The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Lori Luepke of Bonduel Wisconsin, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2018. On June 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2018 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 June 20, 2018.
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 June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2018.
The Center appointed Tommaso La Scala as the sole panelist in this matter on July 27, 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 – a French multinational pharmaceutical company headquartered in Paris (France), one of the world’s largest multinational pharmaceutical companies by prescription sales – is a global leader in research and development, manufacturing and marketing of pharmaceutical products for sale, with consolidated net sales of EUR 35.05 billion (in 2017) and 100,000 people employed in more than 100 countries.
The Complainant has registered the trademark SANOFI all around the world, including the Respondent’s country of residence (see, among others, United States trademark registration No. 85396658, filed on August 12, 2011 and registered on July 24, 2012). Likewise, the Complainant also owns a considerable domain name portfolio consisting of domain names that include the SANOFI trademark.
The trademark SANOFI has been the subject of extensive and long-term use on products and services of the Complainant and its wide renown among public has been confirmed by previous UDRP decisions (e.g., Sanofi/Genzyme Corporation v. VistaPrint Technologies Ltd,WIPO Case No. D2018-0295; Sanofi/Genzyme Corporation v. Cimpress Schweiz GmbH,WIPO Case No. D2018-0296; Sanofi/Genzyme Corporation v. ZhangPeng,WIPO Case No. D2018-0100; and Sanofi v. Yangkai,WIPO Case No. D2018-0054).
The Domain Name was registered on February 7, 2018. The Domain Name resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical and confusingly similar to the Complainant’s SANOFI trademark, as it exactly reproduces it, with the addition of the term “company”, a word would remain, as such, insufficient to avoid confusing similarity, and would, on the contrary, merely suggests to Internet users that the litigious Domain Name is related to the Complainant’s structure.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor is it making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademarks of another.
The Domain Name currently resolves to an inactive website. In this regard, the Complainant further states that the Domain Name has been registered and used in an opportunistic bad faith way, considering that the Respondent surely had constructive notice that the SANOFI trademark was registered in the United States and in many other jurisdictions worldwide. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established its registered rights in the SANOFI trademark.
The Domain Name exactly reproduces the SANOFI trademark and the only difference is the addition of the descriptive English word “company”. As previously indicated by UDRP panels, “The addition of the term ‘company’ to the Disputed Domain Name does not affect in any way the confusing similarity with the Complainant’s trademark” (see Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Panel believes the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Domain Name exactly reproducing its trademarks.
The Respondent did not respond nor provide any evidence that it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. In fact, the Respondent is not making any apparent use of the Domain Name at all, nor has it come forward to reply to the Complainant’s contentions.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith.
The Panel notes that the trademark SANOFI is well known and given its renown in several countries – including the United States, where the Respondent is apparently domiciled – the Panel concludes that the Respondent must have been aware of the Complainant’s trademark and that it registered the Domain Name comprising a substantial reproduction of the Complainant’s trademark in bad faith. The above suggests that the Respondent acted with opportunistic bad faith in registering the Domain Name.
As a matter of fact, a quick search on Google for SANOFI would have revealed to the Respondent that all the results retrieved are strictly related to the Complainant and its trademark.
As for the use of the Domain Name, based on the evidence submitted, the Respondent registered the Domain Name and, as of this day, is passively holding it without using it for any purpose. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see, among others, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028; and M. Antonino Amaddeo (Reminiscence Diffusion Internationale) v. Gas Bijoux SAS / GAS Olivier,WIPO Case No. D2012-1815).
Noting that the Respondent did not provide any explanation about the registration of the Domain Name, even after having received a cease and desist letter from the Complainant, the fact that the SANOFI mark is very widely known, that the Respondent made use of a privacy service to conceal its identity when registering the Domain Name, and that the Domain Name itself implies an association with the Complainant, the Panel finds that the Domain Name is passively held in bad faith and that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to the Complainant.
Tommaso La Scala
Sole Panelist
Date: August 3, 2018
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