The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Gal Ron of Limassol, Cyprus. 2. The Domain Name and Registrar
The disputed 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 September 14, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Complainant filed its first amended Complaint on September 18, 2018. The Center sent an email communication to the Complainant on September 21, 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 its second amended Complaint on September 25, 2018.
The Center verified that the Complaint together with the amended Complaints 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 September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on October 22, 2018.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 2, 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 well-known French pharmaceutical company that does business under a world famous trademark, SANOFI. This trademark has been registered with the Intellectual Property Office in France (“INPI”) (e.g., Registration No. 3831592; registered May 16, 2011), among other trademark authorities around the world.
The Respondent registered the disputed domain name on April 20, 2017. The disputed domain name is currently connected to an inactive website. 5. Parties’ Contentions A. Complainant
- The Complainant is a French multinational pharmaceutical company that changed its name to “Sanofi” in 2011. The Complainant is the fourth largest such company in the world, with net sales of Euro 35.05 billion in 2017 and 100,000 employees in more than 100 countries. As a result, the Complainant and its mark have garnered worldwide recognition.
- The Complainant conducts business under its SANOFI trademark, which has been registered in France and with several other trademark authorities throughout the world. The Complainant also operates in connection with many domain names that incorporate its mark, including and .
- The disputed domain name, , is confusingly similar to the Complainant’s SANOFI mark. The dominant term in the disputed domain name is identical to the trademark. The addition of the two-letter term, “vr”, is insufficient to distinguish the disputed domain name from the mark, particularly because those two letters form a common abbreviation for the term “vancomycin resistant”, which is pertinent to the pharmaceutical field in which the Complainant does business.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to adequately identify himself when registering the disputed domain name which is evidence of his lack of rights or legitimate interests in the same. Moreover, the Complainant has never licensed or authorized the Respondent to use the SANOFI trademark in a domain name or otherwise.
- The Respondent is using the disputed domain name in neither a legitimate noncommercial or fair use manner, nor in connection with a bona fide offering of goods or services, since the website connected to the disputed domain name is simply an inactive webpage.
- The disputed domain name was registered and is being used in bad faith. Given the fame of the Complainant’s mark, the registration and use of the confusingly similar disputed domain name suggests opportunistic bad faith. Moreover, the Respondent’s incomplete registration identity details are indicative of bad faith registration of the disputed domain name. Also, under the circumstances involved in this case, the Respondent’s passive holding of the disputed domain name should be considered bad faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and order a transfer or cancellation of the disputed domain name, , provided the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under Policy paragraph 4(a)(i), a complainant must first establish that it has rights in a trademark or service mark. The Complainant has supplied the Panel with conclusive evidence that it possesses rights in the SANOFI trademark by virtue of many registrations for that mark with competent authorities, including with France’s INPI. See, VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”); and GIE Batigère and SA Batigère v. Sociedad Batigere,WIPO Case No. D2001-0665 (“Complainants have established their rights in the trademark BATIGERE with a trademark registration in France in 1982.”).
The Complainant must next demonstrate that the disputed domain name is, if not identical, at least confusingly similar to the Complainant’s trademark. Upon simple visual inspection, the Panel observes that the disputed domain name is very similar to the SANOFI mark. The first six letters of the disputed domain name are exactly the same as the six letters that make up that trademark.
The two-letter term “vr” is then added to complete the Second Level Domain of the disputed domain name, which creates only a small distinction in the Panel’s view. This is particularly true because those two letters can be taken as a common abbreviation for the term “vancomycin resistant”, which relates directly to some of the Complainant’s pharmaceutical products. The addition of those two letters does not avoid a finding of confusing similarity (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.8). Moreover, many prior UDRP decisions have found that an attached generic Top-Level Domain such as “.com” is irrelevant in an analysis of the similarity between a domain name and a trademark. Consequently, the Panel determines that the disputed domain name is confusingly similar to the Complainant’s SANOFI mark. See, Playboy Enterprises International, Inc. v. James H Park,WIPO Case No. D2017-1744 (finding to be confusingly similar to the PLAYBOY trademark); Alstom v. Registration Private, Domains by Proxy LLC / Global FB Holdings Inc.,WIPO Case No. D2017-1677 (ruling that is confusingly similar to the ALSTOM mark); and Boehringer Ingelheim International GMBH v. Ralf Zinc,WIPO Case No. D2016-1236 (“...it is acknowledged that the general Top-Level Domain (“gTLD”) does not have a relevant influence on the similarity of a trademark and a domain name.”).
