Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Marius Graur of Brasov, Romania. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 31, 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 Complainant on January 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 2, 2019.
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 Respondent of the Complaint, and the proceedings commenced on January 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2019. Respondent sent email communications on January 17, 2019. The Center notified the commencement of Panel Appointment Process on January 30, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on February 8, 2019. 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
According to the Complaint, Complainant is a French multinational pharmaceutical company, with presence in over 100 countries. With R&D investment of 5.47 billion Euros in 2017 and consolidated net sales of 35.05 billion Euros in 2017, 33.82 billion Euros in 2016, 34.06 billion Euros in 2015, and 31.38 billion Euros in 2014, Complainant ranks as the 4th world’s largest multinational pharmaceutical company by prescription sales.
Complainant is the owner of numerous trademark registrations for SANOFI. These include:
- European Union trademark No. 000596023 for SANOFI, filed on July 15, 1997 and registered on February 1, 1999 in classes 3 and 5; and
- International trademark No. 674936 for SANOFI, registered on June 11, 1997 in classes 3 and 5, designating, inter alia, Romania.
The Domain Name was registered on December 12, 2018 and resolves to an inactive page. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name. B. Respondent
Respondent’s two communications with the Center merely defer discussion of the issues. They cannot be construed as a Response, as they do not substantively address the issues or include the required certification of completeness, accuracy, and proper purpose (see Rules, paragraph 5(viii). They do not present evidence or arguments on any element of the Complaint although Respondent has established that he was available for discussions with Complainant and claimed that he would answer all the topics before the Response due date. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant has demonstrated rights through registration and use of the SANOFI mark.
The Panel finds that the Domain Name is confusingly similar with the SANOFI trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
The word “my” added as a prefix in the Domain Name does not avoid a finding of confusing similarity (N. M. Rothschild & Sons Limited v. Super Privacy Services LTD c/o Dynadot / RothschildFintrade Co. Ltd,WIPO Case No. D2018-2036; KPMG International Cooperative v. Whois Privacy Services, Provided by Domain Protect LLC /Dmitriy SelivanovWIPO Case No. D2017-0988; Philip Morris Products S.A. v. Yang Jiang Nan,WIPO Case No. D2018-1869; Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggi,WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic top-level domain (“gTLD”) “.world” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are generally required for technical reasons (Trodat GmbH v. Fuat Akkus, Yonkinya,WIPO Case No. D2016-0226; Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any substantive response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate any prior to the notice of the dispute, use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated, the Domain Name leads to an inactive website.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s SANOFI trademark is well-known worldwide (Sanofi v. Steven Shao, WIPO Case No. D2018-1747; Sanofi v. Dimitri Zarlov, WIPO Case No. D2018-1681, Sanofi v. Constantin Routing, Rocket Consult Ltd., WIPO Case No. D2018-1678; Sanofi v. Linpinfeng, WIPO Case No. D2018-1441).
Furthermore SANOFI is a fictitious word. Because the SANOFI mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation globally when the Domain Name was registered (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. C / Vertical Axis Inc.,WIPO Case No. D2009-0462).
Respondent could have also searched the European Union trademark registry and would have found Complainant’s prior registration in respect of SANOFI (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338).
Furthermore, the Domain Name incorporates in whole Complainant’s mark with the addition of the term “my”.
As regards bad faith use, Complainant demonstrated that the Domain Name leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;Trodat GmbH v. Fuat Akkus, Yonkinya,WIPO Case No. D2016-0226; WIPO Overview 3.0, section 3.3).
The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been repeatedly recognised, (ii) the failure of Respondent to submit a substantive response, and (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated that the corresponding website is inactive.
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy paragraph 4(a)(iii). 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.
Marina Perraki
Sole Panelist
Date: February 22, 2019
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