The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Financeiro depsp of Sao Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2015, 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 March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2015.
The Center appointed Dietrich Beier as the sole panelist in this matter on April 9, 2015. 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 Complainant is a multinational company settled in more than 100 countries on all 5 continents employing 110,000 people. With consolidated net sales of Euro 34.94 billion in 2012 and Euro 32.95 billion in 2013 the Complainant ranks as the 4th world's largest multinational pharmaceutical company by prescription sales. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication.
Historically, the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011.
The Complainant is proprietor of numerous registered trademarks, among them Community trademark SANOFI number 004182325, filed on December 8, 2004 and registered on February 9, 2006 in classes 01 ; 09 ; 10 ; 16 ; 38 ; 41 ; 42 ; 44 notably concerning notably products in pharmaceutical and medical spheres.
The disputed domain name was registered on July 8, 2014. Currently, the disputed domain name resolves to a website indicating that an ICANN verification is pending. 5. Parties’ Contentions A. Complainant
The Complainant is of the opinion that the disputed domain name reproduces the SANOFI trademarks and domain names, which, as themselves, do not have any particular meaning and are therefore highly distinctive. The Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes, and sells a wide variety of pharmaceutical products under the trademark and trade name SANOFI. It has used its SANOFI trademark and trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI trademarks in countries all over the world, including in Brazil. Any registration or use of a similar domain name is likely to create a likelihood of confusion by Internet users.
Therefore, the reproduction of the Complainant’s trademarks as the dominant part of the disputed domain name is confusingly similar to Complainant’s trademarks, regardless of the adjunction of the purely descriptive and generic word “farmaceutica”, meaning “pharmaceutical” in English and internationally known and understood as such.
The Complainant asserts that the Respondent does not have any legitimate interests in the disputed domain name since the Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide trademarks and domain and corporate names of the Complainant.
The Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. There is no relationship between the parties. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is it 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.
The Respondent has registered in bad faith the disputed domain name corresponding to the trademarks and domain and corporate names owned by the Complainant. This behavior can in no way be the result of a mere coincidence since the Respondent does not have any legitimate interest in registering or in using the disputed domain name and given the famous and distinctive nature of the Complainant’s trademarks the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s marks at the time it registered the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in having registered the disputed domain name in order to make an illegitimate use of it. Furthermore, the disputed domain name has obviously been registered for the purpose of attracting Internet users to the Respondent’s website and of taking unfair benefit from its reputation and goodwill, by creating a likelihood of confusion – or at least an impression of association – between the Complainant’s trademarks and domain and corporate names and the disputed domain name. Due to the fact that the disputed domain name resolves to an inactive website pending ICANN verification, thereby constituting passive holding, the disputed domain name must be considered as being used in bad faith, as established by prior UDRP panels. Furthermore, the lack of use of the disputed domain name particularly close to those used by the Complainant is likely to cause irreparable prejudice to Complainant’s general goodwill because users could be led to believe that the Complainant is not on the Internet or worse, that the Complainant is out of business and cannot be contacted anymore. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 with respect to 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
The Complainant has established the fact that it has valid trademark rights for SANOFI in several classes. The disputed domain name is confusingly similar to the SANOFI marks since the addition of “farmaceutica” in the disputed domain name is of a purely descriptive nature and does not change the overall impression being created by the dominating element “sanofi” being used identically.
The Panel therefore considers the disputed domain name to be confusingly similar to the trademarks SANOFI in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name, since there is no indication that the Respondent is commonly known by the name “SANOFI” or “sanofifarmaceutica” or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Due to the well-known nature of the Sanofi mark, the Respondent must have been aware of the Complainant and its trademarks when registering the disputed domain name. The Complainant has not authorized the Respondent to make use of its trademarks. From the record, the Panel does not see any conceivable legitimate use being made by the Respondent of the disputed domain name.
The circumstances of this case, in particular the fact that the SANOFI marks are well-known for pharmaceuticals indicate that the Respondent registered and uses the disputed domain name in bad faith.
It is the consensus view of previous UDRP panels following the decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark and no response to the complaint having been filed.
The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) 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, be transferred to the Complainant.
Dietrich Beier
Sole Panelist
Date: April 22, 2015
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