The Complainant is Sanofi of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is vddfwees qqweadsgg of 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 October 9, 2013. On October 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2013, 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 October 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2013.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 25, 2013. 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
4.1 The Complainant asserted, and provided evidence in support of, and the Panel finds established, the following facts.
Complainant’s Activities
4.2 The Complainant is a French multinational pharmaceutical company headquartered in Paris, France, employing more than 110,000 people in more than 100 countries.
As a full member of EFPIA (European Federation of Pharmaceutical Industries and Associations), the Complainant which was formed as Sanofi-Aventis in 2004 after the merger of Sanofi-Synthélabo and Aventis and which in 2011 changed its name to Sanofi, with consolidated net sales of about EUR 33.3 billion in 2011 and EUR 34.9 billion in 2012 is the 4th world’s largest pharmaceutical company by prescription sales. It engages highly in R&D – with an investment of approximately EUR 4.9 billion in 2012 – as well as in the manufacturing and marketing of pharmaceutical products.
Complainant’s Trading Name and Trademarks
4.3 The Complainant has traded under the name “Sanofi” at least since 2004 outside as well as inside France. It is the proprietor of more than 4 registrations in France of trademarks consisting of or containing the word “sanofi”. The various trademark registrations and applications cover an extensive range of goods and services, and span 16 of the 42 trademark classes. In addition, the Complainant has registered a range of trademarks of or containing the word “sanofi” in the European Union as well as a large number of countries, such as Australia, Cuba, Georgia, Japan, Romania, Russia, South Korea, Switzerland and Ukraine. Finally, it has also obtained various trademark registrations consisting of or containing the word “sanofi” in China.
Details of the trademark registrations are set out in Annexure 8 to the Complaint.
Complainant’s Domain Names and Web Sites
4.4 The Complainant is the registrant of the following domain names containing the word “sanofi”:
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4.5 Most of these domain names are used by the Complainant in connection with its activity.
Respondent’s Identity and Activities
4.6 The Respondent is the registrant of the disputed domain name , the Registrar of which is God, LLC. The disputed domain name does not resolve to a web site or other on-line presence. The Respondent registered the disputed domain name on September 28, 2013.
4.7 The postal address of the Respondent and its contact details, as contained in the Registrar’s WhoIs database, do not exist. Accordingly, it is not possible to identify the legal entity conducting business in China under the Respondent’s name. 5. Relevant Provisions of the Policy
5.1 Paragraph 4(a) of the Policy sets out three elements which must be present for a proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy. It provides as follows:
A domain name holder is required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The complainant must prove that each of the above elements are present.
5.2 Paragraph 4(b) identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registration or acquisition of the domain name was 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 valued consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) the registration of the domain name was done to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that this activity creates a pattern of such conduct; or
(iii) the registration of the domain name was primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain name holder’s web site or location or of a product or service on such web site or location.
5.3 Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests to the disputed domain name for the purposes of paragraph 4(a)(ii). The provisions are as follows:
(i) 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) as an individual, business, or other organization, the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 6. Parties’ Contentions Complainant
6.1 The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute. In relation to element (i), the Complaint contends that the relevant part of the disputed domain name is “sanofi”, and that this is clearly identical with or confusingly similar to the various trademarks for the word “sanofi” which are registered and owned by the Complainant.
6.2 In relation to element (ii), the Complainant contends that the word “sanofi” is an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complaint further contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those trademarks. Lastly, the Complainant contends that the Respondent is not 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. Accordingly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
6.3 In relation to element (iii), the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.
Registration in bad faith
6.4 Firstly, the Respondent’s name does not bear any resemblance with the word “sanofi”. Accordingly, the Respondent has neither prior rights nor legitimate interests to justify the registration or use of the disputed domain name. Secondly, the Complaint contends that the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s web site by creating a likelihood of confusion between the worldwide well known SANOFI trademarks and domain names and the disputed domain name . Thus, it would be inconceivable that the persons or person behind the Respondent would not be aware of this fact. Thirdly, the Complainant contends that the disputed domain name has been registered in bad faith given that the Respondent indicated a wrong identity and address. Accordingly, the Respondent is in breach of its warranty under paragraph 2(a) of the Policy. Finally, the Complainant contends that another indication of a bad faith registration lies in the fact that the disputed domain name had been registered by the Respondent immediately after the end of September 2013 pursuant to a very recent decision ordering its cancellation. Indeed, the domain name had been cancelled in Sanofi v. Chen-Hao,WIPO Case No. D2013-0922 rendered on July 15, 2013.
Use in bad faith
6.5 Firstly, the Complainant contends that given the famous and distinctive nature of the trademark SANOFI the Respondent had acted with opportunistic bad faith upon registering the disputed domain name in order to make an illegitimate use. Secondly, even though the disputed domain name resolves to an inactive web site, it has been established in many UDRP cases that passive holding falls within the concept of the domain name being used in bad faith. Finally, the Complaint contends that the lack of use of the disputed domain name is likely to cause significant prejudice to its general goodwill since users could be led to believe that the Complainant is not on the Internet or even out of business. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings Identical or Confusingly Similar
7.1 The disputed domain name is . The relevant part of this domain name is “sanofi”, cf. Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903; Merck Sharp & Dohme Corp. f/k/a Merck & Co., Inc. v. Zhangxiangqiong, WIPO Case No. D2011-1898.
The Panel finds that this part of the disputed domain name is identical to the numerous trademark registrations of the word “sanofi” held by the Complainant. Besides, the Panel finds that the disputed domain name as a whole is confusingly similar to those trademark registrations as the adding of the word “sun” does not eliminate the confusing similarity between the Complainant’s registered SANOFI trademarks and domain names and the Respondent’s disputed domain name .
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied. Rights or Legitimate Interests
7.2 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word “sanofi” appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith
7.3 It has been established with some varying opinions that the Complainant is required to prove registration in bad faith as well as use in bad faith, cf. Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
7.4 The Complainant proved that the disputed domain name has been registered in bad faith by the Respondent. In light of facts established in paragraphs 4.6 and 4.7, the Panel finds that there is no evidence that the Respondent conducts any legitimate commercial or noncommercial business activity in China or anywhere else. Furthermore, the Panel finds that the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communications with it cannot be made. Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the word “sanofi”, as evidenced by facts established in paragraphs 4.2 to 4.5, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name . It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding in paragraph 7.2 that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.
7.5 The Complainant proved that the disputed domain name is being used in bad faith by the Respondent. While the disputed domain name resolves to an inactive web site, it has been established in Telstra supra that passive holding of a domain name may fall under the concept of the domain name being used in bad faith. The question that then arises is what circumstances of inaction can constitute a domain name being used in bad faith. Since this cannot be answered in the abstract, the Panel considers whether the passive holding of a domain name satisfies the requirement of paragraph 4(a)(iii) and thus must give close attention to all the circumstances of the Respondent’s behavior. A remedy can only be obtained for the Complainant if those circumstances amount to an acting in bad faith.
7.6 After having considered all circumstances of the Respondent’s behavior, the Panel concludes that in this case the passive holding of the disputed domain name amounts to an acting in bad faith.
The particular circumstances are:
(i) the Complainant’s trademark has a strong reputation and is widely known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a made-up name;
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name is being used in bad faith by the Respondent. 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 be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: December. 3, 2013
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