The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Wanzhijun, of Jilin, China.
The disputed domain name <sanof-aventis.com> (“Disputed Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 16, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 19, 2018, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent of the Complaint, in English and Chinese, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.
The Center appointed Kar Liang Soh as the sole panelist in this matter on November 21, 2018. 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.
The Complainant is a leading multinational pharmaceutical company based in France. It engages in research and development, manufacturing and marketing of numerous pharmaceutical products. The Complainant was founded in 2004 as “Sanofi-Aventis” and changed its name to “Sanofi” in 2011. It is represented in more than 100 countries (including in China) worldwide employing 110,000 people. The Complainant is now a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA) and has consolidated net sales of over EUR 30 billion in each of the past 3 years.
The Complainant owns various registrations for the trademark SANOFI-AVENTIS, including:
|
Jurisdiction |
Trademark No. |
Class(es) |
Registration Date |
|
France |
3288019 |
1,3,5,9,10,16,38,41,42,44 |
April 26, 2004 |
|
International Registration |
839358 |
1,3,5,9,10,16,38,41,42,44 |
October 1, 2004 |
|
European Union Trademark, (“EUTM”) |
004025318 |
1,3,5,9,10,16,38,41,42,44 |
November 3, 2005 |
In particular, International Registration No. 839358 designates China.
The Complainant also holds multiple domain name registrations containing “sanofi-aventis”, including: <sanofi-aventis.com>, <sanofi-aventis.net> and <sanofi-aventis.org>, which were registered in 2004 and are still active.
The Disputed Domain Name <sanof-aventis.com> was registered by the Respondent on August 14, 2018. It does not resolve to an active website. The address provided by the Respondent in the WhoIs is inconsistent. The Whois record states the city as “Beijing” but indicates the state/province as “Jilin”.
On September 14, 2018, the Complainant sent a cease-and-desist letter to the Respondent by way of email, requesting it cease the use of the Disputed Domain Name and transfer it to the Complainant on the basis of the Complainant’s SANOFI-AVENTIS trademark. The Respondent failed to respond to the letter.
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s SANOFI-AVENTIS trademark. The trademark is highly distinctive and the deletion of the letter “i” in the Disputed Domain Name, along with as the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”, is insufficient to avoid a likelihood of confusion.
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or authorized the Respondent to use the Complainant’s SANOFI-AVENTIS trademark. There is no relationship between the Complainant and the Respondent. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
3) The Disputed Domain Name was registered and is being used in bad faith. The distinctive nature of the Complainant’s SANOFI-AVENTIS trademark suggests the Respondent is aware of the Complainant’s business and trademark. The Respondent’s inactive use of the Disputed Domain Name amounts to passive holding.
The Respondent did not reply to the Complainant’s contentions.
The language of the registration agreement is Chinese. Therefore, the default language of the proceeding should be Chinese. However, paragraph 11(a) of the Rules provides that the Panel has authority to determine otherwise, having regard to the circumstance of the administrative proceeding. In doing so, the Panel is obliged to ensure that Parties are treated with equality and that the administrative proceeding takes place with due expedition.
In the present case, the Complainant has requested for the language of the proceeding to be in English. The Panel takes the following into consideration in deciding that English should be the language of the proceeding:
a) The Respondent has not objected to the Complainant’s language request;
b) The Respondent has chosen not to participate in the proceeding despite being informed of the Complaint in Chinese and English;
c) The Panel is conversant in both English and Chinese and is able to decide on documents submitted in English and/or Chinese; and
d) Requiring the Complainant to translate its submissions to Chinese would cause unnecessary delay to the proceedings.
Pursuant to paragraph 4(a) of the Policy, the Complainant has to prove each of the following three elements in order to succeed in this proceeding:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The 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.
The Panel finds that the Complainant has trademark rights in the SANOFI-AVENTIS mark, owing to its registrations worldwide.
When comparing a disputed domain name to a mark in question, it is well established that gTLDs may be disregarded. See, e.g., LEGO Juris A/S v. Wang Keke, WIPO Case No. D2014-2003. As the “.com” suffix of the Disputed Domain Name is merely a technical requirement for the operation of domain names, it will therefore not be considered on the issue of confusing similarity.
