The Complainant is Sanofi of Paris, represented by Selarl Marchais & Associés, France.
The Respondent is Kenneth Crowder, Sanofi-uk of Sullivan, Missouri, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2017. On March 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2017, 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 March 28, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2017.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 12, 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’s name is Sanofi and it is the registered proprietor of a number of trade marks and domain names for or incorporating the term “sanofi”. The Complainant’s trade marks are registered in a variety of jurisdictions around the world. Among many others, these registrations include:
- French trade mark number 1482708 for SANOFI, registered on August 11, 1988;
- International trade mark 674936 for SANOFI, registered on June 11, 1997, designating, inter alia, Switzerland;
- European Union trade mark number 004182325 for SANOFI, registered on February 9, 2006;
- United States trade mark 85396658 for SANOFI, registered on July 24, 2012; (the “Trade Marks”).
The Trade Marks are used in connection with the Complainant’s prescription and over-the-counter pharmaceutical products.
The Respondent’s address is in the United States.
The Domain Name was registered by the Respondent on February 6, 2017. The Domain Name resolves to a parking page advertising web hosting services. 5. Parties’ Contentions A. Complainant
The Complainant argues that the term “sanofi” does not have any meaning independent of the Complainant and that it is highly distinctive of the Complainant. It asserts that the Domain Name is confusingly similar to its marks notwithstanding the addition of the two characters “uk” to the Domain Name together with a hyphen: that code is such a well-known two-character country code for the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) that it merely suggests to Internet users that the Domain Name is related to the business and affairs of the Complainant in the United Kingdom.
The Complainant contends that its corporate name and Trade Marks evidence the Complainant’s rights in the term “sanofi”. The Complainant further contends that it has substantial goodwill in “sanofi” by virtue of, inter alia, consolidated net sales of EUR 39.05 billion in 2015 and EUR 33.77 billion in 2014. It states that it is a multinational company settled in more than 100 countries on all continents, that it employs 110,000 people, and that it is recognized around the world as a global participant in the worldwide pharmaceutical market.
According to the Complainant, it has never licensed or otherwise authorized the Respondent to use the Complainant’s trade marks or to register a domain name using any of those trade marks. The Complainant says there is no relationship between it and the Respondent. Furthermore, since the Domain Name simply points to a webpage that bears no relation to the Complainant, the Complainant says the Respondent is not making a legitimate noncommercial or fair use of the Domain Name nor is the Respondent using it in connection with the bona fide offering of goods or services. As such, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant argues that the Respondent’s selection of a domain name so similar to the Complainant’s name and Trade Marks, where it must have known of the Complainant’s rights in its name and Trade Marks and where the Respondent has no rights or legitimate interests in respect of the Domain Name, are evidence that it has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Complainant has rights in the SANOFI trade mark and in the Trade Marks, each of which was registered before the Domain Name.
A generic Top-Level Domain (“gTLD”) extension such as “.com” can be ignored for the purpose of comparing a domain name and a trade mark under the first element. The comparison here is therefore between SANOFI and “sanofi-uk”.
The Panel agrees with the Complainant that the addition of a two-character country code within the Domain Name does not distinguish the Domain Name, especially where it is used apart from the otherwise identical reproduction of the Complainant’s trade mark.
The Panel therefore finds that the Domain Name is confusingly similar to the SANOFI trade mark, in which the Complainant has rights by virtue of, inter alia, the Trade Marks. B. Rights or Legitimate Interests
The Panel accepts that “sanofi” is a highly distinctive term. The Respondent must have been aware of the SANOFI trade mark when it registered the Domain Name, given its worldwide fame, extensive use and registration as a trade mark in the Respondent’s listed location of the United States. The Panel therefore finds that the Respondent’s selection of a domain name confusingly similar to the Complainant’s trade mark was not coincidence, but that similarity was the very motivation behind the Respondent’s registration of the Domain Name.
The Panel also accepts the Complainant’s assertion that it has not authorized or licensed the Respondent to use its SANOFI trade mark. By pointing the Domain Name to a page which advertises services other than those provided by the Complainant, in the absence of any justification for using the Complainant’s trade mark, the Respondent is not making a legitimate noncommercial or fair use of the domain name nor is it using the Domain Name in connection with the bona fide offering of goods or services. Such circumstances suggest that the Respondent had an improper motive in registering the Domain Name.
Having thus established a prima facie case of a lack of rights or legitimate interests in respect of the Domain Name, the burden of production shifts to the Respondent to come forward with evidence showing that it has a right or legitimate interest in respect of the Domain Name. See, e.g., Accor v. Eren Atesmen,WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”) and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (“The Panel notes that Complainant bears the ʻgeneral burden of proofʼ under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests.”); as well as paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, which was the latest version of the Overview available at the time the Complaint was filed: “[A] 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 to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.”
The Respondent did not submit any evidence or arguments or otherwise take part in these proceedings. As such, there is no evidence before the Panel to rebut the prima facie case the Complainant has put forward to argue that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Respondent’s selection of the Domain Name was motivated solely by its confusing similarity to the highly distinctive SANOFI trade mark. The Panel therefore finds that the Domain Name has been registered in bad faith.
A domain name can be used in many ways. Among its technical functions within the domain name system, a domain name can be used to direct Internet users to websites, or to route email to a particular destination. In a broader sense, a domain name can be used as a tool with which a registrant can threaten trade mark owners.
Although there is no evidence that the Respondent tried to sell the Domain Name, use the Domain Name for nefarious purposes, or to point it to malicious content, the Respondent is using the Complainant’s trade mark in the Domain Name to direct Internet users to a website of the Respondent’s, rather than the Complainant’s, choosing. Such use is inconsistent with the Complainant’s interests in its trade mark and constitutes a bad faith use of the Domain Name.
The Panel therefore finds that the Domain Name has been registered and is being used 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.
Gareth Dickson
Sole Panelist
Date: May 26, 2017
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