the Domain Name being used in bad faith.
Complainant also asserts that the lack of use of the Domain Name particularly close to those used by Complainant, is likely to cause irreparable prejudice to Complainant’s general goodwill because Internet users could be led to believe that Complainant is not on the Internet or that Complainant is out of business.
Accordingly, Complainant requests that the Domain Name be transferred to Complainant.
Respondent did not reply to Complainant’s 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.
Complainant submits in its communication to the Center on March 20, 2020, that the language of the proceeding should be English. Complainant mainly contends that the Domain Name is formed by Latin characters rather than the Chinese script; the additional term in the Domain Name “vaccine” is an English term; if the documents have to be submitted in Chinese, Complainant 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 Complainant provided evidence that the Domain Name resolved to a webpage in English and Chinese, actively offering for sale the Domain Name, with Respondent’s contact details.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. Complainant 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 Name 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 Domain Name; and
(iii) the Domain Name was registered and is 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 3.0, section 1.2.1. Complainant provided evidence of its rights in the SANOFI marks, which have been used since at least as early as 1988, well before Respondent registered the Domain Name on March 3, 2020. With Complainant’s rights in the SANOFI trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the gTLD in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc/Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s SANOFI trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is fully incorporated into the Domain Name at the second level, and the addition of the term “vaccine” after the mark does nothing to prevent a finding of confusing similarity. See, e.g. Comerica Bank v. Kimberly Barnes, WIPO Case No. D2014-1052.
Thus, Complainant has 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 Complainant and the SANOFI marks, and does not have any rights or legitimate interests in the Domain Name. Respondent has not used the Domain Name 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 Name to redirect Internet users to a parking page offering the Domain Name for sale.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its 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 Name 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 Complainant provided ample evidence to show that registration and use of the SANOFI marks long predates the registration of the Domain Name by Respondent. Therefore, Respondent was likely aware of the SANOFI marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s 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. Respondent’s use of the Domain Name – registered recently, on March 3, 2020, at a time when there is an increasing call for vaccine due to a widespread coronavirus pandemic – led to a parking website offering the Domain Name for sale.
Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s well-known SANOFI trademark, the related industry term “vaccine”, which also refers to the well-known Sanofi vaccine division, also suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the SANOFI mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name. 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 Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sanofivaccine.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: May 15, 2020