The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America / Sam Tetlow, 1970 of Cary, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2017. On November 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 17, 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 22, 2017. The Center received what seemed like an automatic reply from the Respondent by email on November 22, 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 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2017. The Respondent did not submit any response. The Center notified the Parties that it would proceed to Panel Appointment on December 18, 2017.
The Center appointed James Bridgeman as the sole panelist in this matter on January 10, 2018. 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 major pharmaceutical manufacturer engaged in research and development, manufacturing and global marketing of pharmaceutical products bearing the SANOFI trademark.
The Complainant is the registered owner of an extensive portfolio of registered trademarks including the following:
French trademark SANOFI, registered with registration number 3831592 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, registered with registration number 96655339 on December 11, 1996 in classes 1, 3, 5, 9, 10, 35, 40 and 42 notably concerning pharmaceutical products;
French trademark SANOFI, registered with registration number 92412574 on March 26, 1992 in class 5 concerning pharmaceutical products;
French trademark SANOFI, registered with registration number 1482708 on August 11, 1988 in classes 1, 3, 4, 5, 10, 16, 25, 28 and 31 notably concerning pharmaceutical products;
European Union trademark SANOFI, registered with registration number 010167351 on January 7, 2012 in classes 3 and 5 notably concerning pharmaceutical products;
European Union trademark SANOFI, registered with registration number 004182325 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 trademark SANOFI, registered with registration number 000596023 on February 1, 1999 in classes 3 and 5 notably concerning pharmaceutical products;
International trademark SANOFI, registered with registration number 1091805 on August 18, 2011 in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41 and 42 and 44 notably concerning pharmaceutical products, and designating among others Georgia, Russian Federation, Ukraine;
International trademark SANOFI, registered with registration number 1092811 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, Republic of Korea, Cuba, Russian Federation, Ukraine;
International trademark SANOFI, registered with registration number 1094854 on August 11, 2011 in classes 3 and 5 notably concerning pharmaceutical products, and designating among others Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation, Ukraine;
International trademark SANOFI, registered with registration number 674936 on June 11, 1997 in classes 3 and 5 notably concerning pharmaceutical products and designating among others Switzerland, Cuba, Romania, Russian Federation, Ukraine;
International trademark SANOFI, registered with registration number 591490 on September 25, 1992 in class 5 concerning pharmaceutical products, and designating among others Switzerland, China, Cuba, Romania, Russian Federation;
United States of America trademark SANOFI, registered with registration number 85396658 on July 24, 2012 in international class 5 notably concerning pharmaceutical products.
The Complainant is also the owner of the following portfolio of domain names: 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 05, 2004; registered on November 19, 2001; registered on August 24, 2001; registered on July 12, 2001; registered on June 20, 2006; and registered on March 17, 2011.
In the absence of a Response or any communications from the Respondent, the only information available about the Respondent is that provided by the Registrar disclosing the Respondent’s name and contact details in response to enquiry from the Center, the details in the Registrar’s WhoIs and the information in the Complaint and Amended Complaint. The Respondent is the owner of the disputed domain name.
The disputed domain name was registered on September 12, 2017 and resolves to a parking site with a form to submit a purchase offer where is posted the statement: “ may be for sale”. There also appears to be an interactive email contact form on the webpage with a “captcha” user identification procedure which requires the person contacting the Respondent to type letters in a distorted image. 5. Parties’ Contentions A. Complainant
The Complainant relies on its rights in the SANOFI trademark acquired through its above-listed portfolio of registered trademarks and the goodwill in the mark established by the Complainant through the global marketing of its pharmaceutical products bearing the SANOFI trademark for over 40 years. The Complainant is established in more than 100 countries across the world with 100,000 employees and has grown its business to a consolidated net worldwide sales of EUR 33.82 billion, making substantial investments in R&D amounting to EUR 5.2 billion in 2016.
