The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Erika Slade of Charlotte, North Carolina, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is 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 November 27, 2017. On November 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 28, 2018, 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 December 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2018.
The Center appointed Frank Schoneveld as the sole panelist in this matter on February 12, 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 states that it is a French multinational pharmaceutical company headquartered headquartered in Paris (France), ranking as the world’s fourth largest multinational pharmaceutical company by prescription sales, is present in more than 100 countries on five continents, employs 100,000 people and engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also develops over-the-counter medications. The Complainant states that it had consolidated net sales of EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014, and is a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA). The Complainant adds that the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011.
The Complainant is holder of the registered trademark SANOFI in:
- France (trademark number 3831592 registered on May 16, 2011, trademark number 96655339 registered on December 11, 1996, trademark number 92412574 registered on March 26, 1992, and trademark number 1482708 registered on August 11, 1988);
- the European Union (trade mark number 010167351 registered on January 7, 2012, trade mark number 004182325 registered on February 9, 2006, and trade mark number 000596023 registered on February 1, 1999); and
- the United States (trademark number 85396658 registered on July 24, 2012).
The Complainant is also holder of registered international trademarks SANOFI for jurisdictions that include Australia, China, Cuba, Georgia, Japan, Romania, the Russian Federation, the Republic of Korea, Switzerland and Ukraine (trademark number 1091805 registered on August 18, 2011, trademark number 1092811 registered on August 11, 2011, trademark number 1094854 registered on August 11, 2011, trademark number 674936 registered on June 11, 1997, and trademark number 591490 registered on September 25, 1992).
The Complainant is the owner of the following 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;
- registered on March 17, 2011.
Written Notice of the Complaint was delivered by courier to the Respondent at the Respondent’s WhoIs-listed address with this delivery being signed for by K. Slade on December 26, 2017.
The Disputed Domain Name is inactive. 5. Parties’ Contentions A. Complainant
The Complainant indicates that it offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines, and benefits from a large portfolio of high-growth drugs with a research-and-development investment of EUR 5.2 billion in 2016, which includes a portfolio of 47 projects in clinical development, 13 of which are at advanced stages.
The Complainant asserts that insofar as the Respondent has wrongly registered and uses the Disputed Domain Name that corresponds to trademarks belonging to the Complainant, it appears the Complainant has sufficient common interest in the Disputed Domain Name. The Complainant states that (i) most of the domain names its owns that are listed above in the Factual Background), are registered and used by the Complainant in connection with its activity, and underlines that (ii) all of the trademarks and domain names (listed above in the Factual Background), registered all over the world and containing the distinctive word “sanofi”, were registered prior to the registration of the Disputed Domain Name. The Complainant also highlights that the Respondent could simply not ignore the Complainant whose trademarks and domain names are also present in the United States.
The Complainant contends that the Disputed Domain Name comprises an exact reproduction of the Complainant’s trademark that is combined with a descriptive geographical acronym and followed by the generic Top-Level Domain (“gTLD”) suffix “.com”. The Complainant submits that:
(i) the Disputed Domain Name reproduces – or at least imitates – the SANOFI trademarks, which, of themselves, do not have any particular meaning and are therefore highly distinctive;
(ii) SANOFI is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trademark and trade name SANOFI, and has used its 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 USA; and
(iii) the reproduction of the Complainant’s trademarks as the “attack and dominant part” of the Disputed Domain Name is confusingly similar to its’ SANOFI trademarks, regardless of the adjunction with a hyphen of the geographical indication “fr”, which remains highly descriptive of a location, namely “France”, and the gTLD extension “.com”.
The Complainant argues that it is well established that the gTLD designation used as part of a domain name should be disregarded as it does not serve to distinguish domain names, and the relevant comparison to be made is with the second level portion of the Disputed Domain Name. The Complainant asserts that it is also well established that where a domain name wholly incorporates a complainant’s distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, of descriptive terms. The Complaint submits that the addition of the common geographical indication “fr” is, as such, insufficient to avoid confusing similarity, and will, on the contrary, merely suggests to Internet users that the Disputed Domain Name is related to the Complainant’s business in France, as the Complainant’s mark remains the dominant component of the Disputed Domain Name.
