The Complainants are Sanofi and Sanofi Biotechnology, France, represented by Selarl Marchais & Associés, France.
The Respondent is 李金梁 (Li Jin Liang), China.
The disputed domain name <dupixet.com> is registered with DNSPod, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2020, 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 March 20, 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 on March 23, 2020.
On March 20, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants confirmed the request that English be the language of the proceeding on March 23, 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 of the Complaint, and the proceedings commenced on March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2020.
The Center appointed Joseph Simone as the sole panelist in this matter on April 27, 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 Complainant Sanofi is one of the world’s largest multinational pharmaceutical companies. Headquartered in Paris, France, Sanofi specializes in the development, manufacture and sale of prescription pharmaceutical products and over-the-counter medication. The Complainant Sanofi Biotechnology is a subsidiary of the Complainant Sanofi (together, the “Complainants”).
Dupixent is the name of a drug that was developed by the Complainants to treat atopic dermatitis in adult patients, for which the Complainants own a series of trademark registrations, including, inter alia, the following:
- International Trademark Registration No. 1278059, registered on October 28, 2015 in International class 5, protected in jurisdictions including China, where the Respondent resides;
- European Union Trade Mark Registration No. 014683916, registered on January 28, 2016 in class 5;
- United States of America Trademark Registration No. 4978127, registered on June 14, 2016 in class 5;
- Hong Kong Trademark Registration No. 303569996, registered on October 19, 2015 in class 5.
The Complainants also own registrations for the domain names <dupixent.com> (registered on May 29, 2015) and <dupixent.ca> (registered on July 21, 2016).
The disputed domain name <dupixet.com> was registered on February 5, 2020, and resolves to a parking website which displays five sponsored links. Four of these links appear to offer information pertaining to the Complainants’ drug Dupixent.
The Complainants contend that the disputed domain name is identical or confusingly similar to their highly distinctive trademark DUPIXENT, which, after disregarding the Top-Level Domain (“TLD”) “.com”, the disputed domain name imitates by merely omitting the letter “n”.
The Complainants next assert that the Respondent has no rights or legitimate interests in respect of the disputed domain name. First, the Respondent provided incomplete details in connection with the registration of the disputed domain name, indicating a lack of legitimate interests on his part. Further, the Complainants have never licensed or otherwise authorized the Respondent to use or register any domain names incorporating their trademark. Additionally, the Respondent is neither making a legitimate noncommercial or fair use of the disputed domain name, nor using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent is using the disputed domain name as a parking website for his own commercial gain.
Finally, the Complainants claim that the disputed domain name was registered and is being used in bad faith for the following reasons. The Respondent acted with opportunistic bad faith by registering a domain name that is confusingly similar to the Complainants’ well-recognized trademark. The Respondent’s lack of legitimate interests in the disputed domain name by itself also indicates bad faith. Further, given the reputation and renown of the Complainants and the distinctive nature of the Complainants’ trademark, the Respondent must have had constructive, if not actual, knowledge thereof when he registered the disputed domain name. The Respondent is similarly using the disputed domain name in bad faith by taking advantage of the Complainants’ goodwill and reputation and diverting Internet users to a typical parking website with third party links for his own commercial gain.
The Respondent did not reply to the Complainants’ contentions.
In accordance with paragraph 11 of the Rules:
“[…] 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.”
As the language of the Registration Agreement is Chinese, the default language of the proceeding shall be Chinese.
However, the Complainants filed the Complaint in English and requested that English be the language of the proceeding.
The key consideration in choosing the language of the proceeding is to ensure that each party has a fair opportunity to present its case. The Respondent was notified of each step of the proceeding in both Chinese and English, and did not respond regarding the choice of language, or submit a formal response to the Complaint. Therefore, the Panel believes there would be no prejudice caused to the Respondent by proceeding in English. On the other hand, requiring the Complainants to submit the Complaint in Chinese would be a waste of resources and will unduly delay the proceeding. Therefore, the Panel has decided that the language of the proceeding shall be English and shall proceed with a decision in English.
Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainants have shown valid rights in the trademark by presenting evidence of trademark registrations for DUPIXENT.
The test for whether a domain name is identical or confusingly similar to a complainant’s trademarks is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962). It is standard practice to disregard the TLD (see, e.g. F. Hoffmann-La Roche AG v. Domain Admin / xcite, WIPO Case No. DCC2007-0003).
For purposes of the first element, a domain name that consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark (see, e.g., Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC, WIPO Case No. D2014-1018).
In the case at hand, the disputed domain name <dupixet.com> reproduces the Complainants’ highly distinctive trademark DUPIXENT with only the omission of the letter “n”. It is confusingly similar to the Complainants’ trademark, and therefore, the first element of the Policy is satisfied.
Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
While the overall burden of proof rests with the complainant, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production for this element shifts to the respondent to produce evidence demonstrating its rights or legitimate interests in the domain name. Otherwise, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainants state that they have no affiliation with the Respondent. Further, they have never licensed or otherwise authorized the Respondent to use or register domain names incorporating their trademark. There is also no evidence to suggest that the Respondent is commonly known by the disputed domain name. Instead, the disputed domain name differs from the Complainants’ famous and highly distinctive trademark DUPIXENT by only one letter and was registered almost five years after the Complainants first registered their trademark. The Complainants have therefore made out a prima facie case, which the Respondent has not rebutted by declining to provide an explanation.
In accordance with paragraph 4(c) of the Policy, the Panel may also consider whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers. Applying the Policy, UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering of goods or services, where such links compete with, or capitalize on the reputation and goodwill of the complainant’s mark. See section 2.9 of the WIPO Overview 3.0.
Here, the Respondent has directed the disputed domain name to a parked website hosting five third party links. Four of these purport to offer information and discounts regarding the Complainants’ product Dupixent, with the remaining supposedly offering “pharmacy discount cards”. This does not appear to be a bona fide offering of goods or services, but rather an attempt to take unfair advantage of the Complainants’ reputation and goodwill existing in their trademark, for no other apparent reason than the Respondent’s own commercial gain.
Therefore, the Panel concludes that the second requirement of the Policy has been met.
Under the final element of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Bad faith under the Policy is understood to include circumstances where:
“by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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” (paragraph 4(b)(iv) of the Policy).
“[T]he mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 of the WIPO Overview 3.0). Other factors UDRP panels may take into consideration when assessing this element include, inter alia, the nature of the domain name, the content of the website to which the disputed domain name directs, and other indicia that the respondent had somehow targeted the complainant. (See generally section 3.2.1 of the WIPO Overview 3.0.)
In this case, the disputed domain name <dupixet.com> is a misspelling of the Complainants’ widely-known trademark DUPIXENT, which enjoys substantial fame and goodwill in commerce due to the considerable resources and efforts the Complainants have expended to develop it over the years. Add to that the trademark’s level of distinctiveness and the fact that the disputed domain name resolves to a parking website with links offering information and discount on DUPIXENT, it is unfathomable that the Respondent was wholly unaware of the Complainants’ trademark when it registered the disputed domain name.
There is also no question that the Respondent is using the disputed domain name in bad faith. The Respondent has used the disputed domain name to set up a website to house pay-per-click third party links, all of which are either connected to the Complainants’ DUPIXENT product or the pharmaceutical industry in which they operate. It is clear that the Respondent intends to generate profits by riding on the Complainants’ reputation and goodwill by misleadingly divert consumers away from the Complainants’ business via a domain name that is confusingly similar to the Complainants’ trademark.
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and the third requirement of the UDRP is satisfied.
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 <dupixet.com> be transferred to the Complainants.
Date: May 11, 2020
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