The Complainants are Sanofi of Paris, France and Genzyme Corporation of Cambridge, Massachusetts, United States of America (“US”), represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, US / Scott Scanlon of Appleton, Wisconsin, US. 2. The Domain Name and Registrar
The disputed 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 disputed domain name. On June 8, 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 Complainants on June 9, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on June 9, 2016.
The Center verified that the Complaint and 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 proceedings commenced on June 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2016.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 9, 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 Complainants are Sanofi and Genzyme Corporation. Sanofi is the registered owner of numerous trademark registrations for SANOFI, in particular, US trademark SANOFI No. 4178199 filed on August 12, 2011, and registered on July 24, 2012, amongst others for goods in class 5, i.e., pharmaceuticals. Genzyme Corporation is the registered owner of numerous trademark registrations for GENZYME, in particular US trademark GENZYME No. 1859429 filed on September 27, 1993, and registered on October 25, 1994, for goods in class 5, namely pharmaceutical preparation for use as an enzyme replacement and for the prevention of adhesions during surgery.
The Respondent registered the disputed domain name on January 27, 2016. It results from the Complainants’ documented allegations that no content is displayed on the website to which the disputed domain name resolves. 5. Parties’ Contentions A. Complainant
The Complainants allege that Sanofi is a French multinational pharmaceutical company headquartered in Paris, France, ranking as the world’s fourth largest multinational pharmaceutical company by prescription. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale. Sanofi is settled in more than 100 countries on all five continents employing 110,000 people. In addition, the Complainants state that Genzyme Corporation is an American biotechnology company founded in 1981 and owned by Sanofi. In 2010, Genzyme Corporation was the world’s third-largest biotechnology company employing more than 11,000 people around the world. As a subsidiary of Sanofi, it has a presence in approximately 65 countries, including 17 manufacturing facilities and nine genetic-testing laboratories; its products are sold in 100 countries. Additionally the Complainants hold domain name registrations containing the terms “sanofi” and “genzyme” and which were registered long before the disputed domain name. Most of these domain names are registered and used by the Complainants in connection with their activities.
On March 15, 2016, a cease-and-desist letter was sent by email to the Respondent on behalf of SANOFI Group in which it was explained that the use of the disputed domain name constituted a breach of the prior rights resulting from the trademarks SANOFI and GENZYME and immediate transfer of the disputed domain name was requested. The Respondent did not answer to this letter.
The Complainants contend that the disputed domain name is confusingly similar to the SANOFI and GENZYME trademarks, domain names and corporate names. In particular, the disputed domain name incorporates both trademarks, which as themselves do not have any particular meaning and are therefore highly distinctive. In addition, the Complainant Sanofi has used its trademark and trade name SANOFI for over 40 years and promotes it in countries all over the world. As a consequence, the Complainants ascertain that the SANOFI trademark benefits from a reputation. According to the Complainants, the disputed domain name is therefore the exact reproduction of the trademarks SANOFI and GENZYME combined with the acronym “mtgs”, which is commonly used to designate the “Meeting of Teachers of Geotechnical Subjects”.
The Complainants further contend that the Respondent has no prior rights or legitimate interests in the disputed domain name, since the Respondent’s name does not bear any resemblance with the trademark SANOFI which has no meaning and is highly distinctive. Furthermore, the Complainants have not licensed or otherwise authorized the Respondent to use their trademarks or to register any domain name including those trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is it using it in connection with a bona fide offering of goods or services. In fact, the disputed domain name simply resolves to an inactive page.
