The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Private Registration of Denver, United States of America / Domain Admin of Xiamen, China. 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 January 9, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2017, 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 Complainant on January 11, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 11, 2017.
The Center verified that the Complaint together with the 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 January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on February 15, 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 one of the world’s largest pharmaceutical companies and has branches in over 100 countries in all five continents.
The Complainant offers a wide range of patented pharmaceutical drugs all over the world and its investments in research and development amount to over EUR 5 billion.
The Complainant is the owner of the European Union trademark registration No. 15623507 for WARM U APP (word mark), filed on July 8, 2016 and registered on January 4, 2017, in classes 9, 41, 42 and 44.
The disputed domain name was registered on July 13, 2016 and has been pointed to a web site displaying sponsored links and offering the disputed domain name for sale at EUR 3,800. 5. Parties’ Contentions A. Complainant
The Complainant contends that its trademark WARM U APP is highly distinctive since it does not have any particular meaning; that it has used its trademarks and trade names for over 40 years, having invested substantial financial resources to advertise and promote its company and trademarks; and that the Complainant’s trademark is the dominant part of the disputed domain name, with which it is identical or at least confusingly similar.
The Complainant states that the Respondent does not have any rights or legitimate interest in the disputed domain name as it registered the disputed domain name availing of a privacy service, it has not received any license or authorization from the Complainant to use the trademark and the disputed domain name has been pointed to a parking page with sponsored links where the disputed domain name was offered for sale at EUR 3,800.
The Complainant concludes that the Respondent’s only plausible motive for adopting the Complainant’s trademark for its own use was to capitalize on the goodwill associated with the Complainant’s trademark and activities by using the Complainant’s trademark and incorporating the disputed domain name in order to sell it to the highest bidder, which in any case would not constitute a bona fide offering of goods and services.
The Complainant claims that the disputed domain name was registered in bad faith since its prior trademark WARM U APP is highly distinctive and, also in light of the reputation of the Complainant’s activities, the Respondent likely had constructive or actual notice of the existence of the Complainant’s trademark when it registered the disputed domain name. The Complainant also states that the Respondent acted with opportunistic bad faith by registering the disputed domain name and making an illegitimate use of it.
The Complainant also states that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name for valuable consideration in excess of its documented out−of−pocket costs directly related to the disputed domain name and is therefore trying to ride off the Complainant’s worldwide reputation. It also claims that the passive holding of a domain name can amount to bad faith use and that the lack of use of the disputed domain name combined to a proposal to sell the disputed domain name to the highest bidder is likely to cause irreparable prejudice to the Complainant’s general goodwill because Internet users could be induced to believe that the Complainant is not on the Internet or worse, that the Complainant is out of business.
As an additional circumstance of bad faith, the Complainant informs the Panel that it sent a cease and desist letter to the Respondent but it did not reply.
The Complainant concludes that the disputed domain name was registered and used in bad faith for commercial purposes, or at least to disrupt the Complainant’s activities. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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. A. Identical or Confusingly Similar
The Complainant has established rights in the trademark WARM U APP based on the European Union trademark registration cited in Section 4 above.
The Panel finds that the disputed domain name is identical to the Complainant’s trademark as it encompasses the trademark in its entirety with the mere addition of the generic Top-Level Domain suffix “.com”, which can be disregarded for the purpose of assessing identity or confusing similarity.
Therefore, the Panel finds that the Complainant has met the requirement prescribed by paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark WARM U APP or the disputed domain name.
Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain name and the Panel finds that the Respondent’s use of the disputed domain name in connection with a pay-per-click page with sponsored links where the disputed domain name was also offered for sale does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In view of the identity of the disputed domain name with the trademark WARM U APP, of the timing of the Respondent’s registration of the disputed domain name, which was finalized five days after the filing of the trademark by the Complainant, and of the Respondent’s use of the disputed domain name, the Panel finds that the Respondent was more likely than not aware of the Complainant’s trademark at the time of the registration of the disputed domain name.
The pointing of the disputed domain name to a website displaying several sponsored links and indicating that the disputed domain name was offered for sale by the Respondent at EUR 3,800 shows that the Respondent intended to derive profit from the pay-per-click revenues and the sale of the disputed domain name at an amount exceeding the out-of-pocket costs directly related to the disputed domain name.
The Panel also finds that said use of the disputed domain name amounts to bad faith according to paragraph 4(b)(iv) since the Respondent has intentionally attempted to attract Internet users to its web site for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.
In light of the above, and in the absence of a Response, the Panel finds that the Complainant has proven that, on balance of probabilities, the Respondent 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.
Luca Barbero
Sole Panelist
Date: March 1, 2017
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