The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States” or “US”) / John Valley of Des Plaines, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name (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 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 November 13, 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 November 15, 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 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 November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2018.
The Center appointed Jacques de Werra as the sole panelist in this matter on December 21, 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 French multinational pharmaceutical company headquartered in Paris (France), ranking as the fourth world’s largest multinational pharmaceutical company by prescription sales. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication.
The Complainant is the owner of many trademarks reflecting its company name SANOFI, including the following trademarks (“the Trademark”):
French trademark SANOFI (with device) number 3831592, registered 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 number 96655339, registered on December 11, 1996 in classes 01; 03; 05; 09; 10; 35; 40; 42 notably concerning pharmaceutical products;
French trademark sanofi (with device) number 92412574, registered on March 26, 1992 in class 05 concerning pharmaceutical products;
French trademark SANOFI number 1482708, registered on August 11, 1988 in classes 01; 03; 04; 05; 10; 16; 25; 28; 31 notably concerning pharmaceutical products;
European Union trademark SANOFI number 010167351, filed on August 2, 2011 and registered on January 7, 2012 in classes 03; 05 notably concerning pharmaceutical products;
European Union trademark SANOFI 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 number 000596023, filed on July 15, 1997 and registered on February 1, 1999 in classes 03; 05 notably concerning pharmaceutical products;
International trademark SANOFI (with device) number 1091805, registered on August 18, 2011 in classes 01; 03; 05; 09; 10; 16; 35, 38; 40; 41; 42; 44 notably concerning pharmaceutical products, and designating among others Georgia, the Russian Federation, Ukraine;
International trademark SANOFI number 1092811, registered on August 11, 2011 in classes 01; 09; 10;16; 38; 41; 42; 44 notably concerning products in pharmaceutical and medical spheres, and designating among others Australia, Georgia, Japan, the Republic of Korea, Cuba, the Russian Federation, Ukraine;
International trademark SANOFI number 1094854, registered on August 11, 2011 in classes 03; 05 notably concerning pharmaceutical products, and designating among others Australia, Georgia, Japan, the Republic of Korea, Cuba, the Russian Federation, Ukraine;
International trademark sanofi number 674936, registered on June 11, 1997 in classes 03; 05 notably concerning pharmaceutical products and designating among others Switzerland, Cuba, Romania, the Russian Federation, Ukraine;
International trademark sanofi (with device) number 591490, registered on September 25, 1992 in class 05 concerning pharmaceutical products, and designating among others Switzerland, China, Cuba, Romania, the Russian Federation;
US trademark SANOFI number 85396658, filed on August 12, 2011 and registered on July 24, 2012 in class 05, notably concerning pharmaceutical products.
The Complainant is also the owner of the many domain names reflecting the Trademark, including the following:
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;
registered on March 17, 2011.
The Disputed Domain Name was registered on October 25, 2018. It is not active. 5. Parties’ Contentions A. Complainant
The Complainant claims that the Disputed Domain Name is confusingly similar to the Trademark. Firstly, the Disputed Domain Name reproduces the Trademark which does not have any particular meaning and is therefore highly distinctive. Secondly, the Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the Trademark. It has used the Trademark for over 40 years and invested substantial financial resources over the years to advertise and promote the company and the Trademark in countries all over the world. Thirdly, the reproduction of the Complainant’s Trademark as the attack and dominant part of the Disputed Domain Name is confusingly similar to the Trademark, regardless of the adjunction of the descriptive and depreciative term “sucks” and of the generic Top-Level Domain extension “.com”.
It is well established that where a domain name wholly incorporates a complainant’s distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, of a descriptive term. For instance, the addition of the descriptive and depreciative term “sucks” which is a common English word remains, as such, insufficient to avoid confusing similarity, and will, on the contrary, merely suggests to Internet users that the litigious domain name is related to the Complainant’s activities. It can only be found that the Respondent selected the Disputed Domain Name in a specific attempt of free-riding on the coat tails of the fame of the Complainant’s Trademark, regardless of the addition of the depreciative term “sucks”. Finally, it must be taken into account that the likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill. In this regard, other panels has already considered that the Complainant’s Trademark is “well-known” in many jurisdictions.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Obviously, the Respondent does not have any legitimate interest regarding the Disputed Domain Name. Firstly, it is obvious that the Respondent does not have any legitimate interest in using the Disputed Domain Name since the name “Registration Private” does not bear any resemblance with the word “SANOFI” which has no meaning and is therefore highly distinctive. Secondly, “Registration Private” indicated on the WhoIs Database as registrant of the Disputed Domain Name, is not the real registrant. Thirdly, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the Trademark. Consequently, there is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainant’s Trademark for its own use and incorporated them into the Disputed Domain Name without the Complainant’s authorization. Fourthly, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name nor is he using it 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 given that the website associated with it is not used legitimately by the Respondent. Indeed, the litigious website associated to the Disputed Domain Name simply refers to an inactive page.