The Complainant also asserts that it must be taken into account that the likelihood of confusion is strengthened by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill, and in this regard, a number of previous WIPO panels have already considered that the Complainant’s trademarks are well known in many jurisdictions. The Complainant concludes that it can only be found that the Respondent selected the Disputed Domain Name in a specific attempt of free-riding “on the coat tails” of the fame of the Complainant’s “SANOFI” trademarks, regardless of the adding of the geographical indication “fr”, and that there is no doubt that the Disputed Domain Name is confusingly similar to the trademarks and domain names over which the Complainant has rights.
As evidence that the “Sanofi” name is well known the Complainant refers to a WIPO publication “WIPO prepares for Launch of New gTLDs while Cybersquatting Cases Continued to Rise” issued in Geneva on March 6, 2012 referenced PR/2012/704, that points out that WIPO’s 2011 caseload featured well-known names from business and public interest sectors among which Sanofi, appearing as one of the most cybersquatted trademarks. The Complainant states that numerous panel decisions have recognized the reputation of SANOFI trademarks, referring to over 30 WIPO UDRP cases involving the Complainant’s trademarks and quoting, in particular, from Sanofi v. Bo Li,WIPO Case No. D2013-1971 and Sanofi v. Whois Privacy protection Service, Inc. / Jim Moretta,WIPO Case No. D2016-0096. The Complainant also asserts that its worldwide recognition has been once more enshrined in the annual “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey issued April 18, 2011 in which (in particular) it appeared in the “Flash of Genius” in reference to its promoting patient resources.
The Complainant argues that it is obvious that the Respondent does not have any legitimate interest in using the Disputed Domain Name since the name “Erika Slade” does not bear any resemblance with the word “sanofi”, which has no particular meaning and is therefore highly distinctive. The Complainant asserts that the Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide SANOFI trademarks and domain names of the Complainant, and that 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. The Complaint states that there is no relationship whatsoever between the Parties and the Respondent has clearly modified the Complainant’s trademarks and domain names for its own use and incorporated them into the Disputed Domain Name without the Complainant’s authorization.
The Complainant contends that 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, especially given that the Disputed Domain Name website is not used at all by the Respondent since it resolves to an inactive page. The Complainant concludes that in these circumstances, the absence of any authorization by the Complainant to use, and the lack of any legitimate reason for use of, the Disputed Domain Name, both prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name .
The Complainant contends that generally speaking, UDRP panel decisions regularly recognize opportunistic bad faith in cases in which the disputed domain name appears confusingly similar to a complainant’s well-known trademark. The Complainant then quotes from a number of WIPO UDRP panel decisions, essentially arguing that the registration, in absence of any rights or legitimate interests and lacking any contrary evidence, of a domain name confusingly similar to a complainant’s widely-known trademark, is opportunistic bad faith.
The Complaint contends that, given the famous and distinctive nature of the mark SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s marks at the time it registered the Disputed Domain Name, and that this suggests that the Respondent acted with opportunistic bad faith in having registered the Disputed Domain Name in order to make an illegitimate use of it. The Complainant also contends that 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 the Disputed Domain Name.
The Complainant argues it is obvious the Respondent registered in bad faith the Disputed Domain Name as this behavior can in no way be the result of a mere coincidence. The Complainant asserts it is obvious the Respondent (a) does not have any legitimate interest in using the Disputed Domain Name since the name “Erika Slade” does not bear any resemblance with the word “sanofi”, which has no particular meaning and is therefore highly distinctive, and (b) has neither prior right nor legitimate interest to justify use of the already well-known and worldwide trademarks and domain names of the Complainant, concluding that this absence of legitimate interest somewhat induces the absence of good faith.
The Complainant contends that in cases in which the well-known status of a complainant’s trademarks is well established, numerous UDRP panel decisions acknowledge that this consideration is, in itself, indicative of bad faith registration and use, and that numerous UDRP panel decisions have recognized SANOFI trademarks are well known internationally. The Complainant concludes that it can only be found that 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 since it could lead Internet users searching for the Complainant’s official Sanofi websites to the pages at the Disputed Domain Name, and that this knowledge characterizes the Respondent’s bad faith in registering the Disputed Domain Name.
