WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. li yue rong (李玥蓉)

Case No. D2021-0649

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is li yue rong (李玥蓉), China.

2. The Domain Name and Registrar

The disputed domain name <sanofi.cloud> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2021, 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 Complainant on March 5, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on March 9, 2021.

On March 5, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 9, 2021, the Complainant confirmed its request that English be the language of the proceeding. On March 5, 2021, the Respondent transmitted by email to the Center in English its request that Chinese be 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 of the Complaint, and the proceeding commenced on March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent did not file a formal Response, but sent email communications to the Center on March 5 and 27, 2021. On April 1, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 9, 2021. 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

The Complainant is the 4th largest global pharmaceutical company by prescription sales, headquartered in France, operating in more than 100 countries on all five continents, and employing 100,000 people.

The Complainant is the owner of numerous registrations for the trade mark SANOFI (the “Trade Mark”) in jurisdictions worldwide, including International registration No. 591490 (designating China), with a registration date of September 25, 1992.

The Complainant is also the owner of numerous domain names comprising the Trade Mark, used in jurisdictions worldwide (including in China) in respect of its pharmaceutical business, including <sanofi.com> registered on October 13, 1995; and <sanofi.cn>, registered on April 28, 2004.

B. Respondent

The Respondent is an individual resident in China.

C. The Disputed Domain Name

The disputed domain name was registered on February 21, 2021.

D. Use of the Disputed Domain Name

The disputed domain name has not been used.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent contended in its email communication to the Center as follows:

“I am a designer and photography enthusiast. I bought this domain name for my personal website to keep my works. My design works and some photographic photos will be placed instead of other purposes, because of my English name is Sanofi Vic. I am not good at IT, so the website has not been completed yet and it is not online.
The name Sanofi comes from the books I read about Egyptian story. I like it very much, so I used my nickname. As an ordinary Chinese, it is difficult to notice the English name of an overseas company, so I didn’t notice the same name as the company. And I don’t think a personal name is in conflict with a company’s name.

Couldn’t someone called Apple as their nickname?

I don’t understand Sanofi already has so many domain, and why still need my domain name, I really need a personal domain name, which is very important for my design work. Personal use, non-commercial use, just because my English name is Sanofi, so this does not conflict with the company.

Additionally I hope that the arbitration can be conducted in Chinese, because my English is not good. thank you very much!”

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(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.

Paragraph 11(a) of the Rules 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 order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.

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 matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel notes that the several English language email communications sent by the Respondent to the Center suggest that he is conversant in English. The Panel notes also that the Respondent has chosen not to formally contest this proceeding, and that all of the Center’s communications with the Parties have been sent in English and Chinese.

The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. Disregarding the generic Top-Level Domain (“gTLD”) “.cloud”, the disputed domain name is identical to the Trade Mark. The Panel therefore finds that the disputed domain name is identical to the Trade Mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

(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 trade mark 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 trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has not been used. Nor has the Respondent adduced any evidence in support of his claims of intended personal use, in respect of photography, or otherwise.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

In addition, the Panel notes the nature of the disputed domain name, which carries a high risk of implied association (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1).

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel does not find the Respondent’s explanation set out in his email convincing. The Respondent has provided no evidence to support any rights or legitimate interests in the disputed domain name, nor has the Respondent provided any evidence to support his contention that his English language nickname is “Sanofi Vic”. The Panel notes that there is no readily apparent phonetic or literal connection between the Respondent’s Chinese language name, li yue rong (李玥蓉), and “Sanofi Vic”, nor is there any evidence before the Panel to suggest any connection between “Sanofi” or “Sanofi Vic” and Egyptian literature.

The Panel considers that, in all the circumstances, including the distinctiveness and repute of the Trade Mark (including in China, where the Respondent is based); the fact the disputed domain name is identical to the Trade Mark; the passive holding of the disputed domain name; the lack of any evidence to support rights or legitimate interests on the part of the Respondent; and the Respondent’s unconvincing explanation, the requisite element of bad faith has been made out. The Panel considers, notwithstanding the Respondent’s explanation, that it is inconceivable that the Respondent was not aware of the Complainant’s Trade Mark at the time he registered the disputed domain name.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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 <sanofi.cloud> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: April 16, 2021