Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is EAIG UAE of Nigeria. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Web4Africa Inc. (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. Despite multiple reminders sent to the Registrar, the Registrar did not respond to the Center's request for registrar verification. The Center notified the Parties and ICANN in this regard.
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 Respondent of the Complaint, and the proceedings commenced on June 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 21, 2016.
On July 4, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Registrar also confirmed that the Domain Name was locked, and that a lock would remain in place through the remaining pendency of the proceeding.
The Center appointed John C McElwaine as the sole panelist in this matter on July 27, 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
Sanofi is a multinational pharmaceutical company headquartered in Paris, France, ranking as the world's fourth-largest by prescription sales. In 2004, the company was formed as Sanofi-Aventis by the merger of Aventis and Sanofi-Synthélabo. Sanofi has locations in more than 100 countries on all 5 continents employing over 100,000 people.
Sanofi owns numerous trademarks throughout the world for the marks SANOFI AVENTIS or SANOFI-AVENTIS in multiple international classes, including 01, 03, 05, 09, 10, 16, 38, 41, 42 and 44 notably concerning pharmaceutical products. Evidence of such trademark registration is contained in Annexes 8.1 to 8.6 of the Complaint, and shows that International Trademark No. 839358 for SANOFI-AVENTIS was registered on October 1, 2004, and International Trademark No. 849323 for SANOFI AVENTIS was registered on February 17, 2005.
On March 29, 2016, Respondent registered the Domain Name. The Domain Name resolves to a placeholder page announcing that the website has been successfully installed on the server. 5. Parties' Contentions A. Complainant
Complainant asserts that it is a major player on the worldwide pharmaceutical market. Complainant has consolidated net sales of EUR 39.05 billion in 2015 and EUR 33.77 billion in 2014. In addition, Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, as well as the over-the-counter market.
With respect to the first element of the Policy, Complainant alleges that it owns two French and two European Union trademark registrations for SANOFI AVENTIS and SANOFI-AVENTIS, as well as two International Registrations for SANOFI AVENTIS and SANOFI-AVENTIS designating among other countries Australia, Georgia, Japan, the Republic of Korea, the United States of America, Switzerland, China, Cuba, Romania, the Russian Federation, and Ukraine. Annexes 8.1 to 8.6 of the Complaint. In addition, Complainant owns numerous domain names containing the words "sanofi-aventis." Annexes 9.1 to 9.12 of the Complaint. Complainant asserts that the Domain Name is confusingly similar to Complainant's SANOFIA AVENTIS marks and domain names. Complainant points out that the Domain Name is identical but for misspelling "Aventis" as "Asventis" and that incorporation of such a well-known trademark in a domain name is sufficient to establish confusing similarity.
With respect to the second element of the Policy, Complainant contends that the name EAIG UAE does not bear any resemblance or connection with the words "Sanofi Aventis". Further, Complainant alleges that Respondent has used false registrant contract details and that there is no relationship between Complainant and Respondent which might give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's SANOFI AVENTIS mark. Lastly, Complainant points out that Respondent is not making a legitimate noncommercial or fair use of the Domain Name nor is Respondent using the Domain Name with anything more than an inactive website.
With respect to the third element of the Policy, Complainant directs the Panel's attention to the fact that at least two prior panels have found that the mark SANOFI was sufficiently famous and well-known and that the respondents had constructive notice, if not actual notice, as to the existence of Complainant's marks at the time these respondents registered the disputed domain names. See Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta,WIPO Case No. D2016-0096; and Sanofi v. Bo Li, WIP Case No. D2013-1971. Complainant asserts that the same principle should be applied here. Complainant contends that it was obvious that Respondent did not have any legitimate interest in using the Domain Name since "EAIG UAE" does not bear any resemblance to the words "Sanofi-Aventis". Therefore, given the famous and distinctive nature of the SANOFI AVENTIS mark, Respondent must have acted with opportunistic bad faith in registering and using the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent 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.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the SANOFIA AVENTIS mark, which long predate the registration of the Domain Name.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 1.10, the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. Similarly, UDRP panels have consistently held that "a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights." Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302 ("Such insignificant modifications to trademarks is commonly referred to as 'typosquatting' or 'typo-piracy,' as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar".) Here, the addition of the letter "s" in "Asventis" is almost imperceptible and the Domain Name is unquestionably confusingly similar to the SANOFI AVENTIS mark. See Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini,WIPO Case No. D2000-0578 (finding that the domain names and were confusingly similar to THE WALL STREET JOURNAL). Also, the addition of the generic Top-Level Domain ("gTLD") ".com" to a domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of the gTLD is technically required to operate the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant's SANOFI AVENTIS mark. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. Complainant needs only to make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the disputed domain name. If Respondent fails to do so, Complainant can be deemed to have satisfied its burden under Policy paragraph 4(a)(ii). See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainant has demonstrated that the SANOFI AVENTIS mark is a unique coined word and there is no evidence in the WhoIs data for the Domain Name that Respondent has been commonly known by the term "Sanofi Asventis". Respondent did not use the Domain Name in connection with either a bona fide offering of goods and services or use in a legitimate noncommercial or fair manner.
Complainant asserts that Respondent is not a licensee of Complainant and Respondent is not authorized to use the SANOFI AVENTIS mark for any reason. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Complainant has made a prima facie showing of Respondent's lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Here Complainant argues that Respondent has engaged in an opportunistic bad faith registration of the Domain Name because the SANOFI AVENTIS mark is famous and there is no other good faith explanation for such an unauthorized registration.
This Panel finds that Complainant's SANOFI AVENTIS mark is well-known on an international basis. There is substantial authority stating that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, may be sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 ("the Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself"), citing Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Based on Complainant's submissions, it is clear that Respondent must have known of Complainant's SANOFI AVENTIS mark at the time of registration of the Domain Name, and therefore Respondent registered the Domain Name in bad faith. With no Response from Respondent, this claim is undisputed. The Panel further notes that the Domain Name is an obvious misspelling of the Complainant's trademark.
Furthermore, even though the website displayed at the Domain Name displays only a short message, under the circumstances discussed herein, the fact that Respondent may be passively holding the Domain Name can still be characterized as bad faith use. Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (passive holding of a domain name can be bad faith when complainant's mark has a strong reputation and respondent has provided no evidence of whatsoever of any actual or contemplated good faith use by it of the domain name).
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 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.
John C McElwaine
Sole Panelist
Date: August 10, 2016
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