The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Marek Zdanowicz of Johannesburg, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2016. On December 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 10, 2017.
The Center appointed David J.A. Cairns as the sole panelist in this matter on January 17, 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 Complainant is a French multinational pharmaceutical corporation with headquarters in Paris, dedicated to research and development, manufacturing and marketing of pharmaceutical products for sale, mainly in the prescription market. The Complainant is a member of the European Federation of Pharmaceutical Industries and Associations.
The Complainant is the owner of many trademarks worldwide. These registrations include the European Union trademark No. 010167351 for the word mark SANOFI, registered on January 7, 2012, and the International trademark No. 1094854 for the word mark SANOFI registered on August 11, 2011.
The Complainant is also the owner of several domain names incorporating the SANOFI trademark, including the domain name , first registered on October 13, 1995.
The disputed domain name was registered on December 12, 2016. The Panel entered the disputed domain name on January 25, 2017 and found no webpage associated with the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant states that SANOFI is a widely known trademark and a major player in the worldwide pharmaceutical market, including in South Africa.
The Complainant states that the disputed domain name is confusingly similar to the Complainant's SANOFI trademark. It asserts that the disputed domain name imitates the well-known SANOFI trademark, which is highly distinctive and has no particular meaning. The Complainant states that the only difference between the Complainant's trademarks and the disputed domain name is the purposeful misspelling, namely, inversion of the letters "n" and "o" to create the word "saonfi". The Complainant asserts that this cannot be considered as a mere coincidence.
The Complainant states that the inversion of the letters is so insignificant from a phonetical and typographical point of view that it will be read, pronounced and understood as the Complainant's SANOFI trademark. It states that the practice of varying the disputed domain name from an existing trademark is called typosquatting, and that it is usually found by Panels to be a sign of confusion.
The Complainant asserts that the reputation of the Complainant's trademark enhances the likelihood of confusion. It cites numerous UDRP decisions in which panels have recognized the fame of the Complainant's SANOFI trademark.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It argues that the Respondent owns no licenses or other rights to use the Complainant's trademarks or register the disputed domain name. The Complainant adds that the Respondent's name, Marek Zdanowicz, does not resemble the Complainant's SANOFI trademark, which is highly distinctive.
The Complainant states that the Respondent is neither making a legitimate noncommercial or fair use of the disputed domain name nor a bona fide offering of goods or services since the website associated to the disputed domain name is inactive. The Complainant attaches a screenshot of the landing page on page 16 of the Complaint. The site only displays one message that reads "reserved for ".
The Complainant argues that the disputed domain name was registered in bad faith. It asserts that the registration of the disputed domain name cannot have been merely coincidental and that the Respondent must have had notice of the existence of the Complainant's trademark. It argues that this behaviour shows opportunistic bad faith and includes a series of UDRP decisions where panels have found opportunistic bad faith when the disputed domain name is confusingly similar to a well-known trademark.
The Complainant asserts that the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent's website by confusing the consumers and creating an impression of association between the SANOFI trademark and the disputed domain name. It notes that given the famous and distinctive nature of the SANOFI trademark the Respondent had, at least, constructive, if not actual notice, of the existence of the Complainant's trademarks and acting with opportunistic bad faith at the time of registration.
The Complainant states that the disputed domain name is being used in bad faith and asserts that passive holding has been found by many UDRP panels as a sign of use in bad faith. It argues that the lack of use of the disputed domain name can cause irreparable prejudice to the Complainant's trademark since it may lead the consumers to think that the Complainant's website is inactive or that it is out of business. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel is required to decide on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Paragraph 15(a) of the Rules.)
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the trademark SANOFI referred to above.
The disputed domain name is not identical to the Complainant's SANOFI trademark. The disputed domain name consists of the same letters as the SANOFI trademark, but reverses the positions of the letters "n" and "o".
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 states that "The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion [...] Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name".
Paragraph 1.10 of the WIPO Overview 2.0 states that "a domain name which contains 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".
In the present case, the Panel considers that the disputed domain name is confusingly similar to the Complainant's SANOFI trademark for the following reasons: (i) SANOFI is a distinctive and invented word; (ii) the disputed domain name inverts two letters in the Complainant's trademark, which does not create any new word, or give the disputed domain name any distinctive meaning; (iii) the disputed domain name is a deliberate misspelling of the Complainant's SANOFI trademark ("typosquatting"); and (iv) visually the disputed domain name is so close to the Complainant's well-known SANOFI trademark that confusion is inevitable between them.
For the above reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's SANOFI trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the Complainant's SANOFI trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
Paragraph 4(c) of the Policy provides three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. Firstly, in relation to paragraphs 4(c)(i) and (iii) the Respondent cannot be considered to be making a bona fide offering of goods or services or a noncommercial and fair use of the website insofar as the latter is inactive and there is no evidence that it has ever been otherwise. Further, the Respondent's bad faith registration of the disputed domain name (see below) means any use of the disputed domain name would be neither "legitimate" nor "fair".
As for paragraph 4(c)(ii), there is no evidence that the Respondent is commonly known by the disputed domain name.
In light of the above, the Panel considers that the Respondent does not own any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that a disputed domain name was registered in bad faith and also that it is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances "in particular but without limitations" which, if found to be present by a panel, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, there is no evidence of any webpage associated with the disputed domain name, making this an example of passive holding. Passive holding is not itself evidence of either good or bad faith, but must be interpreted in the context of all of the circumstances of the case (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 among others).
Paragraph 3.2 of the WIPO Overview 2.0 states that "the apparent lack of so-called 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. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith".
The Panel finds that bad faith registration within the meaning of paragraph 4(b) of the Policy is established in the present case for the following reasons: (i) the Panel finds that the Respondent's choice of the term "saonfi" for the disputed domain name, a meaningless term very close to the Complainant's well-known SANOFI trademark, was not merely coincidental but was deliberate and in full knowledge of the Complainant's trademark; (ii) the Panel also finds that at the time of registration that the Respondent knew that Internet users would mistakenly believe that the disputed domain name was related to the Complainant's pharmaceutical products; and (iii) this is a clear case of typosquatting, or seeking opportunistic advantage from the typing errors of Internet users, which presupposes registration in bad faith.
The Panel is also satisfied that the Respondent is using the disputed domain name in bad faith because: (i) the Respondent continues to hold the disputed domain name so as to be in a position to take advantage of the commercial reputation of the Complainant's trademark (see Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037) and (ii) it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not in all likelihood amount to be bad faith use within the meaning of the Policy because it would involve the intentional deception of Internet users (see Ladbroke Group PLC v. Sonoma International LDC, WIPO Case No. D2002-0131).
Finally, typosquatting, in itself, constitutes registration and use in bad faith (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011: "Typosquatting […] is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith").
For these reasons, the Panel finds that the Respondent has registered and is using the disputed 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 transferred to the Complainant.
David J.A. Cairns
Sole Panelist
Date: February 1, 2017
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