The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Contact Privacy Inc. Customer 1241050366 of Toronto, Ontario, Canada / Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2017. On the same date, 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 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 February 13, 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 February 20, 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 February 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2017. A Response from the named Respondent was received by the Center on March 7, 2017. The Center notified the Parties the commencement of the Panel Appointment process on March 14, 2017.
The Center appointed J. Nelson Landry as the sole panelist in this matter on March 21, 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
Sanofi is a French multinational pharmaceutical company ranking among the world’s largest pharmaceutical companies by research, development and prescription of pharmaceutical products. The Complainant is settled in more than 100 countries on all continents employing 110,000 people. In 2015, it invested over EUR 5 billion in research and development and its net sales were of EUR 39 billion in that year. It is a leading pharmaceutical company in seven major therapeutic areas namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
The Complainant is the owner of numerous SANOFI trademarks under four groups, SANOFI (+device), SANOFI, Sanofi and Sanofi (+device). First, each are registered in France, the earliest one being French Trademark No. 1482708 SANOFI (registered on August 11, 1998, in international classes 1, 3, 4, 5, 10, 16, 25, 28 and 31); second, three are registered in the European Union, SANOFI first since 1997; third, each of the four are registered as an International trademark, the first one on September 25, 1992; then SANOFI was registered in the United States of America on July 24, 2012, the country of residence of the Respondent (herein the “SANOFI Trademarks”).
Furthermore, the Complainant has registered and is the owner of 11 different domain names, all comprised of the term “sanofi” and a Top-Level Domain (“TLD”), including being the first registered on October 13, 1995, and the most recent in March 2011.
The disputed domain name was registered on January 18, 2017. The disputed domain name resolves to a website simply referring to an inactive page. The registrar of the disputed domain name in reply to a verification request by the Center identified that the person appearing in the registration record, as current registrant, is Name Redacted.
On March 7, 2017, Name Redacted sent by email to the Center a document entitled Response consisting of brief answers in the form from the Rules, paragraph 5(c)(ii) and (iii) in paragraph 2, he responds and requests the Panel to deny the remedies requested by the Complainant. In section b Response to Statements and Allegations Made in the Complaint, he mentioned that on February 22, 2017, he received a telephone call from an employee of the Sanofi asking if he had registered the disputed domain name. He answered that he had never registered any domain name. He declined to answer questions regarding his personal information and simply said that the “phone number and email address that were associated with the bogus website were not mine”.
He further stated that he had “no involvement in the issue” and that he “will not be responsible in any way for this issue”. He stated that on January 19, 2017, his credit card was compromised and the account copy he sent is showing a purchase with Google domains of USD 12 and a credit of the same amount with the same party on the same day. Subsequently in answering the other section of the Response form, he selected a choice of a three member Administrative Panel and further stated: “I had nothing to do with this and will not accept any findings or rulings”. Furthermore despite his choice of a three member Panel he submitted “payment in the amount of USD 0.00 by Bank Transfer”. He concluded his certification in stating” the information in this Response is to the best of the Respondent knowledge, complete and accurate”. 5. Parties’ Contentions A. Complainant
In an elaborate and detailed Complaint, in addition to factual information comprising numerous references and citations of previous UDRP decisions, the Complainant has indicated its experience in respect of at least 30 domain name disputes in respect of domain names identical or confusingly similar to its SANOFI Trademarks.
The Complainant states that it has several SANOFI Trademarks registered in various jurisdictions. It furthermore represents that the disputed domain name incorporates the complete SANOFI Trademark to which the generic and highly descriptive term “career” has been added along with the TLD suffix “.com”. It submits that the disputed domain name is confusingly similar to its SANOFI Trademarks and citing Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000‑0127, and that “Panelists have consistently held that the mere addition of descriptive wording to well‑known marks or confusingly similar derivatives thereof, does not avert a finding that the disputed domain name is confusingly similar” and “the descriptive or generic wording to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words can and in this case actually increase rather than decrease the confusing similarity”. See Rockefeller & Co., Inc. v. All Value Network a/k/a AVN,WIPO Case No. D2011 1957. The Complainant further represents that the reputation and goodwill of its SANOFI Trademarks have been acknowledged and considered well known when they have been involved in more than 30 UDRP decisions in the past five years.
The Complainant represents that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Complainant further contends the absence of any rights or legitimate interests in the disputed domain name as the registrant name does not bear any resemblance with the term “sanofi” in the SANOFI Trademarks of the Complainant, said term being inventive and not having a particular meaning is therefore highly distinctive of the Complainant’s company and pharmaceutical activities as already acknowledged on numerous occasions..
The Complainant states that it has never licensed or otherwise authorized the Respondent to use any of its SANOFI Trademarks or domain names to register the disputed domain name or any domain names including any of its SANOFI Trademarks. The Complainant further represents that there is no relationship between the Complainant and the Respondent and that the later has clearly modified the Complainant’s SANOFI Trademark without the authorization of the Complainant.
The Complainant submits that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services and cannot claim rights or legitimate interests therein since the website at the address of the disputed domain name is not used legitimately by the Respondent since said website simply refers to an inactive page. The disputed domain name was originally registered with the Registrar, who at the request of the Center disclosed the name of the registrant, the Respondent herein.
