The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Marius Graur, Romania. 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 April 29, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 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 May 6, 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 May 7, 2019.
The Center verified that the Complaint together with the amendment to the Complaint/amended 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 May 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2019.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on June 6, 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
The Complainant in this administrative proceeding is Sanofi, a French multinational pharmaceutical company with headquartered in Paris, France. The Complainant’s main business is the research and development, manufacturing, and marketing of pharmaceutical products for sale, principally in the prescription market, but the Complainant also develops over-the-counter medication.
The Complainant is a member of the European Federation of Pharmaceutical Industries and Associations (EFPIA). Historically, the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo and changed its name to Sanofi in May 2011.
The Complainant offers a wide range of patented prescription drugs and has leading positions in 7 major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines.
The Complainant provided evidence of the ownership of the SANOFI trademark registrations that include but are not limited to the following:
− French trademark SANOFI (device) number 3831592, registered on May 16, 2011, in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42, and 44, notably concerning pharmaceutical products;
− French trademark SANOFI number 96655339, registered on December 11, 1996, in classes 1, 3, 5, 9, 10, 35, 40, and 42, notably concerning pharmaceutical products;
− French trademark SANOFI (device) number 92412574, registered on March 26, 1992, in class 5 concerning pharmaceutical products;
− French trademark SANOFI number 1482708, registered on August 11, 1988, in classes 1, 3, 4, 5, 10, 16, 25, 28, and 31, notably concerning pharmaceutical products;
− European Union trademark SANOFI number 010167351, filed on August 2, 2011, and registered on January 7, 2012, in classes 3 and 5, notably concerning pharmaceutical products;
− European Union trademark SANOFI number 004182325, filed on December 8, 2004, and registered on February 9, 2006, in classes 1, 9, 10, 16, 38, 41, 42, and 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 3 and 5, notably concerning pharmaceutical products;
− International trademark SANOFI (+device) number 1091805, registered on August 18, 2011, in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42, and 44, notably concerning pharmaceutical products, and designating among others Georgia, the Russian Federation, and Ukraine;
− International trademark SANOFI number 1092811, registered on August 11, 2011, in classes 1, 9, 10, 16, 38, 41, 42, and 44, notably concerning products in pharmaceutical and medical spheres, and designating among others Australia, Cuba, Georgia, Japan, the Russian Federation, the Republic of Korea, and Ukraine;
− International trademark SANOFI number 1094854, registered on August 11, 2011, in classes 3 and 5, notably concerning pharmaceutical products, and designating among others Australia, Cuba, Georgia, Japan, the Russian Federation, the Republic of Korea, and Ukraine;
− International trademark SANOFI number 674936, registered on June 11, 1997, in classes 3 and 5, notably concerning pharmaceutical products and designating among others Cuba, Romania, the Russian Federation, Switzerland, and Ukraine;
− International trademark SANOFI (device) number 591490, registered on September 25, 1992, in class 5 concerning pharmaceutical products, and designating among others China, Cuba, Romania, the Russian Federation, and Switzerland;
− Mexican trademark SANOFI number 241374, filed on August 28, 1995, and registered on April 18, 1997, in class 5 concerning pharmaceutical products.
The Complainant is the owner of numerous domain names consisting of the trademark SANOFI 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 5, 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.
All of the above-mentioned trademarks and domain names containing the trademark SANOFI were registered prior to the registration of the disputed domain name .
The disputed domain name was registered on April 6, 2019. The disputed domain name redirects to an inactive webpage. 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain name reproduces the SANOFI trademarks which, on their own, do not have any particular meaning and are therefore highly distinctive.
Also, SANOFI is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trademark and trade name SANOFI. It has used its trademark for more than ten years and has invested a substantial amount of financial resources over the years to advertise and promote its SANOFI trademarks in countries all over the world. The Complainant argues that the disputed domain name reproduces the Complainant’s trademarks as the dominant part and is confusingly similar to its trademarks, regardless of the addition of the geographical term “world” – which remains highly descriptive considering the Complainant’s worldwide activities – and the generic Top-Level Domain (“gTLD”) “.world”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and submits that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant provided evidence of their numerous above-mentioned trademark registrations of the term SANOFI around the world.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Due to the fact that the disputed domain name incorporates the Complainant’s SANOFI trademark in its entirety, the addition of the dictionary term “world” does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Previous UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
It has been generally accepted by UDRP panels that the gTLD, such as “.world”, is irrelevant when considering whether a domain name is identical or confusingly similar to a trademark, as it is a functional element.
For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy,
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.”
Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence, demonstrating rights or legitimate interests in the disputed domain name. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
The Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant argued that it has not authorized or given any license to the Respondent in order to register, use or include the Complainant’s trademarks in a domain name. Furthermore, the Complainant established that the Respondent is not commonly known by the disputed domain name or the trademark SANOFI.
The Complainant stated that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks.
According to the Complainant, the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name.
The Panel finds that based on the record, the Respondent is not using the disputed domain name for a bona fide offering of goods or services nor has it provided any evidence showing demonstrable preparations to use the disputed domain name. The Respondent is using the disputed domain name in association with an inactive page, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See section 2.2 of the WIPO Overview 3.0.
For all the above-mentioned reasons, the Panel finds that the Complainant has fulfilled the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Complainant trademark SANOFI is well known throughout the world. Thus, the Respondent knew or should have known of the Complainant’s SANOFI mark at the time of registration of the disputed domain name on April 6, 2019. See section 3.2.2 of the WIPO Overview 3.0.
Acknowledging the popularity of the SANOFI trademark in the world, the Panel finds that the Respondent’s knowledge of the Complainant’s rights at the time of registration of the disputed domain name that was chosen by the Respondent was in order to capitalize on the Complainant’s goodwill and reputation. Moreover, the Panel finds that the composition of the disputed domain name is such, that it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
The disputed domain name was not only registered in bad faith but is also being used by the Respondent in bad faith.
At this moment the disputed domain name resolves to an inactive website.
It has been established in various UDRP decisions that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which it was found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that it had 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 domain name “being used in bad faith”. See also, section 3.3 of the WIPO Overview 3.0. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, 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.
In the present case, the Panel finds that the disputed domain name is being used in bad faith due to (i) the reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response, and (iii) the fact that the disputed domain name resolves to an inactive website.
For all the foregoing reasons the Panel finds that the disputed domain name has been both registered and used in bad faith. 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.
Ada L. Redondo Aguilera
Sole Panelist
Date: June 20, 2019
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