The Complainant submits that, given the famous and distinctive nature of the marks SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s marks at the time it registered the Disputed Domain Name, and suggests the Respondent acted with opportunistic bad faith in registering the Disputed Domain Name in order to make an illegitimate use of it, and that this is sufficient to characterize also a bad faith use (as well as bad faith registration) under paragraph 4 (b) (i) of the Policy.
The Complainant argues that the Disputed Domain Name currently resolves to an inactive website and that it has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith. The Complainant asserts also that the lack of use of the Disputed Domain Name which is particularly close to the domain names used by the Complainant, is likely to cause irreparable prejudice to the general goodwill of such Complainant’s domain names, 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 notes that on November 7, 2017, it sent to the Respondent a cease and desist letter, by email, in which it explained that the use 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, however, the Respondent did not answer. The Complainant submits that the Respondent’s failure to express any denial or explanation despite the opportunity offered to it reinforces the inference of bad faith registration and bad faith use.
The Complainant requests that the Disputed Domain Name be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the complainant must prove that each of the following three elements are present:
(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.
The Rules at paragraph 15(a) require that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In the absence of any response from the Respondent to the Complainant’s assertions, the Panel therefore proceeds on the basis of the Complaint and in accordance with the Policy, the Rules and any rules and principles of law that are applicable. A. Identical or Confusingly Similar
The Complainant has provided compelling evidence showing that it is the holder of the SANOFI trademark registered in (amongst other jurisdictions) France, the European Union and the United States, and has rights arising from such registered trademarks. The Respondent does not challenge such evidence or respond to the contentions the Complainant has submitted.
It is clear that the Disputed Domain Name includes the same word as the Complainant’s SANOFI trademark and simply adds the commonly used abbreviation “fr” for France. A hyphen (“-”) separates such additional lettering in the Disputed Domain Name.
The dominant feature of the Disputed Domain Name is the made up word “sanofi” which is the same spelling as the Complainant’s SANOFI trademark. The addition of the abbreviation “fr” for France separated by a hyphen, does not materially diminish the conclusion that the first impression of an Internet user would be that the Disputed Domain Name is confusingly similar to the Complainant’s SANOFI trademark because it has relatively minor additions to the Complainant’s SANOFI trademark.
Further, in the Panel’s view the gTLD, “.com”, does not in this case affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademarks.
In view of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SANOFI trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The evidence provided indicates that the distinctive part of the Disputed Domain Name, “sanofi” has no particular meaning and is therefore distinctive. The evidence indicates that the Sanofi name is well known internationally as being associated with the Complainant and its’ products and services. This distinctive word, well known internationally, is registered as a trademark in the United States and many other jurisdictions. The Respondent’s address is in the United States so it is difficult to see how the Respondent could not have, and indeed should have, been aware of the Complainant’s trademark rights in the SANOFI name which forms the distinctive dominant part of the Disputed Domain Name.
The evidence provided by the Complainant also indicates that:
(i) the Respondent has no relationship whatsoever with the Complainant;
(ii) the Respondent is using the Complainant’s trademark for its own purposes and incorporated it into the Disputed Domain Name without the Complainant’s authorization;
(iii) the Complainant has never licensed or otherwise authorized the Respondent to use its SANOFI trademark or to register any domain name which incorporates the Complainant’s SANOFI trademark;
(iv) the Respondent’s name “Erika Slade” does not bear any resemblance to the word “sanofi” (the dominant part of the Disputed Domain Name) and there is no evidence, including in the WhoIs record for the Disputed Domain Name, that suggests the Respondent is commonly known by the Disputed Domain Name.
Since the Disputed Domain Name is inactive (and appears to have been so continuously since registration on October 1, 2017 until the Panel viewed the website on February 23, 2018), the website to which the Disputed Domain Names revolves provides no assistance as to whether the Respondent might have any rights or legitimate interests in the Disputed Domain Name.
