The Complainant is Sanofi of Paris, France, represented by Marchais & Associés, France.
The Respondent is Tangzhou of Chongqing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2012. On July 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2012, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2012.
The Center appointed Zoltán Takács as the sole panelist in this matter on August 16, 2012. 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 language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
The Complainant is a French multinational pharmaceutical company settled in more than 100 countries worldwide, employing 110,000 people. Sanofi is ranked the fourth world’s largest multinational company by prescription sales. The company was formed as Sanofi-Aventis in 2004 by merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. In India Sanofi operates through five entities, one of which is Sanofi India Limited.
The Complainant owns numerous national and international trademarks for a wide range of goods and services including pharmaceutical products and medical services, the marks consisting of and/comprising the word SANOFI, e.g.:
- French trademark registration No. 1482708 SANOFI, registered as early as August 11, 1988;
- Community trademark registration No. 004182325 SANOFI, registered on February 9, 2006;
- International trademark registration No. 1092811 SANOFI, registered on August 11, 2011, designating more than 50 countries, among others Australia, South Korea, Russia, Japan.
The Complainant is – among others – the registrant of the domain names registered on October 13, 1995, registered on March 12, 2006, registered on October 10, 2006, registered on November 19, 2001, registered on August 24, 2001 and uses these domain names in connection with its business activity.
On May 16, 2012, Sanofi issued a press release in Mumbai, India, advising that the Registrar of Companies approved the change of name of Aventis Pharma Limited to Sanofi India Limited with effect from May 11, 2012.
The disputed domain name was obtained on May 16, 2012, and has since been parked with the Registrar.
On June 20, 2012, the Complainant emailed the Respondent, advised that the registration and use of the disputed domain name constitutes violation of its rights in and to the SANOFI trademark, and requested transfer of the disputed domain name without any delay. In its response of the same day, the Respondent wrote that “they acquired the domain name from other people at high price” and set the transfer amount at EUR 2,500. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its SANOFI trademark. It incorporates the Complainant’s SANOFI trademark in its entirety, and the addition of the word “india” is not only insufficient to avoid confusion, it in fact increases the inherent risk of confusion.
The Complainant further submits that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name, and no license or any other authorization has been given to the Respondent to use the SANOFI trademark in any way.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The registration date of the disputed domain name matches the press release date of the Complainant’s Indian subsidiary on a name change corresponding to the disputed domain name, and this, according to the Complainant, indicates that the Respondent must have been aware of the risk of deception and confusion that would arise from registration of the disputed domain name.
The Complainant asserts that the Respondents’s parking of the disputed domain name at a parking website is for the sole purpose of selling it, as well as its offer to sell the disputed domain name to the Complainant for an amount considerably higher than the registration costs also prove that the Respondent registered and uses the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in the WIPO UDRP Panel Decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) that a respondent’s default does not automatically result in a decision in favor of the complainant.
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent and registrant of the disputed domain name has no rights or legitimate interest 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
Under this paragraph, there are two requirements which the Complainant must establish, first that it has rights in a trade or service mark, second that the disputed domain name is identical or confusingly similar to the mark.
It has been a consensus among the UDRP panels that if the complainant owns a registered trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence that it holds numerous registrations for the mark SANOFI throughout the world. For the purpose of this proceeding, the Panel established that the Complainant’s valid French trademark registration No. 1482708 SANOFI, registered on August 11, 1988; Community trademark registration No. 004182325 SANOFI, registered on February 9, 2006; and International trademark registration No. 1092811 SANOFI, registered on August 18, 2011 satisfies the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in SANOFI, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the trademark.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold for confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name fully incorporates the Complainant’s SANOFI trademark, with the addition of the geographical term “india” to it.
The trademark SANOFI is neither a common, nor descriptive word; it connects to the business and products of the Complainant. Mere use of the geographical name “india” (designating the country name India) in the disputed domain name otherwise identical with the Complainant’s SANOFI trademark does not eliminate confusing similarity with the Complainant’s trademark; it, in fact, increases it. Consumers would likely believe that the disputed domain name is connected to, or associated with the Complainant and its business in India.
For all these reasons, the Panel finds that the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services before any notice to;
(ii) they have been commonly known by the disputed domain name;
(iii) they are 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.
In the present case, the Complainant submitted uncontested evidence that it holds well-established rights in the trademark SANOFI.
The Complainant never gave permission to the Respondent to use its SANOFI trademark in any way.
The Complainant’s prior rights in the trademark SANOFI long preceded the date of registration of the disputed domain name.
Pursuant to the WIPO Overview 2.0, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of a domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so failed to offer this Panel any of the types of evidence set forth in paragraph 4(c) of the Policy. The above-discussed evidence and facts submitted by the Complainant in regard to making out this requirement of the Policy convince the Panel that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name;
(ii) you have 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 you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your web site or location of a product or service on your website or location.”
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
On the contrary, the fact that the disputed domain name resolves to an effective parking website (irrespective of whether this results in generation of incidental revenue from advertising referrals) with the ultimate purpose of selling the disputed domain name, either to the highest bidder, or to the Complainant (as the Respondent tried to) is evidence of registration and use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy to this Panel.
On June 20, 2012, the Complainant wrote to the Respondent to assess its intent in connection with the disputed domain name. The Respondent promptly replied and offered to transfer the disputed domain name to the Complainant for EUR 2,500. The Respondent’s offer to sell the disputed domain name for a sum substantially more than his out-of-pocket expenses is clear evidence, to this Panel, that the disputed domain name was registered and is being used in bad faith.
Furthermore, registration of the disputed domain name took place on the same day that the Complainant publicly announced change of name of its Indian subsidiary from Aventis Pharma Limited to Sanofi India Limited, which except for the word “limited” matches the disputed domain name. For this Panel, it is inconceivable that the Respondent was not fully aware that the disputed domain name would correspond to the Complainant’s business in India. The Panel is satisfied that the Respondent deliberately registered the disputed domain name in bad faith.
For all the above discussed reasons the Panel finds that the disputed domain name has been registered and used in bad faith and the Complainant has satisfied paragraph 4(a)(iii). 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 be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Dated: August 27, 2012
Full & Egal Universal Law Academy