The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Jamey Kirkes of Auburn, Washington, United States of America (“United States”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Porkbun LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2019, 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 April 1, 2019, 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 April 4, 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 the Respondent of the Complaint, and the proceedings commenced on April 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2019. The Response was filed with the Center on April 24, 2019.
The Center received an unsolicited supplemental filing from the Complainant on April 25, 2019.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 3, 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. Outstanding Procedural Matters
In the exercise of its discretion under paragraph 10 of the Rules, the Panel finds there to be no exceptional or other circumstances why the Complainant’s unsolicited supplemental filing should be admitted and declines to admit that filing. 5. Factual Background
The Complainant is a multinational pharmaceutical company headquartered in France.
The Complainant is the owner of trademark registrations for the mark SANOFI in numerous jurisdictions worldwide, including for example:
- European Union trademark number 010167351 for the word mark SANOFI, registered on January 7, 2012.
- United States trademark number 4178199 for the word mark SANOFI, registered on July 24, 2012.
The Respondent registered the disputed domain name on February 28, 2019.
There is no evidence that the disputed domain name has ever resolved to any active website. 6. Parties’ Contentions A. Complainant
The Complainant states that it is the world’s fourth largest pharmaceutical company by prescription sales with consolidated net sales of over EUR 35 billion in 2017. It states that it employs 100,000 people and has a presence in over 100 countries including the United States. It provides evidence of its worldwide business and profile. The Complainant states that it owns numerous domain names incorporating the name and mark SANOFI including the domain name which has operated since 1995. The Complainant submits that its name and mark SANOFI is an invented term having no other meaning which it has used in commerce for over 40 years and that, as a result of the matters set out above, its trademark has become well known worldwide as indicating the Complainant and its business.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. In particular, it contends that that the disputed domain name is identical to its SANOFI trademark other than for the generic Top-Level Domain (“gTLD”) “.dev”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its mark SANOFI, that the Respondent has not commonly been known by that name and that the Respondent is neither using the disputed domain name for the purpose of a bona fide offering of goods or services nor making legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It contends that the disputed domain name is identical to its well-known trademark SANOFI, which has no meaning other than to refer to the Complainant, and that the Respondent can establish no rights or legitimate interests in respect of the disputed domain name. It submits that, in these circumstances, it is obvious that the Respondent can only have registered and used the disputed domain name in order to take unfair advantage of the SANOFI trademark by way of “opportunistic bad faith”. The Complainant further contends that, where all the circumstances of the case are indicative of bad faith, it is immaterial that the Respondent has not made active use of the disputed domain name.
The Complainant requests the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent submits that they registered the disputed domain name for two reasons. The first such reason is that “Sanofi” is the name of their dog: they produce a photograph of a dog with the words “GOOD BOY “SANOFI”” superimposed upon it. The second reason is that “Sanofi” is a “lucky name in numerology”: the Respondent produces a chart which, among other matters, assigns a moral or spiritual description to each of the letters of the word “Sanofi”.
The Respondent states that they registered the disputed domain name for their own personal use and that of their dog. They submit that they have a good faith right to the name and are not harming the Complainant in any way.
The Respondent states that the Complainant could have registered the disputed domain name before the Respondent but failed to do so. The Respondent lists 18 other domain names apparently comprising the term “sanofi” and a gTLD and questions whether the Complainant will be taking action in respect of these other names. 7. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
The Complainant has established that it is the owner of the registered trademark SANOFI in numerous jurisdictions. The disputed domain name is identical to the Complainant’s trademark SANOFI but for the gTLD “.dev”, which is typically to be disregarded for the purpose of comparison. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case for the Respondent to answer that they have no rights or legitimate interests in respect of the disputed domain name. The Respondent answers that case by stating that they registered the disputed domain name because “Sanofi” is the name of their dog and because it is a lucky name. The Respondent provides no explanation of how the disputed domain name is intended to be used other than to say it is for their personal use.
Based on the evidence submitted by the Complainant, the Panel finds that the Complainant’s mark SANOFI comprises a coined term that has no established meaning other than to refer to the Complainant and that the trademark is widely known throughout the world as indicating the Complainant and its business. Having considered these circumstances against the Respondent’s explanation for having registered the disputed domain name, the Panel finds the Respondent’s account to be highly improbable and concludes, on the balance of probabilities, that the Respondent is more likely to have registered the disputed domain name in order to target the Complainant’s widely-known trademark. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Based on the same factual conclusions as set out above, the Panel infers that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark SANOFI and with the intention of taking unfair advantage of the Complainant’s commercial goodwill attaching to that trademark. While there is no evidence that the Respondent has made active use of the disputed domain name, in circumstances where the disputed domain name comprises an unadorned use of the Complainant’s widely-known trademark, it is difficult to conceive of any use that could legitimately be made of the disputed domain name without the authorization of the Complainant. Furthermore, as the Complainant has submitted, the Respondent’s passive holding of the disputed domain name is not a bar to a finding of bad faith where the other circumstances of the case point to that conclusion: see e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 8. 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.
Steven A. Maier
Sole Panelist
Date: May 17, 2019
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