SANOFI v. 苏威 et al.
Claim Number: FA1604001672049
Complainant: SANOFI of Paris, France.
Complainant Representative: Marchais Associes of Paris, France.
Respondent: 威 苏 of 武汉, China.
Complainant Representative: 威 苏 of 武汉, China.
YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, Beijing, International, CN.
苏威 of Beijing, Beijing, International, CN.
REGISTRIES and REGISTRARS
Registries: Elegant Leader Limited
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Jonathan Agmon, as Appeal Panelist (Chair).
Marie-Emmanuelle Haas, as Appeal Panelist
Debrett Lyons, as Appeal Panelist
Complainant submitted: April 26, 2016
Commencement: April 26, 2016
Response Date: May 3, 2016
Decision was issued on: May 6, 2016.
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Appellant seeks reversal of the Examiner's Final Determination that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
URS Procedure 12.1 provides that each party shall have the right to seek a de novo appeal of the Determination based on the existing record within the URS proceedings. The appellant must identify the specific grounds on which the party is appealing.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 126.96.36.199] The registered domain name(s) is/are identical or confusingly
similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and
that is in current use; or(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the
URS complaint is filed.
[URS 188.8.131.52] Registrant has no legitimate right or interest to the domain name.
[URS 184.108.40.206] The domain name(s) was/were registered and is being used in bad
a. Registrant has registered or acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in excess
of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the
trademark holder or service mark from reflecting the mark in a corresponding
domain name, provided that Registrant has engaged in a pattern of such
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’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 Registrant’s web
site or location or of a product or service on that web site or location.
GROUNDS OF APPEAL
Appellant grounds of appeal are as follows:
1. The Examiner was incorrect determining that SANOFI International Trademark Registration was insufficient to base URS procedural Rule 220.127.116.11;
2. Previous Examiners held that the Complainant's trademark registration was sufficient to establish the Complainant's arguments;
3. The Registrant acquired the domain name for the sole purpose of selling it to the Complainant for a sum which exceeds his out of pocket costs;
4. The Appellee has no legitimate right or interest in the domain name; and
5. The Appellee had actual knowledge of the Appellant's trademarks when he registered the disputed domain name which should be regarded as opportunistic bad faith.
FINDINGS OF FACT BY THE EXAMINER
The Examiner’s determination was that Complainant, by trying to rely on International Trademark Registration Number 1091805 for the mark SANOFI design, which was registered on August 18, 2011, did not satisfy the requirements of URS 18.104.22.168.
Considering the above, the Examiner did not make any following determination on other elements requested by the URS Procedure and determined that Complainant has not demonstrated all three elements of the URS, then ordered
that the disputed domain name be returned to the control of Respondent.
LEGAL FINDINGS AND CONCLUSIONS:
Having reviewed the entire submissions from the Appellant and Respondent, and the entire case file in the URS Proceedings, we reviewed de novo the specific grounds of appeal (URS 12.1) and make the following legal findings and conclusions:
IDENTICAL OR CONFUSINGLY SIMILAR
Appellant appeals the finding that the <sanofi.xin> disputed domain name is not identical or confusingly similar to its International SANOFI International Trademark Registration Number 1091805.
The Examiner determined that the disputed domain name <sanofi.xin> is not identical or confusingly similar to the International Registration presented because “[i]n seeking to rely on its registration for the word and device mark SANOFI, Complainant has not satisfied the requirements of 22.214.171.124.” [Emphasis added]
Indeed, the language of URS 126.96.36.199 states that the Complainant must show a valid “word mark” to establish rights under this element. Taken literally the use of the word “word mark” in URS 188.8.131.52 seemingly prohibits the use of a trademark combining a word element and a graphical element in establishing a Complainant’s rights for the purpose of the first element.
Review of the documents leading to the establishment of URS 184.108.40.206 shows that it was the intent of the drafters to allow complainants to establish trademark rights only through a valid and validated registered trademark. See for example the Implementation Recommendation Team (IRT) document of 29 May 2009 stating that “the purpose of the URS is to provide a cost-effective and timely mechanism for brand owners to protect their trademarks and to promote consumer protection on the Internet.” at 25. In 2009, the proposed, but not yet final rule, that an Examiner would have to determine: “[w]hether the domain name is identical or confusingly similar to a mark in which the Complainant holds a valid trademark registration issued by a jurisdiction that conducts substantive examination of trademark applications prior to registration.” Id. at 33. The same language was adopted by the Generic Names Supporting Organization (GNSO) Special Trademark Issues Working Group (STI) in its report of 17 December 2009.
