WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi and Sanofi Biotechnology v. 杨智超 (Zhichao Yang)

Case No. D2020-2560

1. The Parties

The Complainants are Sanofi and Sanofi Biotechnology, France (collectively, the “Complainants”), represented by Selarl Marchais & Associés, France.

The Respondent is 杨智超 (Zhichao Yang), China.

2. The Domain Name and Registrar

The disputed domain name <duipxent.com> (the “Disputed Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 10, 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 October 15, 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 amended Complaint on October 16, 2020.

On October 15, 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 October 16, 2020. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2020.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on December 14, 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.

4. Factual Background

The Complainants are Sanofi and Sanofi Biotechnology, the latter being a subsidiary of Sanofi.

The Complainants are affiliated companies and part of multinational pharmaceutical conglomerate with operations in more than 100 countries on five continents with headquarters in Paris (France). The Complainants engage in research and development, manufacturing and marketing of pharmaceutical products for sale mainly in the prescription market, but also in the framework of over-the-counter medication.

The Complainants have developed and sell throughout the world a drug indicated for the treatment of adult patients with inadequately controlled moderate-to-severe atopic dermatitis under the trademark DUPIXENT.

The International trademark DUPIXENT (no. 1278059) was registered on October 28, 2015 in class 5 in the name of the Complainant Sanofi Biotechnology. The International registration designates China, among numerous other countries. In addition, the Complainant Sanofi Biotechnology has obtained registrations for DUPIXENT in class 5 in other jurisdictions including in the European Union (no. 014683916) (filed on October 15, 2015), Chile (no. 1214705) (filed on October 21,2015), Hong Kong, China (no. 303569996) (registered on October 19, 2015) and in the United States of America (no. 4978127) (filed on November 3, 2015).

The Complainant Sanofi Biotechnology has also registered the domain name <dupixent.com> on May 29, 2015 and the domain name <dupixent.ca> on July 21, 2016.

The Disputed Domain Name was registered on September 29, 2020. Currently the Disputed Domain Name <duipxent.com> leads to a parking page containing pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainants

The Complainants’ submissions may be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

The Disputed Domain Name comprises: (a) an inversion of the letters “p” and “i” in the Complainants’ DUPIXENT marks; (b) followed by a Top-Level Domain suffix “.com”. The inversion of the letters “p” and “i” of the Complainants’ DUPIXENT trademarks to read DUIPXENT in the Disputed Domain Name is insufficient to alleviate the likelihood of confusion between the Complainants’ aforementioned trademarks and the Disputed Domain Name registered by the Respondent. The Respondent’s registration of the Disputed Domain Name appears furthermore to be indicative of the practice known as typosquatting.

Hence, the Complainants submit that the Disputed Domain Name is confusingly similar to a trademark in which they have rights according to paragraph 4(a)(i) of the Policy.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The name of the Respondent does not appear to have any resemblance with the word “dupixent”. The term “dupixent” does not have a meaning and is therefore highly distinctive. The Complainants have never licensed or otherwise authorized the Respondent to use their trademarks or to register any domain name similar to the above-mentioned trademark. There is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainants’ trademarks for its own use and incorporated them into his domain name without the Complainants’ authorization. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name nor is he using the Disputed Domain Name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy given that the Disputed Domain Name website is not used legitimately by the Respondent. The Disputed Domain Name leads to a parking website featuring PPC links. By clicking on the links, Internet users are redirected to a page displaying sponsored listings. Thus, the Respondent is obviously using the Disputed Domain Name to obtain commercial gain by misleadingly diverting consumers.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Respondent does not have any legitimate interest in using the Disputed Domain Name. In registering the Disputed Domain Name, the Respondent does not even indicate his/her/its identity. This serves as an indicator of bad faith registration and use. Given the distinctive nature of the mark DUPIXENT and the reputation of the Complainants’ activities worldwide, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainants’ marks at the time he registered the Disputed Domain Name. This suggests that the Respondent acted with opportunistic bad faith in registering the Disputed Domain Name in order to make an illegitimate use of it. The Disputed Domain Name is used as a referral portal that contains a number of hyperlinks offering various kinds of services and products related to those competing with the Complainants’ activities. The Respondent is engaged in this bad faith usage to take advantage of the Complainants’ reputation.

The Complainants request that the Disputed Domain Name be transferred to the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless 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.”

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.”

The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainants requested that the language of the proceeding be English. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. Given the following factors, the Panel decides that the language of the proceeding be English.

(1) The Disputed Domain Name <duipxent.com> is comprised completely of words in the Latin alphabet;

(2) The Complainants are not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese. Hence, the use of Chinese in the proceeding would impose burden on the Complainants, and will cause an unwarranted delay in the present proceeding;

(3) Screen shots from the website to which the Disputed Domain Name resolves show text in English and French, showing that the content is directed to Internet users who understand English; and

(4) The Center sent an email communication to the Parties in both Chinese and English on October 15, 2020 inviting them to comment on the language of the proceeding. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Center also formally notified the Respondent in both Chinese and English of the Complaint on October 27, 2020. However, the Respondent has chosen not to file a Response.

Given these facts, the Panel is satisfied that the Respondent has been given an opportunity to participate and has chosen not to respond. Therefore, it would not be prejudicial to the Respondent in his abilities to articulate his arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainants to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (Dolce & Gabbana S.r.l. v. Zhang Yali, WIPO Case No. D2013-1101). The Panel does not consider it prejudicial to the Respondent to adopt English as the language of the proceeding, and determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.

A. Identical or Confusingly Similar

The Complainants allege that the Disputed Domain Name <duipxent.com> is confusingly similar to its DUPIXENT trademarks.

The Complainants have established that they are the owner of trademarks DUPIXENT.

The Disputed Domain Name <duipxent.com> inverses the letters “p” and “i” of the Complainants’ trademarks with the generic Top-Level Domain (“gTLD”) extension “.com”. The “duipxent” term is the sole distinctive element in the Disputed Domain Name. The Panel is of the opinion that the inversion of the letter “p” and “i” does not change the overall impression produced by the Disputed Domain Name and is insufficient to avoid a finding of confusing similarity. Typographical error variations and misspellings of trademarked terms have long been found to be confusingly similar (Microsoft Corporation v. X-Obx Designs, WIPO Case No.D2003-0093). Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [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 Complainants have established that they are the owner of the DUPIXENT trademarks, and that they have neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name.

There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “dupixent” or any similar name. The Disputed Domain Name resolving to a parking website with links to commercial websites does not correspond to a bona fide noncommercial use (F.Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451).

The Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

[…]

“(iv) by using the 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] website or location or of a product or service on [the respondent’s] website or location”.

The Complainants’ DUPIXENT trademarks have been registered in many countries around the world. These registrations were made long prior to the registration of the Disputed Domain Name. The Respondent chose the “duipxent” term as the distinctive part of the Disputed Domain Name, which includes the inversion of two letters in the middle of the Complainants’ DUPIXENT trademarks. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the “duipxent” term for any reason other than the reputation of the Complainants trademarks. The Panel finds that the Disputed Domain Name has been registered in bad faith.

The Disputed Domain Name resolves to a typical parking website with links to commercial websites. The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (Classmates Online, Inc. v. Mary Lamb, WIPO Case No. D2009-0715).

The Panel finds that the Respondent’s use of the Disputed Domain Name attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. This use of the Disputed Domain Name is in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainants fulfill the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <duipxent.com> be transferred to the Complainants.

Peter J. Dernbach
Sole Panelist
Date: December 28, 2020