The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland. 2. The Domain Name and Registrar
The disputed domain name (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 July 12, 2017. On July 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 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 July 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on August 30, 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 company ranking among the world’s largest pharmaceutical companies by research, development and prescription of pharmaceutical products. The Complainant is located in more than 100 countries on all continents, employing approximately 110,000 people. In 2015, the Complainant invested over EUR 5 billion in research and development and its net sales were EUR 39 billion in that year. The Complainant is a leading pharmaceutical company in seven major areas namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
Sanofi Pasteur, the Complainant’s vaccines division, produces more than 1 billion doses of vaccines every year, making it possible to immunize more than 500 million people in the world. With over EUR 1 million invested every day in research and development expenditures, Sanofi Pasteur employs approximately 13,000 people worldwide. Sanofi Pasteur also has 13 production and sites located in France, the United States of America (the “United States”), Canada, Argentina, China, India, Mexico and Thailand.
The Complainant is the owner of numerous SANOFI trademarks under four groups:
- Each trademark in the first group is SANOFI (+device), registered in France; the earliest one is SANOFI, French Trademark No. 1482708, registered on August 11, 1988, in International Classes 1, 3, 4, 5, 10, 16, 25, 28 and 31.
- Three of the trademarks in the second group are SANOFI, registered in the European Union; the earliest one is SANOFI, European Union Trademark No. 000596023, registered on February 1, 1999 in International Classes 3 and 5.
- Each of the four trademarks in the third group is SANOFI; the earliest one is SANOFI (+device), International Trademark No. 591490, registered on September 25, 1992 in International Class 5.
- SANOFI was registered in the United States on July 24, 2012, United States Reg. No. 4,178,199 in International Class 3, 5, 9, 10, 16, 35, 41, 42 and 44.
The SANOFI trademarks will hereinafter be referred to collectively as the “SANOFI Mark”.
Furthermore, the Complainant has registered and is the owner of 14 different domain names, all comprised of the SANOFI Mark and a generic Top-Level Domain (“gTLD”), including , registered on May 19, 2004, and , registered on December 23, 2004.
The Disputed Domain Name was registered on July 2, 2017. The Disputed Domain Name resolves to an inactive page, and thus, is passively held. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel concludes that the Disputed Domain Name is confusingly similar to the SANOFI Mark.
First, it is uncontroverted that the Complainant has established rights in the SANOFI Mark based on its longstanding use as well as its numerous trademark registrations for the SANOFI Mark. The Disputed Domain Name consists of the SANOFI Mark in its entirety along with the word “pesteur”, followed by the gTLD “.com”. The word “pesteur” is a misspelling of “pasteur”, the name of the Complainant’s vaccine division, with the letter “a” replaced by the letter “e” after the “p”. This is an example of typosquatting in which a domain name includes a misspelled trademark. Here, the replacement of the letter “a” with the letter “e” does not operate to prevent a finding of confusing similarity between the SANOFI Mark and the Disputed Domain Name. This is especially true in the present case where the letters “a” and “e” are very close to each other on a typical “qwerty” keyboard, meaning that if one were to use the third finger of one’s left hand instead of one’s pinky, this could result in an Internet user who intended to visit the Complainant’s website at “www.” visiting “www.”. See Sanofi v. Domains By Proxy, LLC / domain admin,WIPO Case No. D2013-0368; Amegy Bank National Association v. Contact Privacy Inc. Customer 0136596179 / Banks Joseph, WIPO Case No. D2014-0983.
Second, it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or term, even one that is misspelled, such as “pesteur”. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 3.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its SANOFI Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Complainant does not have any type of business relationship with the Respondent. Based on the use of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the SANOFI Mark prior to registering the Disputed Domain Name. See FaçonnableSASv. Names4sale,WIPO Case No. D2000-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant obtained its trademark registrations for the SANOFI Mark. The fame of the SANOFI Mark makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. EuropeanTravelNetwork,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks).
Second, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark is sufficient evidence of bad faith registration and use. See EbayInc. v. Wangming,WIPO Case No. D2006-1107; VeuveClicquotPonsardin, MaisonFondéeen 1772 v. ThePolygenixGroupCo.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See AdvanceMagazinePublishersInc. andLesPublicationsCondéNastS.A. vChinaV,WIPO Case No. D2005-0615; Sociétépourl’OeuvreetlaMémoired’AntoinedeSaintExupéry – SuccessionSaintExupéry – D’Agayv. PerlegosProperties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See TelstraCorporationLimitedv. NuclearMarshmallows,WIPO Case No. D2000-0003; JupitersLimitedv. AaronHall,WIPO Case No. D2000-0574.
Accordingly, the third element of paragraph 4(a) has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: September 2, 2017
Full & Egal Universal Law Academy