The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Tulip Trading Company of Charlestown, Nevis, Saint Kitts and Nevis / On behalf of OWNER / c/o Ltd. of Auckland, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2015. On October 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2015 and October 15, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 9, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2015. On October 20, 2015 the Complainant sent by email to the Center a request for the suspension of the proceeding. On October 20, 2015 the proceeding was accordingly suspended. On November 16, 2015, the Complainant sent by email to the Center a request for the reinstitution of the proceeding, which the Center confirmed on the same day. The Response due date was accordingly amended to December 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2015.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on December 11, 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 Sanofi, a multinational pharmaceutical company headquartered in Paris (France), ranking as the world's fourth largest multinational pharmaceutical company by prescription sales. Complainant owns many trademark registrations in different classes and domain names worldwide:
- French trademark for SANOFI (Registration nº 1482708), registered on August 11, 1988;
- French trademark for SANOFI (Registration nº 92412574, registered on March 26, 1992;
- International trademark for SANOFI (Registration nº 591490), registered on September 25, 1992;
- French trademark for SANOFI (Registration nº 96655339), registered on December 11, 1996;
- International trademark for SANOFI (Registration nº 674936), registered on June 11, 1997;
- Community trademark for SANOFI (Registration nº 000596023), filed on July 15, 1997;
- New Zealand trademark for SANOFI (Registration nº 278295), registered on October 15, 1998;
- Community trademark for SANOFI (Registration nº 004182325), filed on December 08, 2004;
- French trademark for SANOFI (Registration nº 3831592), registered on May 16, 2011;
- French trademark for SANOFI (Registration nº 3831592), registered on May 16, 2011;
- Community trademark for SANOFI (Registration nº 010167351), filed on August 02, 2011;
- International trademark for SANOFI (Registration nº 1092811), registered on August 11, 2011;
- International trademark for SANOFI (Registration nº 1094854), registered on August 11, 2011;
- International trademark for SANOFI (Registration nº 1091805), registered on August 18, 2011;
- United States of America trademark for SANOFI (Registration nº 4178199), registered on July 24, 2012.
- registered on October 13, 1995;
- registered on July 12, 2001;
- registered on August 24, 2001;
- registered on November 19, 2001;
- registered on May 16, 2002;
- registered on May16, 2003;
- registered on January 05, 2004;
- registered on March 12, 2006;
- registered on June 20, 2006;
- registered on October 10, 2006;
- registered on March 17, 2011;
- registered on March 18, 2011;
- registered on April 17, 2015.
The disputed domain name was registered on September 30, 2015. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name reproduces the SANOFI trademarks and domain names, which do not have any particular meaning and are therefore highly distinctive. The Complainant argues that the disputed domain name comprises an exact reproduction of the Complainant's trademark; combined with a geographical location and followed by a generic Top-Level Domain suffix ".com".
The Complainant affirms that the disputed domain name is confusingly similar to the above cited trademarks, regardless the adjunction of the geographical extension "us" which remains purely descriptive as it commonly stands for the United States of America ("USA").
The Complainant argues that the addition of the geographical location to a trade mark does not prevent the disputed domain name from being confusingly similar to the trademark. It can only be found that the Respondent selected the disputed domain name in a specific attempt of free-riding on the coat tails of the fame of the Complainant's SANOFI trademarks.
The Complainant asserts the Respondent has no rights or legitimate interests in the disputed domain name.
Moreover, the Complainant alleges that the Respondent is intentionally creating a likelihood of confusion between the disputed domain name and the Complainant's prior trademarks and domain names. It could lead average consumers to mistakenly believe that the disputed domain name is related to the Complainant's official websites pertaining to the firm's activities in the USA.
As well, the Complainant affirms that the lack of active use of a domain name does not prevent a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph (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 in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on the Complainant. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is indeed confusingly similar to Complainant's marks.The Panel also finds that the mere adjunction of the term "us" to the trademark SANOFI is not enough to distinguish the disputed domain name from one that may be legitimately associated with the Complainant's marks and to escape a finding of confusing similarity.
The Panel, therefore, finds that the Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain name. Consequently, there is no relationship whatsoever between the parties.
With respect to the paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name.
Considering the fact that the Respondent has chosen not to file a response to the Complaint, this Panel finds that there is nothing to suggest that the Respondent has or might have rights or legitimate interests in respect of the disputed domain name. In fact, previous decisions under the Policy have found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent's default.
In view of the above, as the Panel cannot find any indication of any circumstances that indicate the Respondent's rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to Complainant's marks and domain names and has been used as a referral portal which contains number of hyperlinks offering various kinds of services and products. In fact, the Respondent has used the disputed domain name to divert Internet users to a typical parking website with links to commercial websites, in order to take benefit from the Complainant's reputation for commercial profit.
Based on all the above facts, it is highly unlikely that the Respondent was not aware of the Complainant's trademark rights when the disputed domain name was registered.
The Panel notes that the allegations of bad faith made by the Complainant were not contested, as the Respondent did not reply to the Complaint. Examining the evidence provided by the Complainant, it is confirmed that its trademarks have been in use long before the disputed domain name was registered, including in the Complainant's own domain names. For such reasons, the Panel finds that the Respondent must have been aware of the Complainant's trademark when it registered the disputed domain name.
There are no facts set out in the available record which could conceivably justify the registration of the disputed domain name by the Respondent.
In view of the above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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.
Luiz E. Montaury Pimenta
Sole Panelist
Date: December 23, 2015
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