The Complainant is Sanofi of Paris, France represented by Selarl Marchais & Associés, France.
The Respondent is WHOIS Agent / Whois privacy protection service, Inc. of Washington, United States of America / Jenny Riley of Ohio, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2017. On November 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 7, 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 November 8, 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 November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2017.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 11, 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, ranking 4th worldțs largets multinational pharmaceutical company by prescription sales.
The Complainant is settled 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.
The Complainant is the rightful owner of the following trademarks, among others:
- French trademark SANOFI (+device) number 3831592, registered on May 16, 2011, in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44 notably concerning pharmaceutical products;
- French trademark SANOFI number 96655339, registered on December 11, 1996, in classes 1, 3, 5, 9, 10, 35, 40 and 42 notably concerning pharmaceutical products;
- French trademark SANOFI (+device) number 92412574, registered on March 26, 1992, in class 5 concerning pharmaceutical products;
- French trademark SANOFI number 1482708, registered on August 11, 1988, in classes 1, 3, 4, 5, 10, 16, 25, 28 and 31 notably concerning pharmaceutical products;
- European Union trade mark SANOFI number 010167351, filed on August 2, 2011 and registered on January 7, 2012, in classes 3 and 5 notably concerning pharmaceutical products;
- European Union trade mark SANOFI number 004182325, filed on December 8, 2004 and registered on February 9, 2006 in classes 1, 9, 10, 16, 38, 41, 42 and 44 notably concerning products in pharmaceutical and medical spheres;
- European Union trade mark SANOFI number 000596023, filed on July 15, 1997 and registered on February 1, 1999 in classes 3 and 5 notably concerning pharmaceutical products;
- International trademark SANOFI (+device) number 1091805, registered on August 18, 2011, in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44 notably concerning pharmaceutical products, and designating among others Georgia, the Russian Federation and Ukraine;
- International trademark SANOFI number 1092811, registered on August 11, 2011 in classes 1, 9, 10, 16, 38, 41, 42 and 44 notably concerning products in pharmaceutical and medical spheres, and designating among others Australia, Georgia, Japan, the Republic of Korea, Cuba, the Russian Federation and Ukraine;
- International trademark SANOFI number 1094854, registered on August 11, 2011 in classes 3, and 5 notably concerning pharmaceutical products, and designating among others Australia, Georgia, Japan, the Republic of Korea, Cuba, the Russian Federation and Ukraine;
- International trademark sanofi number 674936, registered on June 11, 1997, in classes 3 and 5 notably concerning pharmaceutical products and designating among others Switzerland, Cuba, Romania, the Russian Federation and Ukraine;
- International trademark sanofi (+device) number 591490, registered on September 25, 1992, in class 5 concerning pharmaceutical products, and designating among others Switzerland, China, Cuba, Romania, Russian Federation; and
- American trademark SANOFI number 85396658, filed on August 12, 2011 and registered on July 24, 2012, in class 5 notably concerning pharmaceutical products.
The Complainant is also the owner of many domain names among others: registered on October 13, 1995; registered on March 12, 2006; registered on October 10, 2006; registered on May 16, 2002; registered on May 16, 2003; registered on January 5, 2004; registered on November 19, 2001 (Annex 9.7 to Complaint); registered on August 24, 2001; registered on July 12, 2001; registered on June 20, 2006; and registered on March 17, 2011.
The disputed domain name was registered on September 14, 2017. The disputed domain name resolves to an inactive page, and thus, is passively held. 5. Parties’ Contentions A. Complainant
The Complainant contends:
- the disputed domain name reproduces – or at least imitates – SANOFI a trademarks, which, as themselves, do not have any particular meaning and are therefore highly distinctive.
- it has used SANOFI trademark and trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI trademarks and domain names in countries all over the world, including in the United States of America.
- the reproduction of the Complainant’s SANOFI trademarks as the dominant part of the disputed domain name is confusingly similar to the above cited trademarks, regardless of: the adjunction of the generic term “health” and “care”, which remains highly descriptive in the Complainant’s field of activities; the generic Top-Level Domain extension “.com”.
- the addition of the descriptive term “health care” which is are common English words remain, as such, insufficient to avoid confusing similarity, and will, on the contrary, suggest to Internet users that the disputed domain name is related to the Complainant’s activities and its related events, as the Complainant’s mark remains the dominant component of the disputed domain name.
