Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Jeanbaptiste Chatillon, Sanofi LLC of Tuscaloosa, Alabama, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R (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 24, 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 December 27, 2018 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 December 28, 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 Respondent of the Complaint, and the proceedings commenced on January 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on February 11, 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 EUR 5.47 billion in 2017 and consolidated net sales of EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014 it 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:
- United States registration No. 85396658 for SANOFI, filed on August 12, 2011, and registered on July 24, 2012 in classes 3, 5, 9, 10, 16, 35, 41, 42 and 44; and
- European Union Trade Mark registration No. 000596023 for SANOFI, filed on July 15, 1997, and registered on February 1, 1999, in International classes 3 and 5.
The Domain Name was registered on December 9, 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 a transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 letters “corp”, short version of the word “corporation”, added in the Domain Name, do not avoid a finding of confusing similarity (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 addition of a hyphen “-” between the words in the “sanofi-corp” portion of the Domain Name is also immaterial for the purpose of comparison (Société des Produits Nestlé S.A. v. Sonia de Ferrero,WIPO Case No. D2016-1300).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (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 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. 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. Complainant’s SANOFI trademark is well known worldwide. This has been repeatedly recognized (Sanofi v. Steven Shao, WIPO Case No. D2018-1747; Sanofi v. Dimitri Zarlov, WIPO Case No. D2018-1681; Sanofi v. Constantin Routing, 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 Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this 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 searched the United States 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 a hyphen and the non-distinctive term “corp”, short version of “corporation”, resembling Complainant’s legal nature as a corporation.
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 (Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta, WIPO Case No. D2016-0096; Trodat GmbH v. Fuat Akkus, Yonkinya,WIPO Case No. D2016-0226; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; 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 response; (iii) the demonstrated initial concealment of the Domain Name holder’s identity through use of a privacy shield and the current appearance of Respondent as holder of the Domain Name under “Sanofi LLC” as registrant organisation, without any authorization from Complainant; and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated 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 Complainant.
Marina Perraki
Sole Panelist
Date: February 25, 2019
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