The Complainant submits that it has an established presence on the Internet and that most of the above-listed portfolios of domain names are in use by the Complainant in connection with its pharmaceutical business.
The Complainant submits that the disputed domain name is identical or confusingly similar to the SANOFI mark, alleging that the disputed domain name consists of the Complainant’s mark in combination with the Top-Level Domain extension “.bio”. The Complainant submits that the “.bio” extension is insufficient to avoid confusing similarity, and on the contrary, suggests to Internet users that there is a relationship between the domain name and the Complainant because of the reference to the field of biotechnology in which the Complainant is actively engaged. Sanofi Biotechnology is the corporate name of one of its subsidiaries in France. The Complainant submits that the Top-Level Domain extension therefore increases the inherent risk of confusion. In this regard the Complainant cites the decision of the panel in Canon U.S.A., Inc v. shen chaoyong,WIPO Case No. D2015-0826 which related to the domain name where the panel noted that “[t]he disputed domain name differs from the registered CANON trademark by the additional descriptive words ‘bio’ and ‘medical’. The disputed domain name integrates the Complainant's trademark CANON in its entirety, as a dominant element, with additional descriptive words ‘bio’ and ‘medical’ which do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's well-known CANON trademark and refer to the Complainant's subsidiary Canon BioMedical Inc., under the mark”.
The Complainant further argues that the likelihood of confusion is increased by the strength of the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill. In support of this submission the Complainant sets out a list of decisions of other panels under the Policy who have found that the Complainant’s trademarks are “well-known” in many jurisdictions, including the following: Sanofi v. Private Registrant, Digital Privacy Coporation / Charalampia Lazari,WIPO Case No. D2017-1609; Sanofi v. Alessandro Stefani,WIPO Case No. D2017-1610; Sanofi v. EAIG UAE,WIPO Case No. D2017-1611.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent’s name does not bear any resemblance with the word “Sanofi”, which the Complainant alleges has no particular meaning and is therefore highly distinctive; that the WhoIs information does not disclose the real registrant who is using a privacy shield; that the Complainant has not authorized the Respondent to use its trademarks or to register any domain name incorporating the SANOFI trademark; that there is no relationship whatsoever between the Parties; that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer rights or legitimate interests in it in accordance with paragraph 4(c)(i) of the Policy and that the disputed domain name merely resolves to a parking website which states “ may be for sale!”.
The Complainant further complains that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the Respondent has acted with opportunistic bad faith in registering the disputed domain name and submits that given the famous and distinctive nature of the SANOFI mark, and because its above-listed trademark and domain name registrations pre-date the registration of the disputed domain name, the Respondent is likely to have had at least constructive notice, if not actual notice, of the existence of the Complainant and its SANOFI mark at the time the disputed domain was registered. The Complainant argues that the registrant’s probable state of knowledge is indicative of such opportunistic bad faith registration of the disputed domain name.
The Complainant further argues that it cannot be a coincidence that this identical domain name was chosen and alleges that the disputed domain name was 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 – with the Complainant’s SANOFI trademarks and above-listed domain names. The Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name because the Complainant’s corporation ranks first in Europe and fourth in the world in the pharmaceutical industry.
The Complainant submits that the Respondent has registered the disputed domain name primarily for the purpose of selling for valuable consideration access of documented out-of-pocket costs directly related to the domain name because the page to which the disputed domain name resolves there is a message offering it for sale to anyone visiting the parking page.
Furthermore, the disputed domain name resolves to an inactive website and it is well established under the Policy that passive holding in such circumstances amounts to use in bad faith. The Complainant submits that the leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in which it was found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that the complainant had undertaken any positive action in relation to the domain name at issue and that inaction (“passive holding”) may fall within the concept of the domain name “being used in bad faith”. This has been followed in many subsequent cases including Action S.A. v. Robert Gozdowski, WIPO Cases No. D2008-0028 and M. Antonino Amaddeo (Reminiscence Diffusion Internationale) v. Gas Bijoux SAS / GAS Olivier,WIPO Case No. 2012-1831.
