Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Registration Private Domains By Proxy, LLC DomainsByP, United States of America / Robert Boillin, France. 2. The Domain Name and Registrar
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 May 15, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 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 Complainant on May 17, 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 20, 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 May 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 17, 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
Complainant is Sanofi, a French multinational pharmaceutical company headquartered in Paris. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale in the prescription market and it develops over-the-counter medication as well.
Complainant owns several trademarks including the “SANOFI-AVENTIS” sign (e.g, the International trademark No. 849323 registered on February 17, 2005, duly renewed, the International trademark No. 839358 registered on October 1, 2004, duly renewed, the European Union trademark No. 4025318 registered on November 28, 2005 duly renewed).
Complainant currently operates its activities with several domain names, including registered on March 14, 2004.
Respondent is Registration Private Domains By Proxy, LLC DomainsByP / Robert Boillin.
Respondent owns the disputed domain name , which was registered on May 7, 2019. The disputed domain name redirects to an inactive website. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its SANOFIS-AVENTIS trademarks. Complainant states that it is the registered owner of a large number of trademarks consisting in or including the “SANOFIS-AVENTIS” sign in France and abroad. Complainant is also the owner of several domain names including the “SANOFIS-AVENTIS” sign redirecting to Complainant’s web portal.
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that Respondent is not related in any way to Complainant’s business. Complainant further states that Complainant has granted no license or authorization to Respondent to make any use, or apply for registration of the disputed domain name.
Complainant claims that the disputed domain name was registered and is used in bad faith. Complainant argues that its trademark “SANOFIS-AVENTIS” is well-known worldwide and that it is difficult to imagine that Respondent could have ignored its trademark “SANOFIS-AVENTIS” at the time it applied for the disputed domain name. Moreover, the disputed domain name is inactive and the domain name’s email addresses are used by the Respondent to falsely impersonate the identity of one of SANOFI’s employee, which indicates that Respondent is likely to engage in efforts to operate a phishing scheme. Complainant argues that all these circumstances support the idea that the disputed domain name has been both registered and used intentionally in bad faith without any rights or legitimate interest by Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.
Complainant has shown rights over the following trademarks:
The International trademark “SANOFI-AVENTIS” No. 839358 registered on October 1, 2004 in classes 1, 3, 5, 9, 10, 16, 38, 41, 42 and 44, duly renewed.
The International trademark “SANOFI AVENTIS” No. 849323, registered on February 17, 2005 in classes 1, 3, 5, 10, 38 and 42, duly renewed.
The European Union trademark “SANOFI-AVENTIS” No. 4025318 registered on September 14, 2004 in classes 1, 3, 5, 9, 10, 16, 38, 41, 42 and 44, duly renewed.
The European Union trademark “SANOFI AVENTIS” No. 4054193 registered on December 26, 2005 in classes 1, 3, 5, 10, 38, 41, 42 and 44, duly renewed.
The French trademark “SANOFI-AVENTIS” No. 3288019 registered on April 26, 2004 in classes 1, 3, 5, 9, 10, 16, 38, 41, 42 and 44, duly renewed.
The French trademark “SANOFI AVENTIS” No. 3309318 registered on August 20, 2004 in classes 1, 3, 5, 9, 10, 16, 38, 41 and 42, duly renewed.
Moreover, Complainant is also the owner of several domain names including the “SANOFI-AVENTIS” sign that redirect towards Complainant’s web portal including:
- , registered on March 14, 2004
- registered on March 10, 2006
- registered on December 18, 2006
- registered on April 26, 2004
- registered on April 26, 2004
- registered on April 27, 2004
- registered on April 26, 2004
- registered on April 26, 2004
- registered on April 26, 2004
- registered on June 20, 2006
- registered on March 23, 2009
- registered on April 26, 2004
In addition, the trademark “SANOFI-AVENTIS” has been considered as being well-known by several previous WIPO UDRP panels (Sanofi v. Wanzhijun, WIPO Case No. D2018-2326; Sanofi v. Anonymized, WIPO Case No. D2018-1509; Sanofi v. Cai Rui Qiao, WIPO Case No. D2017-1765).
The Panel notes that Complainant has shown relevant rights over the trademark “SANOFI-AVENTIS”.
The Panel notes that the trademark “SANOFI-AVENTIS” is entirely and exclusively reproduced in the disputed domain name. Furthermore, the generic Top-Level Domain (“gTLD”) is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0. Thus, the Panel notes that “.com” should not be taken into account when comparing the disputed domain name with the claimed trademarks as they are only a technical and necessary part of the domain name with no distinguishing feature nor legal significance (see Figaro Classifieds v. Bernard Elkeslassy, WIPO Case No. D2016-2234). The adjunction of the descriptive term “group”, describing SANOFI‑AVENTIS’ group activities, is also irrelevant when comparing the disputed domain name.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trademarks.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
Complainant states that the name “Registration Private” is not the name of the real registrant. Indeed, “Registrant Private” is provided by Domains By Proxy, LLC in order to keep the true identity of the registrant secret. Complainant contends that Respondent is not related in any way to the Complainant’s business. Complainant further asserts that it has granted no license or authorization to Respondent to make any use, or apply for registration of the disputed domain name.
The Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interest in the disputed domain name.
Moreover, the Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions. (SeePomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493: “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”). Moreover, the disputed domain name is not activating any website.
The Panel notes that the domain name being unused, Respondent is not making a legitimate noncommercial or fair use of the domain name and cannot claim a bona fide offering of goods or services.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
Complaint argues that due to the worldwide reputation of its trademark “SANOFI-AVENTIS”, it is difficult to imagine that Respondent could have ignored the trademark “SANOFI-AVENTIS” at the time it applied for the disputed domain name .
Complainant further argues that the domain name is currently inactive. Previous UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview 3.0, paragraph 3.3. A principle widely adopted by Panels has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia,WIPO Case No. D2011-0421. In addition, the domain name’s email addresses have been used to impersonate one of SANOFI’s employee, which suggest that Respondent engaged in a phishing scheme.
Previous UDRP panels have held that respondent acted with opportunistic bad faith in cases in which disputed domain name appears confusingly similar to complainant’s well-known trademarks (Crazy Skates Company Pty Ltd. v. Cha Baekjin,WIPO Case No. D2013-0020; and Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta,WIPO Case No. D2016-0096). Furthermore, the Panel notes that reproducing the well-known trademarks such as “SANOFI-AVENTIS” in a domain name in order to attract Internet users to an inactive website cannot be regarded as use in good faith.
The Panel therefore finds that the circumstances of this case strongly suggest that Respondent has both registered and used the disputed domain name in bad faith.
Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy. 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.
Nathalie Dreyfus
Sole Panelist
Date: June 26, 2019
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