Under these circumstances, the absence of any authorization by the Complainant and the lack of legitimate reason in the use of the Disputed Domain Name both prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. Generally speaking, it must be borne in mind that panel decisions under the UDRP regularly recognize opportunistic bad faith in cases in which the disputed domain name appears confusingly similar to a complainant’s well-known trademarks. It is obviously clear that the Respondent registered in bad faith the Disputed Domain Name corresponding to the Trademark owned by the Complainant, as this behavior can in no way be the result of a mere coincidence. To begin with, it is clear that the Respondent does not have any legitimate interest in using the litigious domain name since the name “Registration Private” does not bear any resemblance with the word “SANOFI” – which has no particular meaning and is therefore highly distinctive.
Secondly, it should be considered that, given the famous and distinctive nature of the Trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s Trademark at the time he registered the Disputed Domain Name. This suggests that the Respondent acted with opportunistic bad faith in registering the Disputed Domain Name in order to make an illegitimate use of it. Thirdly, 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 Trademark and the Disputed Domain Name.
The Complainant is nowadays one of the world leaders among pharmaceutical companies, ranking first in Europe and ranked fourth in the world in the pharmaceutical industry. The Complainant is the owner of the Trademark which is reputed. In cases in which the well-known status of a complainant’s trademark is well-established, numerous panel decisions under the UDRP constantly acknowledge that this consideration is, in itself, indicative of bad faith registration and use. As previously indicated, numerous panel decisions have recognized the reputation of the Trademark but moreover, the worldwide reputation of its activities. Therefore, it can only be found that 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 since it could lead Internet users searching for official information or SANOFI products in the US to the litigious pages. This knowledge characterizes the Respondent’s bad faith in registering the Disputed Domain Name. For all these reasons, there is no doubt that the Disputed Domain Name has been registered in bad faith by the Respondent. The Disputed Domain Name was also used in bad faith by the Respondent. Firstly, it is crystal clear that, given the reputed and distinctive nature of the Trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s marks at the time he registered the Disputed Domain Name. This suggests that the Respondent acted with opportunistic bad faith in registering the name in order to make an illegitimate use of it. Secondly, 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. Finally, the lack of use of the Disputed Domain Name which is particularly close to those used by the Complainant is likely to cause irreparable prejudice to its general goodwill 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. Consequently, the Disputed Domain Name has been both registered and used intentionally in bad faith without any rights or legitimate interests by the Respondent. 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 three elements in order to succeed in a UDRP proceeding:
(i) the respondent’s 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 respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name can be considered as confusingly similar to the Trademark, because the Trademark is clearly recognizable within the Disputed Domain Name to which a pejorative element has been added (i.e. “sucks”).
It is established practice that a domain name consisting of a trademark and a negative or pejorative term is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.13.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which features the Trademark owned by the Complainant as its distinctive element without the authorization of the Complainant, in a way which can only reasonably be explained as a reference to the Complainant corporate name and to the Complainant’s Trademark.
The Complainant has thus established without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Name, that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not use the Disputed Domain Name (which thus cannot constitute a use in connection with a bona fide attempt to offer goods and services).
The Panel notes that it is possible to find that a respondent may have a legitimate interest in using a third‑party trademark without authorization from the trademark owner as part of a domain name which is not identical to the complainant’s trademark, but rather comprises the trademark plus a derogatory term which is precisely the case here. This could be admissible provided that the use of the domain name is made for a criticism site and that such use is prima facie noncommercial, genuinely fair, and not misleading or false. WIPO Overview 3.0, section 2.6.3.
In this case, the Respondent who has not participated in the proceedings has however not brought any evidence of any potential use of the Disputed Domain Name for a criticism site.
The Panel further notes that the real identity of the Respondent has been revealed only in the course of the proceedings so that the argument initially raised by the Complainant that the Respondent would not have any legitimate interest in using the Disputed Domain Name since the name which was indicated for the registrant (i.e. “Registration Private”) did not correspond to the Disputed Domain Name and that this name does not correspond to the name of the real registrant does not apply anymore. This however does not affect the reasoning and the finding made by the Panel based on the other arguments developed by the Complainant.
On this basis, the Panel accepts the Complainant’s prima facie showing so that it was consequently up to the Respondent to come forward with evidence of rights or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s default in this proceeding.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name;
(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
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. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s Trademark so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant and to the Trademark. The Panel notes in this respect that the Trademark’s brand recognition on a global basis has been duly established and recognized by numerous other panels. See e.g., Sanofi v. steven shao,WIPO Case No. D2018-1747.
Based on the established practice under the UDRP, the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.
Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.
In this case, by application of these factors, the Panel holds that the passive holding of the Disputed Domain Name by the Respondent does not prevent a finding of bad faith. The degree of distinctiveness and of reputation of the Trademark is indeed very high, (ii) the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use and (iii) the Respondent has concealed its identity. With respect to the last factor (i.e. (iv) the implausibility of any good faith use), a good faith use of the Disputed Domain Name could be conceivable if the Disputed Domain Name were to be used in relation to genuine noncommercial free speech. However, the Respondent who has not participated in the proceedings has not brought any single evidence of such potential good faith use.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are 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 transferred to the Complainant.
Jacques de Werra
Sole Panelist
Date: December 22, 2018
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