The Complainants are Sanofi (“First Complainant”), France and Sanofi Biotechnology (“Second Complainant”), France, represented by Selarl Marchais & Associés, France.
The Respondent is 权中俊 (Quan Zhong Jun), China.
The disputed domain names <dipixent.com>, <duoixent.com>, <dupicent.com>, <dupixenr.com>, <dupixeny.com>, <dupixrnt.com>, <dupizent.com>, <dypixent.com> and <wwwdupixent.com> are registered with DNSPod, Inc. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 2, 2020 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 in English on the same day.
On June 2, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on June 2, 2020. 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 June 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 3, 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.
The First Complainant is a pharmaceutical company present in over 100 countries. The Second Complainant markets a drug under the brand name Dupixent and is the subsidiary of the First Complainant. The Second Complainant owns International trademark registration number 1278059 for DUPIXENT, registered on October 28, 2015, specifying pharmaceutical products in class 5, and designating multiple jurisdictions, including China. That trademark registration remains current. The Complainants have registered domain names including <dupixent.com>, which was registered on May 29, 2015 and is being used in connection with a website that provides information about the Dupixent drug.
The Respondent is an individual resident in China.
The disputed domain names were variously registered on April 25 and 27, 2020. They each resolve to a landing page displaying pay-per-click (“PPC”) links, most of which include the word “Dupixent” (spelt correctly), some of which refer to medical conditions and another of which refers to a pharmacy discount card.
The disputed domain names are confusingly similar to the Complainants’ DUPIXENT mark. They imitate the DUPIXENT mark as their unique part. This is indicative of typosquatting.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The name of the Respondent has no relation to the DUPIXENT mark. The Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including its trademarks. There is no relationship whatsoever between the Parties. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names nor is he using the disputed domain names in connection with a bona fide offering of goods or services for the purposes of the second element of the Policy. The disputed domain names lead to a parking website and have been registered only for the purpose of attracting Internet users into clicking on the sponsored links.
The disputed domain names were registered and are being used in bad faith. Given the distinctive nature of the DUPIXENT mark and the reputation of the First Complainant’s activities worldwide, the Respondent is likely to have had constructive or actual notice as to the existence of Complainants’ marks at the time he registered the disputed domain names. The disputed domain names have been registered for the purpose of attracting Internet users to the Respondent’s websites by creating a likelihood of confusion – or at least an impression of association – between the DUPIXENT trademarks and the disputed domain names. This use is for commercial gain.
The Respondent did not reply to the Complainants’ contentions.
The Complaint was filed by two complainants. The First Complainant is the parent of the Second Complainant, which owns trademark registrations for DUPIXENT. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.
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 Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant is not able to communicate in Chinese; the disputed domain names are registered in Latin script; the disputed domain names imitate the Complainant’s trademarks as their unique part; and translation of the Complaint into Chinese would create undue delay and incur substantial expenses.
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 and amendment to the Complaint were filed in English. The Center has sent the email in both English and Chinese regarding the language of the proceeding and has notified the Respondent in both English and Chinese of the Complaint. However, the Respondent has not expressed any interest in commenting on the language of the proceeding, responding to the Complainant’s contentions, or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant 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 Panel would have accepted a Response in Chinese, but none was filed.
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 Complainant owns rights in the DUPIXENT mark.
The disputed domain name <wwwdupixent.com> wholly incorporates the DUPIXENT mark, preceded only by the letters “www”. The omission of a full stop between the “www” prefix and a domain name is a common typographical error in a URL. This is an example of a practice known as “typosquatting”. The addition of those letters does not dispel confusing similarity between the disputed domain name and the trademark that follows. See Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659.
The operative element of each of the other eight disputed domain names is an obvious misspelling of the DUPIXENT mark, differing only in one letter from that mark (being a different letter in each case). This is another example of typosquatting. The Panel does not consider these minor typographical differences capable of dispelling confusing similarity with the Complainant’s trademark either. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
The only other element in each disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, in each case “.com”, which is a technical requirement of domain name registration. A gTLD suffix is disregarded in the comparison between a domain name and a trademark unless it has some impact beyond its technical function, which is not the case here.
Therefore, the Panel finds that the disputed domain names are 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.
As regards the first circumstance set out above, one of the disputed domain names, <wwwdupixent.com>, wholly incorporates the Complainant’s DUPIXENT mark in combination with a common typographical error in a URL. The operative element of each of the other eight disputed domain names is an obvious misspelling of the DUPIXENT trademark and they are each, in their entirety, an obvious misspelling of the Complainant’s domain name <dupixent.com>. All the disputed domain names resolve to a landing page that displays only PPC links which capitalize on the trademark meaning of DUPIXENT. There is no relationship whatsoever between the Parties. The Panel finds that this is not a use of the disputed domain names in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Registrar has confirmed that the Respondent’s name is “权中俊 (Quan Zhong Jun)”, which has no relation to any of the disputed domain names. There is no evidence that the Respondent has been commonly known by any of the disputed domain names within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain names resolve to a webpage displaying PPC links for the commercial gain of the Respondent or the operators of the linked websites, or both. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, 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 names. The Respondent did not rebut that prima facie 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 names. 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] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain names were registered in 2020, years after the Complainant acquired its registered trademark rights in DUPIXENT, including in China, where the Respondent is located. The disputed domain name <wwwdupixent.com> wholly incorporates the DUPIXENT trademark in combination with a common typographical error in a URL. The operative element of each of the other eight disputed domain names is an obvious misspelling of the DUPIXENT trademark. DUPIXENT is a coined word and these disputed domain names have no apparent meaning other than as an approximation of the DUPIXENT trademark. This all gives the Panel reason to find that the Respondent registered all the disputed domain names in bad faith.
The disputed domain names are used to attract Internet users who misspell the Complainant’s domain name in an Internet browser by creating a likelihood of confusion with the Complainant’s DUPIXENT trademark as to the source, sponsorship, affiliation, or endorsement of the webpages to which the disputed domain names resolve. The PPC links displayed on these webpages capitalize on the trademark value of DUPIXENT. This use is intentional and for the commercial gain of the Respondent, or the operators of the linked websites, or both. In each of these scenarios, the facts fall within the circumstance described in paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
Therefore, the Panel finds that the disputed domain names have been registered and are 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 names <dipixent.com>, <duoixent.com>, <dupicent.com>, <dupixenr.com>, <dupixeny.com>, <dupixrnt.com>, <dupizent.com>, <dypixent.com> and <wwwdupixent.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 17, 2020