The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Jeff Goering of Telford, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “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 June 7, 2016. On June 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 8, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2016. On June 14, 2016, the Respondent sent an informal email communication consenting to the cancellation of the Domain Name. On June 17, 2016, the Center acknowledged receipt of the Respondent’s communication. The Parties discussed settlement in further email correspondence from June 17, 2016 until June 28, 2016. On June 28, 2016, the Complainant requested a 30-day suspension of the proceeding. On June 29, 2016, the Center confirmed that the proceeding was suspended until July 29, 2016.
On July 29, 2016, the Complainant asked that the proceeding be reinstituted. The Center confirmed reinstitution of the proceeding on August 5, 2016. The Respondent was allowed to submit a Response by August 10, 2016. No further communication or Response was received by the Center. Accordingly, on August 11, 2016, the Center notified the Parties that the Center would proceed to appoint the Administrative Panel.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 17, 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 engages in research and development, manufacturing and marketing of pharmaceutical products for sale in the prescription market, and it develops over-the-counter medication. The Complainant is established in more than 100 countries, employing 110,000 people.
The Complainant holds trademark registrations in many countries, including United States Patent and Trademark Office Registration No. 85396658, which was registered on July 24, 2012 in the United States where the Respondent is located.
The Respondent registered the Domain Name on April 13, 2016.
The Domain Name resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant has documented its trademark registrations in the Complaint. The Complainant argues, with reference to former WIPO UDRP decisions, that SANOFI is a well-known trademark. Further, that the Domain Name is confusingly similar to the Complainant’s trademarks and domain names regardless of the added “retirefrom”. There is an inevitable risk that the disputed domain name will cause confusion, as it leads consumers to believe that the Domain Name is related to the official SANOFI websites.
The Complainant argues that the Respondent has not been commonly known by the Domain Name, nor that the Respondent has any history of using the Domain Name in connection with a bona fide offering of goods and services. There is no relationship whatsoever between the parties and the Complainant argues that the Respondent has modified the Complainant’s trademark for its own use and incorporated them into his Domain Name without the Complainant’s authorization. The Complainant argues that the fact that the Domain Name points to an inactive page does not provide a legitimate interest under the Policy.
Finally, the Complainant repeats that the Complainant is well-known, and that the Domain Name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating an impression of association with the SANOFI trademarks and domain names. The Respondent must have been aware of the risk of deception and confusion that would arise from the registration. This indicates bad faith. The parking of a registration identical to a well-known trademark also points to bad faith. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith. B. Respondent
The Respondent replied to the Complaint through an email to the Center, in which the Respondent states:
“This was the first communication that I am aware of - while representatives of Sanofi claim to have sent a cease and desist communication via email, there is no way I could have delineated between that communication and ‘spamlike’ activity.
I did not open that email until I had received the current notice and correspondence.
While I don’t think their claims are valid, just, or correct - be asured I had no intentions of selling the domain or using it for commercial purposes that would compete or harm Sanofi.
The purpose of the domain was to (eventually) provide an easy way for Sanofi employees to get additional retirement information in the USA.
It is not my intent or desire to battle or fight with Sanofi about this - I didn’t view the domain purchase as any hostile maneuver and wish to comply with certain requests made by Sanofi. As I have no experience in these dealings I wish to honor their request to cancel this domain. I have no idea how to communicate this wish or how to satisfy the request. There was no intent to harm. I had no idea that a simply domain purchase would create such a large issue.
Please advise, Jeff”.
To which the Complainant through its lawyer replied:
“Dear Mr. Goering,
In consideration of your email below, please be advised that our Client would be willing to terminate the pending proceedings against your domain name, provided you transferred said domain name at no cost to our Client. As I understand this is the case, please print, sign and scan the attached settlement form and send your signed version back to WIPO (by responding to all parties).
I remain at your disposal in case of need.”
The case was suspended, but as the Respondent never signed the settlement form, the case was reinstituted and forwarded for this Panel to decide. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark SANOFI.
The test for confusingly similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark with the addition of “retirefrom”. The Panel finds that the addition of the prefix adds to rather than reduces the risk of confusion.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent does not have registered trademarks or trade names corresponding to the Domain Name. Neither is there any evidence suggesting that the Respondent has been using “SANOFI” in a way that would give it legitimate rights in the Domain Name. The Complainant has not granted any authorization to the Respondent.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. It seems that the Respondent has chosen the Domain Name based on the Complainant’s trademark value.
As to the Respondent’s explanation, it has not been backed by any evidence. Even if the Respondent’s business plan were put into action, it would most likely not be a legitimate use of the Complainant’s trademark.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent was aware of the Complainant’s trademark and its business when he registered the Domain Name. The Complainant has used its trademark long before the registration of the Domain Name. The trademark is well known. The Panel finds registration in bad faith.
The Panel also finds use of the Domain Name in bad faith. The inactive website and the parking page of a domain name which is confusingly similar to a well-known trademark, and the explanation from the Respondent in this case, indicate bad faith use.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 cancelled.
Mathias Lilleengen
Sole Panelist
Date: August 22, 2016
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