The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Nicholas Woolf of Portland, Oregon, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2018. On November 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 November 14, 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 November 15, 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 November 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2018. An informal email communication from the Respondent was received by the Center on November 15, 2018. No further communication was received from the Respondent. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on December 13, 2018.
The Center appointed Alejandro Touriño as the sole panelist in this matter on December 20, 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 multinational pharmaceutical company headquartered in Paris (France) and is ranked among the world's largest multinational pharmaceutical companies for sales of prescription drugs. It has offices in more than 100 countries employing 100,000 people.
The Complainant owns numerous SANOFI trademark registrations around the world covering pharmaceutical products, including, among others the following:
- French trademark SANOFI No. 3831592, registered on May 16, 2011, in classes 01; 03; 05; 09; 10; 16; 35; 38; 40; 41; 42; 44;
- French trademark SANOFI No. 96655339, registered on December 11, 1996, in classes 01; 03; 05; 09; 10; 35; 40; 42;
- French trademark SANOFI No. 92412574, registered on March 26, 1992, in class 05;
- French trademark SANOFI No. 1482708, registered on August 11, 1988, in classes 01; 03; 04; 05; 10; 16; 25; 28; 31;
- European Union trademark SANOFI No. 010167351, filed on August 02, 2011 and registered on January 7, 2012, in classes 03; 05;
- European Union trademark SANOFI No. 004182325, filed on December 08, 2004 and registered on February 9, 2006, in classes 01; 09; 10; 16; 38; 41; 42; 44;
- European Union trademark SANOFI No. 000596023, filed on July 15, 1997 and registered on February 1, 1999, in classes 03; 05;
- International trademark SANOFI No. 1091805, registered on August 18, 2011, in classes 01; 03; 05; 09; 10; 16; 35; 38; 40; 41; 42; 44;
- International trademark SANOFI No. 1092811, registered on August 11, 2011, in classes 01; 09; 10; 16; 38; 41; 42; 44;
- International trademark SANOFI No. 1094854, registered on August 11, 2011, in classes 03; 05;
- International trademark SANOFI No. 674936, registered on June 11, 1997, in classes 03; 05;
- International trademark SANOFI No. 591490, registered on September 25, 1992, in class 05;
- United States trademark SANOFI No. 85396658, filed on August 12, 2011 and registered on July 24, 2012, in class 05.
The Complainant is also the owner of numerous domain names containing the trademark SANOFI, including, among others, 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.
All of the above-mentioned trademarks and domain names, registered all over the world are prior to the registration of the disputed domain name , which dates from September 19, 2018.
The disputed domain name resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is a multinational company with presence in more than 100 countries and ranked among the world's largest multinational pharmaceutical companies. The Complainant's worldwide reputation was recognized in the annual “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey issued on April 18, 2011.
The Complainant is the owner of a vast portfolio of trademarks and domain names, all over the world and containing the distinctive word “sanofi”, prior to the registration of the disputed domain name by the Respondent. The Complainant has used its trademark SANOFI for over 40 years and invested substantial financial resources to advertise and promote the company and its SANOFI trademarks in countries all over the world.
The disputed domain name is confusingly similar to the SANOFI trademarks owned by the Complainant, since the disputed domain name reproduces the SANOFI trademarks in full, regardless of the adjunction of the descriptive term “medical affairs”, considering the Complainant’s field of activities, and the generic Top-Level Domain (“gTLD”) “.online”, which refers to an Internet presence. The likelihood of confusion is ascertained by the reputation of the Complainant’s trademarks and goodwill. In this regard, numerous prior panel decisions under UDRP have recognized the SANOFI trademarks as well-known.
The Registrant does not have any legitimate interest in using the disputed domain name. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name nor is 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 the Policy. Indeed, the disputed domain name resolves to an inactive website. The lack of use of the disputed domain name is likely to cause an irreparable prejudice to the Complainant’s goodwill because Internet users could be led to believe that the Complainant is not on the Internet or that the Complainant is out of business. The Respondent is not known or in any way related to the Complainant and is not authorized to use the SANOFI trademarks. The Respondent is not providing any accurate information on his identity in the WhoIs information.
The Respondent registered and used the disputed domain name in bad faith. Given the famous and distinctive nature of the trademark SANOFI, the Respondent is likely to have had notice as to the existence of the Complainant’s trademark at the time of registering the disputed domain name. The Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it. 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 the SANOFI trademark and the disputed domain name. B. Respondent
The Respondent did not submit any substantive response. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, the Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In the case at hand, the Complainant has evidenced to own trademarks registrations for SANOFI. The disputed domain name wholly includes the Complainant’s trademark SANOFI, and the addition of the descriptive term “medicalaffairs” and the gTLD “.online” does not avoid a finding of confusing similarity. It is recognizable within the disputed domain name notwithstanding the insertion of both elements, that do not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s trademark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
As explained at section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Section 1.8 of the Overview also comments that; “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the SANOFI trademark in which the Complainant has rights.
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. In particular, the Complainant has never given any permission and has never authorized the Respondent to use any of the Complainant’s trademarks. The Complainant does not have any relationship or association with the Respondent. The Respondent is not known by the disputed domain name, is not using it to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of the disputed domain name. The Panel also finds that the Respondent registered the disputed domain name long after the Complainant registered its SANOFI trademark and long after the Complainant used its trademarks in commerce for the first time.
In view of the foregoing, the Panel accepts and adopts the Complainant’s submission that it is not possible to conceive circumstances in which the Respondent could legitimately use the disputed domain name. The Complainant has established a prima face case which the Respondent has not sought to rebut and accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, see WIPO Overview 3.0, section 2.1. Furthermore, the Respondent has not provided any explanation for the use of the Complainant´s trademark in the disputed domain name and the Panel cannot find anything in its favor, therefore the Panel concludes that the Respondent has registered and used the disputed domain name trying to capitalize on the Complainant’s goodwill in the mark in order to mislead Internet users.
Under the present circumstances, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel thus finds that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(ii) of the Policy the Complainant must establish that the Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that the Complainant’s SANOFI trademark has been acknowledged as well-known by numerous UDRP decisions. Consequently, it is likely that the Respondent knew of the existence of the Complainant’s trademark when it registered the disputed domain name, as it comprises of the Complainant’s trademark in full. Taking into account the worldwide reputation of the SANOFI trademark, as well as the market presence of the Complainant in numerous countries, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make illegitimate use of it. There is substantial evidence that the registration of the disputed domain name by an entity that has no relationship to that trademark is itself sufficient evidence of bad faith registration and use.
On top of that, the disputed domain name resolves to an inactive website. 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. As stated in Telstra Corporative Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in order to establish that the Respondent is using a domain name in bad faith it is not necessary to find that the Respondent has undertaken any positive action in relation to the domain name. Indeed, in circumstances of inaction (“passive holding”), this behavior falls within the concept of the disputed domain name “being used in bad faith”.
This Panel finds that due to the fact that the circumstances of this case are so similar to the one provided by paragraph 4(b)(iii) of the Policy (registration of the domain name in order to disrupt the business of a competitor) and the apparent lack of any active website at the disputed domain name, it can be found that passive holding of the disputed domain name by the Respondent falls within the concept of the disputed domain name “being used in bad faith”.
In addition to this, the Respondent has registered the disputed domain name under a privacy service and refused to participate in the present proceeding in order to put forward relevant arguments in its support.
It is the Panel’s view that the Respondent’s registration and use of the disputed domain name constitutes bad faith.
For the above reasons the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel concludes that the third element of the Policy has been met. 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.
Alejandro Touriño
Sole Panelist
Date: December 31, 2018
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