- the Respondent selected the disputed domain name in a specific attempt to free-ride on the coat tails of the fame of the Complainant’s SANOFI trademarks, regardless of the adding of the generic term “healthcare”.
- the likelihood of confusion is strengthened by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill, as Sanofi’s trademarks are “well-known” in many jurisdictions.
- the Respondent does not have any rights or legitimate interests in the respect of the domain name, as the Respondent has neither prior rights nor legitimate interests to justify the use of the well-known and worldwide trademarks and domain names of the Complainant, nor has the Complainant ever licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks.
- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is it using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy given that the disputed domain name website is not used legitimately by Respondent, as the disputed domain name website simply resolves to an inactive page.
- the Respondent registered in bad faith the disputed domain name corresponding to the trademarks and domain names owned by the Complainant, as this behavior can in no way be the result of a mere coincidence. “WHOIS Agent” indicated on the Whois Database as registrant of the disputed domain name, was proven to be not the real registrant.
- the absence of legitimate interests somewhat induces the absence of good faith.
- given the famous and distinctive nature of the mark SANOFI, the Respondent acted with opportunistic bad faith in having registered the domain name in order to make an illegitimate use of it.
- the disputed domain name has 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 SANOFI trademarks and domain names and the contested domain name.
- passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith.
- the Respondent did not deign to answer to Complainant’s cease and desist letter, by email, in which it explained that the registration of the domain name constituted a breach of Sanofi’s prior rights over the trademarks SANOFI and requested the immediate transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Policy requires that the Complainant show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Based on the assertions of the Complainant and the evidence presented supporting these assertions, the Panel finds that the Complainant holds rights in the SANOFI trademarks.
This Panel also finds that the disputed domain name is confusingly similar to the Complainant’s registered SANOFI trademarks as it fully incorporates the the SANOFI trademark and merely adds the generic terms “health” and “care”, which remain descriptive in Complainant’s field of activities. The addition of descriptive terms as to the Complainant’s trademarks have been considered in certain WIPO UDRP practices (Rockefeller & Co., Inc. v. All Value Network a/k/a AVN, WIPO Case No. D2011-1957) to increase the confusing similarity between the disputed domain name and the complainant’s trademarks.
Moreover, this Panel considers that the likelihood of confusion is strengthened by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill, as Complainant’s trademarks are well-known in many jurisdictions
For all the reasons above, the Panel finds that the disputed domain name is confusingly similar to the SANOFI trademarks and that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under this element of the Policy, the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. This Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent.
The Panel agrees with the Complainant that the Respondent has neither prior rights nor legitimate interests to justify the use of the well known and worldwide trademarks and domain names of the Complainant nor the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks.
Moreover, the Panel finds the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is she using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy given that the disputed domain website at the disputed domain name simply refers to an inactive page.
Accordingly, the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and therefore, the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Complainant asserts several circumstances which, in the opinion of the Panel, represent evidence the bad faith of the Respondent in registering and using the disputed domain name.
This Panel finds that it is apparent from the evidence provided by the Complainant, that there is strong indication of bad faith use and registration:
- The disputed domain name corresponding to the trademarks and domain names owned by the Complainant, as this behavior can in no way be the result of a mere coincidence. “WHOIS Agent” indicated on the Whois Database as registrant of the litigious domain names, was proven to be not the real registrant which is Jenny Riley. The use of privacy shields or proxy, even if it does not represent by itself an indication on bad faith, corroborated with the circumstances of the case, is another indication of bad faith as further developed.
- Given the well known and distinctive nature of the mark SANOFI, the Panel considers that Respondent acted with opportunistic bad faith in having registered the domain name in order to make an illegitimate use of it.
- Passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith. See in this sense Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
- Last, but not least the Respondent did not answer to the Complainant’s cease and desist letter, in which it explained that the registration of the domain name constituted a breach of Sanofi’s prior rights over the trademarks SANOFI and requested the immediate transfer of the disputed domain name.
In all these regards, the Panel cannot conceive of any future use to which the disputed domain name could be put that would not be illegitimate for the purposes of the Policy.
In the light of the findings above, the Panel concludes that the disputed domain name was 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.
Beatrice Onica Jarka
Sole Panelist
Date: December 24, 2017
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