WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi and Genzyme Corporation v. Wang Xuesong

Case No. DCC2016-0007

1. The Parties

The Complainants are Sanofi of Paris, France (the “First Complainant”) and Genzyme Corporation of Cambridge, Massachusetts, United States of America (the “Second Complainant”), both represented by Selarl Marchais Associés, France.

The Respondent is Wang Xuesong of Chongqing, China.

2. The Domain Name and Registrar

The disputed domain name <genzyme.cc> is registered with 22net, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2016. 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 June 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On June 20, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 21, 2016, the Complainant confirmed its request 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 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 June 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on July 27, 2016. 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 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 consisting of “gen” as in “genetic” and “enzyme”.

The Second Complainant is the owner of multiple trademark registrations including European Union trademark registration no. 002348852 (GENZYME), registered in 2003, specifying goods in classes 1, 5 and 42 including pharmaceutical preparations and medical services; and Chinese trademark registrations nos. 3160697 and 3160699 (GENZYME in a particular script), both registered in 2003, specifying goods and services including pharmaceutical products 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>, <genzyme.net>, <genzyme.org> and <genzyme.com.cn>, that were all registered prior to the disputed domain name.

The Respondent is an individual located in Chongqing, China. The Respondent is the registrant of the disputed domain name. The disputed domain name was registered on September 25, 2015. At the time of the Complaint, the disputed domain name resolved to a website that offered the disputed domain name for sale. At the time of this decision, the disputed domain name is parked at a page that displays links to other websites. Due to the fact that the Respondent’s contact information in the Registrar’s WhoIs database is incomplete, the courier was unable to deliver the hard copy of the Written Notice.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Second Complainant’s GENZYME trademark. The disputed domain name reproduces that trademark, which has no particular meaning and is highly distinctive. The country-code Top-Level Domain (“ccTLD”) “.cc” cannot serve to distinguish the disputed domain name from the trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s name bears no resemblance to the word “genzyme”. The Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name. There is no relationship whatsoever between the Complainants and the Respondent. The disputed domain name leads to a parking website and has been registered only for the purpose of selling it.

The disputed domain name was registered and is being used in bad faith. The word “genzyme” has no meaning and is therefore highly distinctive. Given the famous and distinctive nature of the GENZYME marks, the Respondent is likely to have had constructive if not actual notice of those marks at the time he registered the disputed domain name. The Respondent is a repeated “cybersquatter” regarding the names of well-known entities. The Respondent is only passively holding the disputed domain name but still in bad faith. The Respondent is trying to free ride on the Complainants’ reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

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 they are not able to communicate in Chinese, that requiring the Complainants to submit all documents in Chinese would unduly delay the proceeding and create substantial translation expenses and that the disputed domain name is registered in Latin characters. The Respondent did not comment on the Complainant’s language request.

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 the Complaint in this proceeding was filed in English. The Respondent received notice of the Complaint in both Chinese and English but did not indicate any wish to respond to it or to participate in this proceeding in any other way. 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.

6.2 Multiple Complainants

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 efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

6.3 Analysis and Findings

Paragraph 4(a) of the Policy provides that the 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Second Complainant has rights in GENZYME trademarks (referred to below collectively as “the GENZYME trademark” except as otherwise indicated).

The disputed domain name incorporates the GENZYME trademark in its entirety and the GENZYME trademark is the dominant element of the disputed domain name. For technical reasons, the disputed domain name cannot include the particular script in which the GENZYME trademark is registered in China, hence that graphic element can be disregarded in the comparison with the Complainant’s trademarks. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.

The only other element in the disputed domain name is the country-code Top-Level Domain (“ccTLD”) suffix of the Cocos Islands “.cc”. A ccTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Vodafone Group PLC v. Wikipiedra S.L. / Jonathan Palma Ruz, WIPO Case No. DCC2010-0006. Consequently, the only distinctive element of the disputed domain name is the Complainant’s GENZYME trademark.

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.

B. Rights or Legitimate Interests

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 non-commercial 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 authorized the Respondent to use its GENZYME trademark in any capacity.

As regards the first and third circumstances above, the disputed domain name was being used with a website that merely offered the disputed domain name for sale. That is not a bona fide offering of goods or services for the purposes of the Policy under the circumstances. The disputed domain name is now parked at a page displaying links to other websites but that does not create a right or legitimate interest in the disputed domain name for the purposes of the Policy either. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. CartwrightWIPO Case No. D2007-0267. Accordingly, the Panel does not find that the Respondent’s use falls within the first or third circumstances of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is “Wang Xuesong”, 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 it 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.

C. Registered and Used in Bad Faith

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 second circumstance is as follows:

“(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct.”

The Respondent registered the disputed domain name in 2015, many years after the GENZYME trademark were registered, including in China where the Respondent is located. The disputed domain name, but for the ccTLD suffix, incorporates the GENZYME trademark in its entirety. “Genzyme” is an invented word. The Second Complainant’s websites are among the top results for the search term “genzyme” in the Baidu search engine. The Respondent has offered no explanation for choosing this disputed domain name. This all gives the Panel reason to find that the Respondent was aware of the Second Complainant’s GENZYME trademark and deliberately chose to register it as a domain name.

The Respondent used the disputed domain name merely to offer it for sale and previously registered and used other domain names in an identical or similar way. As in the present case, they were identical to a third party trademark, registered in the “.cc” ccTLD and resolved to a website that offered them for sale. In the prior proceedings, the Respondent was found to have registered and used the domain names in bad faith. See Zentiva Group, a.s. v. Wangxuesong, wang xuesong,WIPO Case No. DCC2016-0002 (<zentiva.cc>) and Accor v. Wang Xuesong,WIPO Case No. DCC2016-0003 (<accorhotels.cc>).

Given these circumstances, the Panel finds that the facts fall within the circumstances described in paragraph 4(b)(ii) of the Policy.

The Panel notes that the use of the disputed domain name has changed. The disputed domain name is now parked at a page displaying links to other websites, some of which relate to one or other of the Complainants but most of which appear to have nothing to do with the disputed domain name. This does not alter the Panel’s conclusion regarding bad faith use.

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.

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 <genzyme.cc> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: August 9, 2016