The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Ernest Medina of Sterling, Virginia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2016, 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 March 30, 2016, 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 April 4, 2016. The Complainant filed a second amendment to the Complaint on April 7, 2016.
The Center verified that the Complaint together with the amendments 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 proceedings commenced on April 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2016.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 10, 2016. 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 French multinational pharmaceutical company. The Complainant is the fourth largest pharmaceutical company in the world by prescription sales. The Complainant is the proprietor of the trademark SANOFI, registered in various countries and jurisdictions, including, inter alia, European Union Trademark SANOFI, Registration No. 596023, registered on February 1, 1999.
The disputed domain name was registered on March 24, 2016. The disputed domain name does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant is present in more than 100 countries and employs some 110,000 employees. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products principally in the prescription market, but also develops over-the-counter medication.
The Complainant's trademark is well known, as held by several previous UDRP panels, and the disputed domain name includes it in its entirety. The disputed domain name merely doubles the first letter of the Complainant's trademark, which is not sufficient to remove likelihood of confusion. This is a case of typosquatting.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise allowed the Respondent to use its trademark or the disputed domain name.
Given the fame of the Complainant's mark, the Respondent must have been aware of the same when registering the disputed domain name. The disputed domain name has been registered for the purpose of attracting Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark.
The disputed domain name is not in use. Considering that the Complainant's trademark is well known, such passive holding constitutes bad faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Under the second element, a complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. According to the third element, a complainant must establish that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has shown that it is the proprietor of the registered trademark SANOFI. The disputed domain name includes the Complainant's trademark in its entirety. The only difference is that in the disputed domain name, the first letter of the Complainant's trademark is doubled.
Doubling a domain name's first letter may be considered a common misspelling. Hence, the Panel finds that the addition of the letter "s" to the Complainant's trademark does not remove the confusing similarity between the Complainant's trademark and the disputed domain name, and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has submitted that the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise allowed by the Complainant to use the Complainant's trademarks in a domain name or otherwise. The Respondent has not rebutted these arguments.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel's findings below, the Panel finds that there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, 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 respondent has] registered or has 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 [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The Panel agrees with the Complainant and previous UDRP panels that the Complainant's trademark SANOFI is a widely known trademark around the world. Considering this, it is unlikely that the Respondent would not have been aware of the Complainant's trademark when registering the disputed domain name.
The disputed domain name does not resolve to any active website and is therefore not in use. The disputed domain name is therefore passively held by the Respondent. The consensus view of UDRP panels is that passive holding does not prevent a finding of bad faith, see paragraph 3.2 of the WIPO Overview 2.0.
The Panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.
In this case the disputed domain name is passively held, the Complainant's trademark is widely known, and the Respondent has not responded to the Complaint. All these circumstances cumulatively lead the Panel to conclude that the disputed domain name has been registered and is being used in bad faith.
Therefore, the Panel finds that the third element of the Policy has been fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: May 19, 2016
Full & Egal Universal Law Academy