The Complainant submits that the cumulative circumstances to be considered by this Panel include the identity of the disputed domain name and the Complainant’s SANOFI mark, the well-known and distinctive character of trademark and that the Respondent has not filed any Response to the Complaint.
Additionally, the Complainant submits that on October 27, 2017, prior to making this Complaint, its counsel sent a cease-and-desist letter to the Respondent by email, in which it explained that the registration of the disputed domain name constituted a breach of the Complainant’s prior rights over the trademark SANOFI and requested the immediate transfer of the disputed domain name. According to the Complainant, the Respondent did not deign to answer. The Complainant submits that it has been held in Sanofi-Aventis v. A Domain Privacy/ Transure Enterprise Ltd, Host Master,WIPO Case No. D2009-1634 that a respondent’s failure to express any denial or explanation despite the opportunity having been offered reinforces the inference of bad faith registration and bad faith use.
Finally the Complainant submits that the lack of use of the disputed domain name is likely to cause irreparable prejudice to the general goodwill of its business because Internet users could be led to believe that the Complainant is not on the Internet, or worse, that the Complainant is out of business. The Complainant submits that this argument has already been upheld by previous Panel decisions including M. Antonino Amaddeo (Reminiscence Diffusion Internationale) v. Gas Bijoux SAS / GAS, supra. 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 establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the SANOFI trademark by its ownership of the above-listed portfolio of registered trademarks and the goodwill in the mark that it established through use of the mark in its global pharmaceutical business.
The disputed domain name is identical to the Complainant’s SANOFI mark. The “.bio” generic Top-Level Domain extension may be ignored for the purposes of comparison in this case.
The Complainant has therefore satisfied the first element of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name; that the Respondent is not known by the disputed domain name or any similar name; that the Respondent has used a privacy service to conceal his identity from the public; that the Respondent has used the Complainant’s SANOFI trademark which is a unique and distinctive word with no ordinary meaning as a domain name without consent of the Complainant; that the Complainant has not granted the Respondent the right to use the SANOFI mark as a domain name or for any purpose; and that the Respondent is not using the disputed domain name to carry out bona fide business or for any noncommercial purpose but is offering it to the public for sale.
In such circumstances it is well established that the burden of production shifts to the Respondent who has failed to file any Response to the Complaint. The Respondent has therefore failed to discharge the burden.
The Complainant is therefore entitled to succeed in the second element of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name is identical to the Complainant’s distinctive SANOFI mark. The Complainant has shown to have acquired a long established extensive reputation across the world as a manufacturer of pharmaceuticals bearing its distinctive SANOFI trademark. It follows that it is most improbable that the registrant was not aware of the Complainant when the disputed domain name was registered on September 12, 2017 long after the Complainant had established its goodwill and reputation.
Because of the identity of the disputed domain name and the Complainant’s mark and the distinctive character of the SANOFI mark it is improbable that the disputed domain name was chosen and registered by coincidence.
Furthermore it is most improbable that the registrant was not aware of the Complainant’s portfolio of domain names when the disputed domain name was registered.
In the circumstances this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith to take predatory advantage of the Complainant’s goodwill and reputation in the SANOFI mark.
The Respondent is not making any active use of the disputed domain name but instead has arranged for the disputed domain name to resolve to a parking page with a form to submit a purchase offer which contains the statement “ may be for sale”. The URL of the webpage is significantly “www./offer”. On the evidence therefore, this Panel finds on the balance of probabilities that the Respondent has registered and is using the disputed domain name in bad faith primarily for the purpose of selling it for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
The Complainant has therefore succeeded in the third element of the test in paragraph 4(a)(iii) of the Policy and is entitled to the remedy sought. 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.
James Bridgeman
Sole Panelist
Date: January 19, 2018
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