The Complainants are Sanofi and Sanofi Biotechnology of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Takuya Jin of Tokyo, Hyogo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 December 2, 2016. The Complaint could be notified by email to the Respondent, but the Written Notice of the Complaint by courier failed because the address of the Respondent was incomplete or incorrect.
In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2016.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on January 19, 2017. 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 Sanofi Biotechnology, the latter being a subsidiary of Sanofi.
The Complainants are a multinational pharmaceutical company settled in more than 100 countries on all 5 continents with headquarters in Paris (France). The Company engages in research and development, manufacturing and marketing of pharmaceuticals products for sale mainly in the prescription market, but also in the framework of over-the-counter medication.
The Complainants have developed a drug under the trademark DUPIXENT for the treatment of adult patients with inadequately controlled moderate to severe atopic dermatitis.
The International trademark DUPIXENT (no. 1278059) was registered on October 28, 2015 in class 5 in the name of the Complainant Sanofi Biotechnology. The international registration designates Japan, among numerous other countries. In addition, the Complainant Sanofi Biotechnology has obtained registrations for DUPIXENT in class 5 in other countries including in the European Union (no. 014683916) (filed on October 15, 2015) and in the United States of America (no. 4978127) (filed on November 3, 2015).
The Complainant Sanofi Biotechnology has also registered the domain name on May 29, 2015 and the domain name on July 21, 2016.
On October 1, 2016, the Complainants issued a press release describing the potential effectiveness of the pharmaceutical product DUPIXENT and announcing that it would be commercialized if approved.
The disputed domain name was registered on October 5, 2016.
On November 9, 2016, the Complainants sent a cease-and-desist letter by email to the Respondent explaining why the use of the disputed domain name infringed the Complainants' prior rights for the trademark DUPIXENT and requested the transfer of the disputed domain name.
By email dated November 10, 2016, the Respondent answered that he would agree to transfer the disputed domain name in exchange of the amount of EUR 4,500. The Complainants replied the same day by email that they would not give any financial compensation to recover domain names that are infringing their trademark right. The Respondent made a last offer of EUR 2,800 by email on November 15, 2016.
Currently the disputed domain name leads to a parking page with the text " is coming soon". 5. Parties' Contentions A. Complainant
The Complainants' submissions may be summarized as follows:
The disputed domain name wholly incorporates the Complainants' registered DUPIXENT trademark, and this may be sufficient to establish confusing similarity for purposes of the Policy.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, as none of the circumstances contemplated in paragraph 4(c) of the Policy are present in this case. The term "dupixent" does not have a meaning and is therefore highly distinctive. There are no element justifying the reasons why the Respondent chose this particular name.
The Complainants also contend that the Respondent has registered and used the disputed domain name in bad faith. Indeed, the disputed domain name was registered one year after the registration of the trademark DUPIXENT. Moreover, the Respondent offered to transfer the disputed domain name in exchange of an amount of money exceeding out of pocket expenses. Finally, the disputed domain name is not used in connection to an active website.
The Complainants consequently request that the disputed domain name be transferred to the Complainants. B. Respondent
The Respondent did not submit a response to the complaint. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have established that they have rights in the trademark DUPIXENT.
The disputed domain name reproduces the Complainants' trademark in its entirety, with the addition of the expression "myway". The trademark DUPIXENT is the most distinctive element in the domain name. The Panel is of the opinion that the mere addition of an expression such as "myway", which suggests a personalized offer, does not change the overall impression produced by the domain name and is insufficient to avoid confusion. The disputed domain name is therefore confusingly similar to the Complainant's trademark according to paragraph 4(a)(i) of the Policy (See Banque Pictet & Cie SA v. Brian Dyson and David Kalan,WIPO Case No. D2016-1114; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168).
The Complainants have thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to WIPO Overview of WIPO Panel views of selected UDRP questions, second edition ("WIPO Overview 2.0), paragraph 2.1, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent, who has to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.
In this particular case, the Complainants make the following undisputed allegations:
- the Respondent is not a licensee of the Complainants, nor has the Complainants granted to the Respondent an authorization to use the disputed domain name;
- the Respondent has not prima facie secured trademark registration for DUPIXENT;
- the Respondent is not using the domain name as the website simply refers to an inactive page.
Moreover, there is no indication that the disputed domain name corresponds to the Respondent's name.
Finally, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel's inference that the Respondent's silence corroborates the Complainants' assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainants have satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The trademark DUPIXENT is a coined word without any descriptive meaning. The Respondent registered the disputed domain name approximately one year after the registration of the Complainants' trademark DUPIXENT in many countries, and just four days after the publication of an article, published on the Complainants' website, announcing the launch of the Complainants' new product DUPIXENT.
In this context, it is highly likely, in the Panel's opinion, that the Respondent had knowledge of the Complainants' trademark when he registered the disputed domain name.
Moreover, the Respondent reacted to the Complainants' cease-and-desist letter by offering to transfer the disputed domain name for EUR 4,500, i.e., an amount well exceeding the out-of-pocket expenses usually incurred for the registration of a domain name. The Respondent did not provide any explanation about the registration of the disputed domain name.
According to paragraph 4(b)(i) of the Policy, circumstances indicating that a respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name, shall be evidence of registration and use in bad faith.
In the present case, the high figure cited by the Respondent as the price requested for the transfer of the disputed domain name suggests that the Respondent registered the disputed domain name with a view to sell it to the Complainant (a well-known multinational company), even if the Respondent did not initiate contact.
The Policy requires complainants to demonstrate not only registration but also use in bad faith of a domain name. In the present case, it is undisputed that the domain name has never been connected to an active website. The consensus view of UDRP panelists is that passive holding of a disputed domain name may in certain circumstances be consistent with a finding of 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 (WIPO Overview 2.0, paragraph 3.2). The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In the case at hand, beside the Respondent's attempt to sell the disputed domain name at a price exceeding its out-of-pocket costs, the Panel finds it relevant to the appreciation of bad faith that the Respondent did not file a Response to the Complaint and that the contact details provided to the Registrar by the Respondent seemed to be incomplete or incorrect. These circumstances support in the Panel's view a finding of passive holding in bad faith.
Therefore, the Panel finds that the Complainants have satisfied the condition set forth in 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 transferred to the Complainants.
Anne-Virginie La Spada-Gaide
Sole Panelist
Date: February 2, 2017
Full & Egal Universal Law Academy