The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Sherry Ddepues of Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 November 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 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 01, 03, 05, 09, 10, 16, 35, 38, 40, 41, 42, 44 notably concerning pharmaceutical products;
French trademark SANOFI, registered with registration number 96655339 on December 11, 1996 in classes 01, 03, 05, 09, 10, 35, 40, 42 notably concerning pharmaceutical products;
French trademark SANOFI, registered with registration number 92412574 on March 26, 1992 in class 05 concerning pharmaceutical products;
French trademark SANOFI, registered with registration number 1482708 on August 11, 1988 in classes 01, 03, 04, 05, 10, 16, 25, 28, 31 notably concerning pharmaceutical products;
European Union trademark SANOFI, registered with registration number 010167351, filed on August 2, 2011 and registered on January 7, 2012 in classes 03 and 05 notably concerning pharmaceutical products;
European Union trademark SANOFI, registered with registration number 004182325, filed on December 8, 2004 and registered on February 9, 2006 in classes 01, 09, 10, 16, 38, 41, 42, 44 notably concerning products in pharmaceutical and medical spheres;
European Union trademark SANOFI, registered with registration number 000596023, filed on July 15, 1997 and registered on February 1, 1999 in classes 03 and 05 notably concerning pharmaceutical products;
International trademark SANOFI, registered with registration number 1091805, registered on August 18, 2011 in classes 01, 03, 05, 09, 10, 16, 35, 38, 40, 41, 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 01, 09, 10, 16, 38, 41, 42 and 44 notably concerning products in pharmaceutical and medical spheres, and designating among others Australia, Georgia, Japan, Republic of South Korea, Cuba, Russian Federation, Ukraine;
International trademark SANOFI, registered with registration number 1094854 on August 11, 2011 in classes 03 and 05 notably concerning pharmaceutical products, and designating among others Australia, Georgia, Japan, Republic of South Korea, Cuba, Russian Federation, Ukraine;
International trademark SANOFI, registered with registration number 674936 on June 11, 1997 in classes 03 and 05 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 05 concerning pharmaceutical products, and designating among others Switzerland, China, Cuba, Romania, Russian Federation;
United States of America trademark SANOFI, registered with registration number 85396658, filed on August 12, 2011 and registered on July 24, 2012 in international class 05 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 in the Registrar’s WhoIs and in the Complaint. The Respondent is the owner of the disputed domain name registration.
The disputed domain name was registered on October 15, 2017 and resolves to an inactive parking page with no active links. 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 during which time it 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 portfolio 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 and the Top-Level Domain extension “store”. The Complainant submits that the “.store” extension is insufficient to avoid confusing similarity, and on the contrary, merely suggests to Internet users that the disputed domain name relates to the Complainant and therefore increases the inherent risk of confusion. In this regard the Complainant cites the decision of the panel in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409.
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 Corporation / 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 “Sherry Ddepues” does not bear any resemblance with the word “SANOFI”, which the Complainant alleges has no particular meaning and is therefore highly distinctive; 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; that there is no relationship whatsoever between the Parties; that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; 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 a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy and that the disputed domain name merely resolves to an inactive page.
The Complainant further complains that the disputed domain name was registered and is being used in bad faith. The Complainant 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 opportunistic bad faith registration of the 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 corporation ranks first in Europe and fourth in the world in the pharmaceutical industry.
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. 2000-0003 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. D2012-1831.
The Complainant submits that the cumulative circumstances to be considered by this Panel include the identity of the disputed domain name and the Complainants 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 prior to the making of this Complaint, its counsel sent a cease and desist letter to the Respondent by email, in which it explained that the registration of the domain name constituted a breach of Complainant’s prior rights over the trademarks SANOFI and requested the immediate transfer of the disputed domain name. 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. This argument has already been upheld by previous Panel decisions including M. Antonino Amaddeo (Reminiscence Diffusion Internationale) v. Gas Bijoux SAS / GAS Olivier,WIPO Case No. D2012-1831.
Consequently, the Complainant submits that the disputed domain name has been both registered and used intentionally by the Respondent in bad faith without any rights or legitimate interest. 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 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 “.store” gTLD extension may be ignored for the purposes of comparison in this case.
The Complainant has therefore satisfied the first element of the test in 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 disputed domain name is a unique and distinctive word with no ordinary meaning which the Complainant has adopted as a trademark; 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.
In the circumstances 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 succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name is identical to the Complainant’s unique and 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 October 15, 2017 long after the Complainant had established its goodwill and reputation.
Because of the identity of the domain name and the Complainant’s mark and the distinctive character of the SANOFI mark it is improbable that the 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 Internet domain names when registering the disputed domain name.
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 disputed domain name is being passively held, resolving to a holding page with no links. Taking all the circumstances into account, in particular the global reputation of the Complainant and its SANOFI mark, that the domain name is identical to the SANOFI mark and that the Respondent has failed to respond to the Complaint, and applying the principle established in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. 2000-0003 this Panel finds that on the balance of probabilities the Respondent is engaged in passive holding and the disputed domain name is being used in bad faith.
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 relief 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 cancelled.
James Bridgeman
Sole Panelist
Date: January 12, 2018
Full & Egal Universal Law Academy