Finally, the Complainants contend that the Respondent registered and uses the disputed domain name in bad faith. In particular, they contend that the disputed domain name has been registered in bad faith for the primary purpose of gaining unfair benefit of the Complainants’ reputation. The absence of legitimate interests induces the absence of good faith. Furthermore, the Complainants hold that in view of the trademarks’ distinctiveness the Respondent is likely to have known of the existence of the trademark when registering the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use thereof. Furthermore, according to the Complainants, the disputed domain name has been registered for attracting Internet users to the Respondent’s website by creating a likelihood of confusion, or at least an impression of association, between the trademarks and the disputed domain name. In this regard, the Complainants hold that Sanofi is one of the world leading pharmaceutical companies and that both trademarks – SANOFI and GENZYME – enjoy a worldwide reputation. According to the Complainants the Respondent must therefore have been aware of the risk of deception and confusion that would arise from the registration of the disputed domain name, since it could lead Internet users to the litigious page while they were searching for the Complainants’ official website. Moreover, the Complainants contend that the fact the disputed domain name is not being used could lead Internet users to believe that the Complainants are not present on the Internet or worse, that the Complainants are out of business. Finally, the Respondent’s failure to express explanation in response to the cease-and-desist letter reinforces the inference of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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 Panel is satisfied that the Registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
The Panel is of the view that both Complainants, one being the parent company of the other, have a common grievance against the Respondent, and allows the Complaint to proceed to a decision as filed by multiple complainants. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainants must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights.
The Complainant Sanofi is the registered owner of numerous trademark registrations for SANOFI, in particular, US trademark SANOFI No. 4178199 filed on August 12, 2011, and registered on July 24, 2012, amongst others for goods in class 5. Furthermore, the Complainant Genzyme Corporation is the registered owner of numerous trademark registrations for GENZYME, in particular US trademark GENZYME No. 1859429 filed on September 27, 1993, and registered on October 25, 1994, for goods in class 5. These trademarks and the Complainants’ corporate names predate the registration date of the disputed domain name which is January 27, 2016.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Multi Media, LLC v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1039; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). This is the case in the present proceeding where the Complainants’ registered trademarks SANOFI and GENZYME are fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainants’ registered trademarks SANOFI and GENZYME as its distinctive elements with the element “mtgs” which the Complainants maintain is the acronym of “Meeting of Teachers of Geotechnical subjects” and therefore descriptive. The Complainants did, however, fail to submit evidence of how the alleged meaning of the acronym “mtgs” could be applicable as a descriptive term in the pharmaceutical sector covered by the trademarks SANOFI and GENZYME. Nevertheless, the Panel is of the view that the diverging element “mtgs” is as such insufficient to distinguish the disputed domain name from the trademarks SANOFI and GENZYME, which are fully included in the disputed domain name. The addition of the element “mtgs” is therefore insufficient to exclude the association of the Complainants’ trademarks with the disputed domain name.
The Panel has therefore no doubt that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainants must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the unrebutted allegations stated above, the Complainants have made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g., Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
Finally, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants are therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainants must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the Complainants’ undisputed allegations, the Respondent does not actively use the disputed domain name. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of active use (e.g., to resolve to a website) 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 (see Sanofi, Genzyme Corporation v. Domain Privacy, supra; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel,WIPO Case No. D2016-0068; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel must therefore 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 (see WIPO Overview of WIPO Panel Views on Selected Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2 with further references, and Sanofi, Genzyme Corporation v. Domain Privacy, supra; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra).
In the case at hand, the Registrar disclosed the Respondent’s identity and contact information, so that the Respondent could be identified. However, this Panel finds that the further circumstances surrounding the registration, i.e., the Respondent’s failure to reply to the Complainants’ cease-and-desist letter, its failure to respond to this Complaint and the undisputed reputation of the SANOFI trademark, in particular also in the US, where the Respondent is located, supported by the evidence provided by the Complainant, suggest that the Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith (see Sanofi, Genzyme Corporation v. Domain Privacy, supra; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra; America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460). This finding is supported by the further circumstance that the Complainants’ registered trademarks SANOFI and GENZYME as well as their company names have existed for many years. This Panel therefore concludes that the Respondent knew or should have known at least the trademark SANOFI when it registered the disputed domain name, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain name.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainants are therefore deemed to also have satisfied the third element, 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.
Tobias Malte Müller
Sole Panelist
Date: August 23, 2016
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