The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America / Simon.Huang, YouChuang of Guangzhou, Guangdong, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 24, 2017. On July 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 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 July 27, 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 July 28, 2017. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 7, 2017.
The Center verified that the Complaint together with the amendment to the Complaint and amended 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 August 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2017.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 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 is a French pharmaceutical company and holder of, inter alia, the French trademark registration for SANOFI (registration number 1482708) and the European Union trademark registration for SANOFI (registration number 004182325) hereafter referred to as "the Complainant's trademarks". The Complainant's trademarks were registered on August 11, 1988, and February 9, 2006, respectively.
The disputed domain names were registered on March 1, 2017. The disputed domain names resolve to websites displaying pay-per-click links. 5. Parties' Contentions A. Complainant
The Complainant is a multinational pharmaceutical company, ranked as the fourth largest multinational pharmaceutical company by prescription sales. The Complainant is settled in more than 100 countries and has 110,000 employees.
The Complainant is the holder of numerous trademarks and domain names, containing the word "sanofi", including the domain name which resolves to the Complainant's Chinese website. "Sanofi" has no particular meaning and is therefore highly distinctive.
The dominant part of the disputed domain names is identical to the Complainant's trademarks, regardless of the geographical and descriptive adjunction "china". The addition of the latter word merely suggests to Internet users that the disputed domain names are related to the Complainant or the Complainant's products in China, and it is insufficient to alleviate the likelihood of confusion between the Complainant's trademarks and the disputed domain names.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has neither prior rights nor legitimate interests to justify the use of the Complainant's well-known trademarks. The Complainant has never licensed or otherwise authorized the Respondent to use the Complainant's trademarks or to register any domain name including said trademarks. There is no relationship whatsoever between the Complainant and the Respondent.
The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are leading to a parking website and have been registered only for the purpose of attracting Internet users into clicking on sponsored links. Thus, the Respondent is obviously using the disputed domain names to obtain commercial gain by misleadingly diverting consumers.
The disputed domain names were registered and are being used in bad faith. Given the famous and distinctive nature of the Complainant's trademarks, the Respondent is likely to have had, constructive, if not actual notice, as to the existence of the Complainant's trademarks at the time of registration of the disputed domain names. The disputed domain names have been registered for the purpose of attracting Internet users to the Respondent's website by creating a likelihood of confusion – or at least an impression of association – between the Complainant's trademarks and the disputed domain names in order to make commercial profit through the links to other websites.
The Complainant has sent a cease-and-desist letter to the Respondent, explaining that the use of the disputed domain names constitutes a breach of the Complainant's trademarks rights. However, the Respondent did not answer. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of 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 names are 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 names; and (iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the holder of trademark registrations for SANOFI. The disputed domain names incorporate the Complainant's trademarks in their entirety, with the addition of the word "China" (and, as regards one of the disputed domain names, a hyphen) and the generic Top-Level Domain ("gTLD") ".com". As noted by previous UDRP panels, the gTLD is typically not distinguishing for the purposes of establishing identical or confusing similarity.
The Panel finds that the Complainant's trademarks are the distinctive parts of the disputed domain names, and that the addition of the mere geographical term "China" is not sufficient to avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's trademarks within the meaning of the Policy, paragraph 4(a)(i), and the first element of the Policy is thus fulfilled. B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain names, which incorporate the Complainant's trademark.
Having considered the submissions of the Complainant, and the absence of a Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant nor authorized to use the Complainant's trademarks in the disputed domain names. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or that the Respondent is using the disputed domain names for a bona fide offering of goods or services.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
The disputed domain names were registered on March 1, 2017. This is, for example, more than 28 years after the Complainant's French trademark registration for SANOFI, and more than 12 years after the Complainant's European Union trade mark registration for the same mark, both referred to under section 4 above. According to the Complainant's uncontradicted information, the Complainant is also the holder of several Chinese trademark registrations for trademarks containing the word "sanofi", registered during the years 1996-2011.
The Complainant has furthermore submitted evidence showing its worldwide activities and wide range of trademark and domain name registrations. In the light thereof, and considering that the disputed domain names fully incorporate the Complainant's trademarks, it is in the Panel's view apparent that the disputed domain names were registered and are being used with knowledge of the Complainant's trademark rights and business, and most likely with the intention of attracting Internet users for commercial gain by creating a likelihood of confusion with those same marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Complainant has also submitted evidence showing that the disputed domain names resolve to so-called parking websites displaying pay-per-click links. This is in the Panel's view a further indication of bad faith within the meaning of paragraph 4(b)(iv) of the Policy under the circumstances.
All in all, the Panel finds that the disputed domain names were registered and are being used in bad faith. The third element of the Policy is thus fulfilled. 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 names, and , be transferred to the Complainant.
Jonas Gulliksson
Sole Panelist
Date: October 4, 2017
Full & Egal Universal Law Academy