In these proceedings the use in the Disputed Domain Name of the Complainant’s internationally well-known SANOFI trademark suggests that the Disputed Domain Name has some sort of sponsorship or endorsement by the Complainant, or that the Respondent has a right to use the SANOFI trademark in the Disputed Domain Name. However, the Complainant makes it very clear that it has given no license or authorization to use the SANOFI trademark, and that its use without the Complainant’s authorization could well violate the Complainant’s rights in its SANOFI trademark. At the same time there is no evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name.
The evidence provided by the Complainant, together with the fact that the SANOFI mark is well known internationally, means there is likely to be limited circumstances in which the Respondent might have any rights or legitimate interest in the Disputed Domain Name. In the absence of any evidence whatsoever of the Respondent having any right or legitimate interest in the Disputed Domain Name, a prima facie case has been established that it is more likely than not the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has, however, failed to provide any response to rebut this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
In the approximately four months since registration of the Disputed Domain Name it seems there has been no webpage or other indication of the use to which the Respondent is putting, or is intending to put, the Disputed Domain Name. Further, the Respondent has provided no reason as to why it registered, or to what use it has or will put, the Disputed Domain Name. It is apparent however, that (i) the Respondent’s address is in the United States where the SANOFI trademark is registered, and (ii) this trademark is a distinctive mark well known worldwide. In those circumstances the Respondent knew or ought to have known of the Complainant’s rights in the SANOFI trademark making up the dominant part of the Disputed Domain Name.
The Respondent must also have known that registration and use of the Disputed Domain Name will (at least) be likely to confuse Internet users and lead those searching for websites of the Complainant, to the Disputed Domain Name. An Internet user would presume that the Disputed Domain Name is associated or sponsored by the Complainant, and since the Disputed Domain Name is inactive, would likely be confused and frustrated in any online search for Sanofi, France. Internet users might conclude that the Complainant is not supporting the website to which the Disputed Domain Name devolves and go elsewhere. This could, and according to the Complainant does, negatively affect the Complainant’s reputation and potentially its’ business.
The Complainant suggests that the Respondent seeks (a) to block the Complainant from using the Disputed Domain Name, or possibly (b) to deceive Internet users who go to the website to which the Disputed Domain Name resolves, that the Complainant “is not on the Internet or worse that the Complainant is out of business”. The silence of the Respondent gives no clue as to whether either of these might be a purpose of the Respondent in registering and using the Disputed Domain Name.
The Respondent had knowledge, either actual or constructive knowledge, of the Complainant’s rights in the SANOFI trademarks. The Respondent must have known that the Disputed Domain Name would confuse Internet users into thinking that it was affiliated or sponsored by the Complainant when it was not. The Respondent must have known it was likely Internet users seeking to access information about or to contact Sanofi (particularly Sanofi, France), would be attracted to the Disputed Domain Name and could very well divert such Internet users away from the Complainant’s official websites at other similar domain names, such as . The Respondent has for four months left the Disputed Domain Name inactive. The Respondent must have known that this would likely confuse (and probably also frustrate) Internet users looking for websites of the Complainant and particularly those looking for websites of Sanofi, France. The Complainant has received a “cease and desist” letter at the same email address at which the Respondent received Notification of the Complaint in these proceedings, so ought to know that the Disputed Domain Name was and remains the subject of a dispute with the Complainant.
The evidence and circumstances of this case leads the Panel to infer that the Respondent appears to have registered and is using the Disputed Domain Name (i) to prevent the Complainant from using the Disputed Domain Name that in dominant part includes the Complainant’s well-known trademark, (ii) to confuse Internet users as to the sponsorship or affiliation of the Disputed Domain Name, and (iii) to likely disrupt the business of the Complainant by diverting Internet users away from the Complainant’s official websites, and (iv) to likely disrupt the business of the Complainant by allowing Internet users to believe that the Complainant does not support its websites. The Complainant makes very serious allegations of bad faith against the Respondent to which the Respondent did not respond.
In view of the above facts and circumstances, the Panel considers the Respondent’s passive holding of the Disputed Domain Name, without any legitimate reason, to amount to registration and use in bad faith.
Finally, the Panel notes that the Complainant requests that the Disputed Domain Name be cancelled. 7. Decision
For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be cancelled.
Frank Schoneveld
Sole Panelist
Date: February 26, 2018
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