The Panel notes that the Disputed Domain Name differs from the SANOFI-AVENTIS mark by the absence of the letter “i” in the word “sanofi”. However, the Panel finds that the omission of the letter “i” to be a miniscule difference both visually and conceptually between the Disputed Domain Name and the trademark. It is also widely accepted by prior UDRP panels that the omission of a single letter may not prevent a finding of confusing similarity under the first element. See, e.g., Jackson National Life Insurance Company v. Transure Enterprise Ltd, WIPO Case No. D2012-0335. Moreover, this omission does not alter significantly the phonetic similarities between the Disputed Domain Name and the trademark. Essentially, the identity of the Complainant’s trademark is still preserved in the Disputed Domain Name. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the SANOFI-AVENTIS mark and the first element of paragraph 4(a) of the Policy is satisfied.
Although the Complainant bears an overall burden to prove this element, the Complainant need only to show a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Once this is made out, the burden of proof shifts to the Respondent to rebut such presumptions by presenting evidence of its rights or legitimate interests.
In the present case, the Complainant has provided evidence of its trademark registrations bearing the SANOFI-AVENTIS mark. The Complainant also confirmed that it had no business relationship with the Respondent and has neither licensed nor authorized the Respondent to use the aforementioned mark. As the Respondent has not filed any response in rebutting the Complainant’s prima facie position, there is no evidence suggesting that the Respondent is commonly known by the Disputed Domain Name, or that it owns any rights or legitimate interests in the Disputed Domain Name.
The Complainant further claims that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Based on the evidence in the case file, the website resolved from the Disputed Domain Name leads to an inactive page. While this does not automatically lead to a conclusion that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services, the Respondent has not demonstrated any evidence to show otherwise. Therefore, the Panel holds that the second element of Paragraph 4(a) of the Policy is satisfied.
The term “sanofi-aventis” is highly distinctive as it is neither a dictionary word nor has any meaning. Moreover, the Complainant’s trademark registration designating the Respondent’s home country predates the Respondent’s registration of the Disputed Domain Name. In addition, the Complainant has registered various domain names bearing the trademark across multiple gTLDs. Considering the established reputation of the Complainant’s trademark and that the Disputed Domain Name is so obviously connected with the Complainant, the Panel finds the Respondent’s actions to constitute “opportunistic bad faith”. (See, e.g., Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798). The Panel finds it inconceivable that the Respondent could not have known of the Complainant’s highly distinctive SANOFI-AVENTIS mark and concludes that the Disputed Domain Name is registered in bad faith. (See, e.g., Marina Yachting S.p.A, v. Bonaparte Hotel Group, WIPO Case No. D2008-0900).
Further, it is well established that non-use of a domain name would not prevent a finding of bad faith use. Indeed, the doctrine of passive holding falls within the concept of a domain name being used in bad faith. (See, e.g, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present case, there is no active website resolved from the Disputed Domain Name. Therefore, in finding that the Respondent’s passive holding of the Disputed Domain Name amounts to use in bad faith, the Panel takes the following into consideration:
(i) The Complainant’s SANOFI-AVENTIS mark has a strong reputation, including in the Respondent’s home country;
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Disputed Domain Name;
(iii) The contact details provided by the Respondent in the WhoIs are patently false. The Respondent indicated its address as “Beijing, Jilin”, which the Panel notes to be invalid;
(iv) The Center’s attempt to deliver the Complaint to the Respondent resulted in delivery failure; and
(v) The Respondent did not respond to a cease-and-desist letter sent by the Complainant prior to the Complaint.
Additionally, paragraph 2 of the Policy requires registrants to act honestly and provide accurate particulars when registering a domain name (See, e.g., Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Guo Xiaobao / Guoxiaobao, WIPO Case No. D2014-1456). As the address provided by the Respondent is inaccurate, the courier delivery sent by the Center was unable to be successfully delivered to the Respondent. An attempt to reach the Respondent by fax also resulted in a non-delivery report. The Panel therefore finds the Respondent’s failure to provide an accurate address as further evidence of bad faith registration and use of the Disputed Domain Name.
Thus, the Panel cannot conceive of any plausible use of the Disputed Domain Name that would be legitimate. Rather, consumers of the Complainant may, because of a misspelling, mistakenly believe that the Complainant is not active on the Internet, which will lead to undue damage to the Complainant’s goodwill.
Hence, the Panel holds that the Complainant has satisfied the third and final element of paragraph 4(a) of the Policy. Accordingly, the Complainant has shown successfully that the Respondent has registered and is using the Disputed Domain Name in bad faith.
For 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 <sanof-aventis.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: December 20, 2018