SANOFI v. Wang Hui Min
Claim Number: FA1706001737246
Complainant: SANOFI of Paris, France.
Complainant Representative: Marchais Associes of Paris, France.
Respondent: Wang Hui Min of tai yuan shi, International, CN.
Respondent Representative: /
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
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.
Bart Van Besien, as Examiner.
Complainant submitted: June 26, 2017
Commencement: June 26, 2017
Default Date: July 11, 2017
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") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant claims to be the owner of several “Genzyme” trademark registrations: “Complainant is the owner of numerous trademark registrations worldwide that consist of or contain the mark GENZYME, including the American trademark registration No.1859429 and enjoys a widespread reputation in the world (see http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0574).” (page 2 of the Complaint).
The Complainant submitted evidence that the domain name resolves to an inactive page.
The Respondent failed to submit any Response to the Complaint.
Discussion:
Even though the Complainant claims to own numerous “Genzyme” trademarks, the Complainant failed to provide evidence of such trademarks. The Complainant limited itself to submitting proof of evidence of one single US word trademark “Genzyme” with registration number 1859429 in class 5 owned by a company called “Genzyme Corporation”.
The Complainant claims to “own” the company called “Genzyme Corporation”, but failed to provide any evidence of this “ownership” or of the possible consequences of this “ownership” on the Complainant’s rights to the term “Genzyme”.
The link to the WIPO website mentioned in the Complaint (quoted supra in this decision under ‘Findings of fact’) refers to a WIPO Administrative Panel Decision of June 8, 2011 whereby the domain name ‘sanofigenzyme.com’ was cancelled by the WIPO Panel (Case No. D2011-0574). This WIPO domain name case was filed by a complainant called “Sanofi-aventis”. It is unclear to the Panel whether this legal entity was the same as the current Complainant (called “Sanofi”). The Panel notes that this previous WIPO domain name decision was based on several trademarks “Sanofi” and “Sanofi-aventis”, not on a trademark “Genzyme”. Therefore, the Panel considers this previous WIPO domain name decision to be of little or no relevance to the current case.
The Complainant claims that the trademark “Genzyme” has been registered with the Trademark Clearinghouse and that the Respondent therefore must have been aware of the Complainant’s trademark. Again, the Complaint did not provide any proof of evidence of such registration with the Trademark Clearinghouse.
The Complainant also claims that the trademark “Genzyme” is well known and that the Respondent must therefore have had actual knowledge of the Complainant’s trademark at the time of registering the domain name. Again, the Complaint did not provide any proof of evidence of the purported well-known character of the trademark(s) upon which the Complaint is based.
Even though the Respondent has defaulted, the URS Procedure requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
URS Procedure 1.2.6.1 requires Complainant to prove that “the registered domain name is 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 Procedure 1.2.6.2 requires Complainant to prove that “the Registrant has no legitimate right or interest to the domain name”.
URS Procedure 1.2.6.3 requires Complainant to prove that “the domain was registered and is being used in bad faith”.
URS Procedure 8.2 stipulates: “The burden of proof shall be clear and convincing evidence.”
URS Procedure 9.1 stipulates: “There will be no discovery or hearing; the evidence will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire record used by the Examiner to make a Determination”.
URS Procedure 9.3 stipulates: “If the Complainant does not satisfy the burden of proof, the URS proceeding is terminated and full control of the domain name registration shall be returned to the Registrant.”
The Examiner notes that URS Procedure 1.2.6.1 requires Complainant to prove, by clear and convincing evidence, that the registered domain name is identical or confusingly similar to a word mark hold by the Complainant. The Examiner did find evidence of a word trademark “Genzyme” in the Complaint, but did not find any evidence of the Complainant’s rights or entitlements to this mark. The Examiner emphasizes that this word mark is registered in name of a company called “Genzyme Corporation”, not by a company called “Sanofi”. The Examiner also emphasizes that the current Complaint was filed by the company called “Sanofi”, not by the company called “Genzyme Corporation”. The Examiner understands that the Complainant declares to “own” “Genzyme Corporation”. However, it is unclear to the Examiner in what sense this confers any trademark rights to the Complainant.
URS Procedure 1.2.6.1 is clear in the sense that the Complaint should be based on a word mark hold by the Complainant. URS Procedure 9.1 is clear in the sense that the evidence is limited to the materials submitted with the Complaint and the Response, and that those materials are the entire record that can be used by the Examiner to make a Determination.
The Examiner finds that it has not the freedom to make any assumptions on the purported ownership of the mark(s) “Genzyme” by the Complainant. Even though it might be true that a company affiliated to the Complainant owns trademark rights to the word “Genzyme”, it is up to the Complainant to provide clear and convincing evidence of the trademark rights on which the Complaint is based. If “Genzyme Corporation” is indeed owned or controlled by the current Complainant, than it could have been considered to file the Complaint in name of this company as the registered owner of the trademark(s) “Genzyme”.
The Examiner notes that the Uniform Rapid Suspension System is designed to address so called “clear cases of trademark abuse” in new gTLD extensions (and the country code TLDs that adopt it). The URS System is not intended for proceedings where “genuine issues of material fact remain” (See URS Procedure 8.4).
The Examiner notes that the burden of proof with regard to URS Procedure 1.2.6.1 is on the Complainant. The fact that no Response was filed does not alter the fact that the Complainant should satisfy its own burden of proof.
The Examiner finds that the Complaint did not satisfy the standards of URS Procedure 1.2.6.1 in the sense that the Complaint did not provide sufficient evidence of a word trademark hold by the Complainant to which the disputed domain name would be identical or confusingly similar.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
Bart Van Besien, Examiner
Dated: July 12, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page