No change to this part of the URS was made until November 2010, when the amendment of the term “mark” to “word mark” first appears in a draft later included in the ICANN Draft Applicant Guide. See Draft Applicant Guide v.5, Draft Procedure 1.2 (f)(i). In the Public Comment Summary for the ICANN Draft Applicant Guide V.5 of 21 February 2011, several comments appear addressing the addition of the term “word mark”. These comments refer to amendments made to the then proposed Trademark Clearinghouse Eligibility for Registration criteria, and the Post Delegation Dispute Resolution Procedure. Analysis of the comments of the latter RPM provided that: “One comment requests that the PDDRP provide protection for trademarks other than “word marks.” The issue regarding limiting relief to infringement of word marks only has been repeatedly discussed in response to comments to the PDDRP, the Clearinghouse and the URS. Using marks that are not just word marks to support protection in domain names, that are just words, will require discretion and subjectivity, and likely disparate treatment; the goal of the RPMs is to treat mark holders with equal consideration under equal circumstances. Further, including additional marks being afforded protection under the PDDRP that would require analysis and evaluation, will add another level of complexity to an already complex process.” While the Trademark Clearinghouse Guidelines were amended to reflect that it may accept trademarks where the name of the trademark is reflected in predominant letters and is clearly separable or distinguishable from the device element, such was not made clear in the URS Procedure.
Without derogating from the intent of the URS to minimize discretion or subjectivity, and to avoid complex cases, we believe that “treating mark holders with equal considerations under equal circumstances” leads to the interpretation that the use of the words “word mark” in URS 220.127.116.11 does not specifically exclude trademarks which are combined of a word element and a graphical element, provided the word element is clear, and sufficiently distinct and separate from the graphical element.
As is also acceptable under the UDRP body of law, and without derogating from the URS goals, the word element in the trademark should not have been disclaimed leaving the design element the only element having the source of distinctiveness upon which Complainant is making his case.
Against this backdrop, considering the Appellant International Trademark Registration Number 1091805 for the mark SANOFI design, which was registered on August 18, 2011, the Panel accepts the Appellant argument and determines that the disputed domain name is identical or confusingly similar to the Appellant’s trademark.
In the present case, the mark attached to the Complaint, verified and validated, is a combined word and device mark. The word element is clearly separated from the device element showing the SANOFI word mark element prominently.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the SANOFI mark pursuant to URS Procedure 18.104.22.168.
RIGHTS OR LEGITIMATE INTERESTS
Appellant argues that the Appellee has no rights or legitimate interests in the disputed domain name.
Appellant has provided evidence of its ownership of the SANOFI trademark and current use of the SANOFI trademark confirming that the word marks have been validated for proof of use.
Appellant contends that Respondent is neither affiliated with, nor has it been licensed or permitted to use Appellant’s mark or any domains incorporating the mark. Appellant also contends that Respondent has not made any demonstrable preparations to use the disputed domain name.
Once the Appellant has shown sufficient evidence of rights or legitimate interest in the SANOFI trademark, the burden to show rights or legitimate interests shifts to the Respondent.
The Respondent failed to provide a meaningful response to this issue, and therefore, the Panel accepts the Appellant’s arguments, by which the Respondent has no rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complaint meets URS requirement of 22.214.171.124.
REGISTRATION AND USE IN BAD FAITH
Appellant provided evidence showing that the Respondent has registered the disputed domain name for the sole purpose of selling it to the Appellant for a valuable consideration costs. The evidence shows that the Respondent believed that registering the disputed domain name in order to sell it to the Appellant, even in view of Appellant rights in the SANOFI trademark, was an appropriate course of action. The Panel finds that in this respect, the offer made by the Respondent to sell the disputed domain name to the Appellant is an indication of bad faith use and registration.
Appellant also provided evidence that Respondent has registered the disputed domain name despite and after receiving notification that the domain name match a mark registered with the Trademark Clearinghouse. The Panel finds that registering of the disputed domain name in view of the notification from the Trademark Clearinghouse of the Appellant’s rights is also an indication of bad faith use and registration.
Appellant contents that by registering the disputed domain name the Respondent in making illegitimate use of attracting internet users to visit Respondent's website, by creating a likelihood of confusion between SANOFI trademark and the disputed domain name. The Panel finds that the Respondent was aware of Appellant trademark SANOFI and therefore its use of the disputed domain name is also an indication of bad faith use and registration.
Appellant further contends that the inactive use of the disputed domain name disrupts the Appellant's business and it is a clear indication of the Respondent's bad faith. The Panel finds that holding an inactive domain name can be, under certain circumstances, an indication of bad faith registration and use. In this case, the Respondent passive holding of the disputed domain name for the clear purpose of selling it to the Appellant, while Respondent was aware of Appellant trademark before the registration of the disputed domain name, is also an indication of bad faith use and registration.
Considering the above, the Panel finds that the disputed domain name was registered and used in bad faith. Moreover, we agree that the Complainant has satisfied URS 126.96.36.199 (b) since the Respondent must have known of the Complainant's well-known mark when registering the disputed domain name.
After reviewing the parties’ submissions, we determine that the Appellant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; we hereby Order that the <sanofi.xin> domain name be SUSPENDED for the duration of the registration.
We further find the Complaint or Appeal was not brought in an abuse of the administrative proceeding or with material falsehoods.
Jonathan Agmon, Panelist (Chair)
Marie-Emmanuelle Haas, as Appeal Panelist
Debrett Lyons, as Appeal Panelist
Dated: June 28, 2016
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