The Complainant submits that the disputed domain name was registered and is being used in bad faith in particular on the basis of previous UDRP decisions involving the Complainant which recognized opportunistic bad faith where the disputed domain name appears confusingly similar to the Complainant’s well-known SANOFI Trademarks.
The Complainant further quotes from a decision of MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412, wherein the panel stated: “There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use”. The Complainant, as the panel quoted, represents that its Trademarks are well-known trademarks and that the respondent had both constructive and actual knowledge of Complainant’s Trademarks and nevertheless chose to register the disputed domain name with the view of exploiting it with the benefit of the goodwill associated with it.
Finally, the Complainant submits that the disputed domain name is being used in bad faith since by reason of its well-known SANOFI Trademarks, the Respondent had constructive notice if not actual awareness of the said SANOFI Trademarks when he registered the disputed domain name, thereby acting with opportunistic bad faith, said bad faith, according to the Complainant, is further based on the fact that the associated website is inactive as held in the Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, since according to the panel in said case it was not necessary to find that the respondent had undertaken any positive action in relation to the disputed domain name. B. Respondent
While the Respondent did submit a document entitled Response in which he stated that he did not register the disputed domain name, the Respondent did not reply to the Complainant’s contentions in respect of the confusing similarity of the disputed domain name with the SANOFI Trademark, the absence of rights and legitimate interests in the disputed domain name and registration and use of the disputed domain name in bad faith. The Respondent still stated that he “had nothing to do with this and will not accept any findings or rulings”. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has clearly shown that it is the owner of the registered SANOFI Trademarks.
The disputed domain name is nearly identical to the SANOFI Trademarks, in that it incorporates the complete SANOFI Trademarks of the Complainant to which the dictionary word “career” and the TLD “.com” suffix have been added. It submits that the disputed domain name is confusingly similar to its SANOFI Trademark and, in relying on Busy Body, Inc. v. Fitness Outlet Inc., supra, further submits that “Panelists have consistently held that the mere addition of descriptive wording to well-known marks or confusingly similar derivatives thereof, does not avert a finding that the disputed domain name is confusingly similar” and “the descriptive or generic wording to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words can and in this case actually increase rather than decrease the confusing similarity.”
The Panel observes that the change caused by this addition of the word “career” does not bring any significant difference in the consideration of the overall meaning of the disputed domain name since the said term can be easily and readily understood to refer to a sector of the Complainant’s activities and administration, namely the section of employment, recruitment and career opportunity, an active concern for a corporation of the size of the Complainant, and does not avoid a finding of confusing similarity to the SANOFI Trademarks.
The Panel therefore concludes that the disputed domain name is confusingly similar to the SANOFI Trademarks of the Complainant.
The first criterion has been met. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by producing evidence of its rights or legitimate interests.
The Complainant has presented its prima facie case that the Respondent is not known under the term “sanofi”, that the Complainant has no other business relationship with the Respondent, and finally, that the Complainant has not authorized or licensed the Respondent to use any of its SANOFI Trademarks or domain names, nor to register the disputed domain name. The Panel further notes that the Respondent has not shown being commonly known by the disputed domain name. Finally, it is well established that registration in bad faith of the disputed domain name means any use of the disputed domain name would be neither “legitimate” nor “fair”.
The Panel determines that the Complainant has discharged its burden of prima facie case and the Respondent has failed to rebut it.
In view of the above the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The second criterion has been met. C. Registered and Used in Bad Faith
The Panel has considered that the mention by the Respondent in his Response that he did not register the disputed domain name, on the one hand, yet has some serious concern about the mention by the Respondent that the payment of the registration fee appearing on his credit card was reimbursed by the Registrar Google on the same day on the other hand.
The Panel finds that the registration of the disputed domain name was made in bad faith, confirmed by the absence of explanation of this anomaly in the alleged use of the credit card of the Respondent by another person if he did not register the said disputed domain name. The Respondent made no attempt at justifying good faith in the sequence of events and his course of conduct. The Panel cannot clearly understand if the credit card of the Respondent along with his name was abused by an unknown third person or used by the Respondent. The evidence is clear that the registration fee was paid using the credit card of the Respondent and it is the Respondent who brought this evidence into play without clarifying this situation. The other purchases with another company could simply mean a change of mind and return all or some of the wares purchased by the Respondent.
The evidence is clear, the Panel has attempted to reach the website at the address of the disputed domain name and verified that there was no active website. The Panel acknowledges and adopts the finding in the Telstra Corporation Limited v. Nuclear Marshmallows, supra, and also in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that the presence of an inactive associated website does not avoid a bad faith finding. The Respondent does not clarify to the satisfaction of the Panel the use of his credit card in relation to the disputed domain name and yet stated that he denied the remedies requested by the Complainant.
The Panel does not see in this behavior a clear pattern of good faith. It remains unclear who registered and used the disputed domain name. On this basis the Panel determines that the disputed domain name is being used in bad faith.
The Panel finds that whoever registered the disputed domain name registered it and is using in bad faith.
The third criterion has been met. 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.
J. Nelson Landry
Sole Panelist
Date: March 31, 2017
1 The Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009‑1788.
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