As reasoned above, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant asserts that it has neither licensed nor authorized the Respondent to use its trademark in a domain name or in any other manner. Thus, the Complainant has put forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This places the burden on the Respondent to present evidence to the Panel that he does possess such rights or interests. See, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (“...once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name.”): and Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
Since the Respondent has not filed a Response, he has presented no evidence that might contradict the Complainant’s prima facie case as established above. This does not mean that the Complainant must necessarily prevail as to this issue, but the Panel will regard as true any reasonable contention put forward in the Complaint while attempting to determine whether there is any available evidence to support the proposition that the Respondent has rights or legitimate interests in the disputed domain name. See, RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540 (“Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.”); and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“...the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.”).
The Panel will use Policy paragraph 4(c) as a guide for its analysis of the Respondent’s possible rights or legitimate interests in the disputed domain name. Under paragraph 4(c)(i), the Respondent must persuade the Panel that he is engaged, or demonstrably preparing to engage, in “a bona fide offering of goods or services” in connection with the disputed domain name. The Panel accepts the Complainant’s reasonable contention, supported by evidence in the Complaint, that the disputed domain name resolves to a website that is inactive and without any reference to a demonstrable plan to offer anything further in the future. As a result, the Panel must conclude that the Respondent cannot rely on paragraph 4(c)(i) of the Policy to sustain his claim to rights or legitimate interests in the disputed domain name.
With respect to Policy paragraph 4(c)(ii), the Panel can find no evidence that the Respondent owns a company or that he, Gal Ron, has ever been commonly known as the disputed domain name . So again, that paragraph is inapplicable to this case. Finally, Policy paragraph 4(c)(iii) requires that the Respondent provide evidence that he is using the disputed domain name in “a legitimate noncommercial or fair use manner”. Since the aforementioned inactive website indicates to the Panel that the Respondent is not using the disputed domain name for any purpose, the Panel concludes that the Respondent fails this test as well. See, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. God, Inc.,WIPO Case No. D2017-0246 (“...the Respondent is neither making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the [disputed] Domain Name as the [disputed] Domain Name is not resolving to an active website.”).
Accordingly, the Panel finds that the Complainant’s prima facie case prevails, and that it has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
While Policy paragraph 4(b) sets forth four circumstances that can lead a panel to a finding of bad faith registration and use of a disputed domain name, those circumstances were not intended to be exclusive as to rationales for such findings. See, Rolls-Royce PLC v. Ragnar Kallaste,WIPO Case No. D2014-2218 (“The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found.”); and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the present case, the Complainant has provided the Panel with dozens of prior UDRP decisions in which the Complainant has prevailed on claims under the Policy. It is the Panel’s view that, in the majority of these prior decisions, learned panels have found that the Complainant’s SANOFI trademark is distinctive and world famous. Under that reasoning, many of those panels have concluded that any respondent, who was in no way affiliated with the Complainant and who registered and was using a disputed domain name that was identical or confusingly similar to that trademark, did so in bad faith due to the very fame and distinctiveness of said mark. Moreover, in several of those decisions, the bad faith findings were buttressed by the facts that, as in this case, no response was filed and the respective disputed domain name(s) was held passively. As a result, the Panel agrees with the reasoning articulated in those decisions and finds that the Respondent registered and is using the disputed domain name in bad faith. See, for example, Sanofi v. Registration Private, Domains By Proxy, LLC / Lori Luepke,WIPO Case No. D2018-1322; Sanofi v. Yangkai,WIPO Case No. D2018-0054; Sanofi v. Sherry Ddepues,WIPO Case No. D2017-2347; and Sanofi v. WHOIS Agent / Whois privacy protection service, Inc. / Jenny Riley,WIPO Case No. D2017-2129 (“Given the well known and distinctive nature of the mark SANOFI, the Panel considers that Respondent acted with opportunistic bad faith in having registered the domain name in order to make an illegitimate use of it.”).
Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith. 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.
Dennis A. Foster
Sole Panelist
Date: November 16, 2018
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