The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2018. On June 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2018, 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 June 26, 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 27, 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 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2018.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on July 30, 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 leading manufacturer in the pharmaceutical field.
The Complainant owns a number of registrations for the trademark SANOFI including registrations in France (Registration No. 3831592, registered on May 16, 2011) and the European Union (Registration No. 010167351, registered on January 7, 2012).
The Complainant has registered a number of domain names which include the trademark SANOFI.
The disputed domain name was registered on January 29, 2018. The disputed domain name resolved to an undeveloped parked website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant registered the trademark SANOFI in many jurisdictions. The Complainant has also registered domain names that include the trademark SANOFI. All of the registrations were made prior to the disputed domain name being registered. The disputed domain name reproduces the trademark SANOFI, which is highly distinctive. The Complainant has been using the trademark SANOFI for 40 years and has spent significant resources in its marketing. Adding the acronym “inc” which is a descriptive term and the generic Top-Level Domain (“gTLD”) “.com” does not distinguish the disputed domain name. The Complainant’s trademark has a reputation, which increases the likelihood of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. SANOFI is highly distinctive and well known. The Complainant did not authorize the Respondent to use its trademark. The Respondent has not made a legitimate noncommercial or fair use of the disputed domain name as the disputed domain name redirects to an inactive page.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has no rights or legitimate interests in the disputed domain name and hence the registration was opportunistic bad faith. There is opportunistic bad faith in the Respondent’s behavior in both registering and using the disputed domain name as the Respondent must have had at least constructive notice of the Complainant’s trademark which is well known. The dispute domain name must have been registered in order to attract Internet users by creating likelihood of confusion. The Respondent is using the disputed domain name in bad faith as it resolves to an inactive page, which constitutes passive holding. A cease and desist letter sent by the Complainant remained unanswered. The inactive page of the disputed domain name causes prejudice to the Complainant as it may create the impression that the latter has gone out of business. B. Respondent
The Respondent did not submit any substantive reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant holds a number of trademark registrations for the trademark SANOFI. The Panel is satisfied that the Complainant has established its ownership of the trademark SANOFI.
The disputed domain name comprises the Complainant’s trademark in its entirety followed by the acronym “inc”, which does not eliminate the confusing similarity with the trademark SANOFI. The Complainant’s trademark is clearly recognizable in the disputed domain name. The gTLD “.com” may typically be ignored when assessing confusing similarity as held by prior UDRP panels.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to the Complainant’s contestations set out above, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The element of bad faith is evidenced by the fact that the trademark SANOFI has been registered and used both as a trademark and tradename of the Complainant for 40 years before the Respondent registered the disputed domain name. Hence, it must be that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain name.
Furthermore, the Respondent did not respond to the Complainant’s cease and desist letter nor has it provided a substantive response to the Complaint demonstrating actual or contemplated good faith use. In addition, holding a passive page has been considered by UDRP Panels to constitute bad faith. The Panel cannot conceive of any good faith use that the disputed domain name could be put to by the Respondent that would not be an attempt to take advantage of the good will associated with the Complainant’s trademark. Therefore, the Panel concludes that the disputed domain name is registered and is being used in bad faith.
In the light of the above, the Panel finds that the Complainant has satisfied 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 disputed domain name be transferred to the Complainant.
Nayiri Boghossian
Sole Panelist
Date: August 12, 2018
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