The Complainants are Sanofi of Paris, France (the “First Complainant”), and Genzyme Corporation of Cambridge, Massachusetts, United States of America (“United States”) (the “Second Complainant”), represented by Selarl Marchais & Associés, France.
The Respondent is zhanghui of Xiangcheng, China.
The disputed domain name <genzymediagnostics.com> 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 December 21, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 2018, 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 Complainants on January 9, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on January 10, 2019.
On January 9, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The following day, the Complainants requested 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 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 January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on February 14, 2019. 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 First Complainant is a pharmaceutical company that owns the Second Complainant, which is a biotechnology company. The corporate name of the Second Complainant is “Genzyme” which is an invented word combining “gen” (as in “genetic”) and “enzyme”.
The Second Complainant is the owner of multiple trademark registrations including United States trademark registration number 1859429 for GENZYME in a particular script, registered on October 25, 1994, specifying goods including diagnostic medical reagents in class 5; European Union trademark registration number 002348852 for GENZYME, registered on April 17, 2003, specifying goods and services in classes 1, 5 and 42 including diagnostic reagents; and Chinese trademark registrations numbers 3160697 and 3160699 for GENZYME in a particular script, registered on June 21, 2003 and November 7, 2003, respectively, specifying goods and services including medical diagnostic reagents in class 5 and pharmaceutical services in class 42, respectively. The Second Complainant is also the registrant of multiple domain names that contain the word “genzyme”, including <genzyme.com> and <genzyme.com.cn>, that were registered in 1996 and 2002, respectively.
The Respondent (whose name can be transliterated as ZHANG Hui) is an individual resident in China.
The disputed domain name was registered on November 26, 2018. It resolved to a website in Chinese displaying links to gambling and pornography websites. At the time of this decision, it does not resolve to an active website; rather, it is passively held.
The disputed domain name is confusingly similar to the Second Complainant’s GENZYME trademark. The disputed domain name contains an exact reproduction of that trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants have never licensed or otherwise authorized the Respondent to use their trademarks or to register any domain name including the trademarks. There is no relationship whatsoever between the Respondent and the Complainants. The Respondent is using the disputed domain name to obtain commercial gain by misleadingly diverting consumers.
The disputed domain name was registered and is being used in bad faith. Given the famous and distinctive nature of the GENZYME mark, the Respondent is likely to have had at least constructive, if not actual notice, of the Complainants’ marks at the time he registered the disputed domain name. The Respondent is using the disputed domain name to divert and attract Internet users to his website with links to commercial websites, in order to take benefit from the Complainants’ reputation for financial gain.
The Respondent did not reply to the Complainants’ contentions.
Paragraph 11(a) of the Rules 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainants request that the language of the proceeding be English. Their main arguments are that the Complainants are not able to communicate in Chinese; the disputed domain name contains an English word; translation of the Complaint would cause undue delay and substantial expense.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. Despite having received a notice regarding the language of the proceeding and written notice of the Complaint in Chinese and English, the Respondent did not respond in Chinese or English or express any interest in participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
The Complaint was filed by two complainants against a single respondent. The First Complainant is the parent company of the Second Complainant, which owns the GENZYME trademark and Genzyme domain names. The Panel finds that they have a common grievance against the Respondent and that it is equitable and procedurally efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Based on the evidence submitted, the Panel finds that the Second Complainant has rights in the GENZYME trademark.
The disputed domain name wholly incorporates the GENZYME trademark. That trademark is clearly recognizable in the disputed domain name.
The disputed domain name also incorporates the dictionary word “diagnostics”. A dictionary word is generally incapable of dispelling confusing similarity between a domain name and a trademark for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No.D2001-0110.
The only other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. Zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the 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 the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s GENZYME trademark. The Complainant informs the Panel that it has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name and that there is no relationship whatsoever between the Respondent and the Complainant.
As regards the first and third circumstances above, the disputed domain name was being used with a website displaying links to gambling and pornographic websites. In the circumstances, that is not a bona fide offering of goods or services for the purposes of the Policy nor is there any evidence of preparations to make such a use. That is not a legitimate noncommercial or fair use of the disputed domain name either. Moreover, at the time of this decision, the disputed domain name does not resolve to any active website. Accordingly, the Panel does not find that the Respondent’s use falls within the first or third circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent’s name is listed in the WhoIs service as “zhanghui”, not “genzyme”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Respondent registered the disputed domain name in November 2018, many years after the Complainant obtained its trademark registration, including in China. The disputed domain name wholly incorporates the Complainant’s GENZYME trademark, which is not a dictionary word and has no other meaning. The disputed domain name combines the GENZYME trademark with the word “diagnostics”, which describes the Complainant’s diagnostic reagent product. This all indicates to the Panel that the Respondent was aware of the Complainant, its trademark and its product at the time that he registered the disputed domain name and that he deliberately registered the disputed domain name in bad faith.
The Respondent used the disputed domain name, which combines the Complainant’s GENZYME trademark and a word that describes the Complainant’s product, with a website that displayed links to gambling and pornography websites. That use is for commercial gain, regardless of whether it is for the Respondent personally or for the operators of the linked websites, or both. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel notes that use of the disputed domain name changed after the commencement of this proceeding and that it no longer resolves to an active website. The Panel does not consider that this fact alters its conclusion; rather, this recent change of use may constitute further evidence of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 disputed domain name <genzymediagnostics.com> be transferred to the Second Complainant.
Matthew Kennedy
Sole Panelist
Date: February 28, 2019