The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Privacy Protect, LLC, United States of America / BLACK ROSES, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Web4Africa Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2019. On May 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 June 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 June 11, 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 June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2019.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on July 22, 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, Sanofi, is a multinational pharmaceutical company, headquartered in Paris, France. The Complainant claims that it has been ranked as the 4th world’s largest multinational pharmaceutical company by prescription sales with consolidated net sales of over EUR 35 billion in 2017. The Complainant states that it was historically formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo and its name was consequently changed to Sanofi in May 2011.
The Complainant is engaged in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market but also develops over-the-counter medication.
The Complainant is the proprietor of the trademark SANOFI in many jurisdictions around the world, including the European Union, France, Australia, Japan, the Republic of Korea, and Russia. The Complainant owns trademark registrations for the word SANOFI in the United States of America (Registration No. 4178199 on July 24, 2012) as also international registrations under Nos. 1091805, 1092811, 1094854, 674936, 591490 for the same. The Complainant’s registrations for its trademark SANOFI date back to the year 1988 (French trademark registration no. 1482708, registered on August 11, 1988). Documents containing the registration particulars of the trademark SANOFI worldwide have been attached as Annex 8 to the Complaint.
The Complainant is also the registrant of numerous domain names, incorporating the trademark SANOFI, including the domain name which was registered in its favour since 1995. The WhoIs particulars of the said domains owned by the Complainant have been attached as Annex 9 to the Complaint.
The Respondent has registered the disputed domain name on April 22, 2019, according to the concerned Registrar’s WhoIs records and as confirmed by the Registrar. As per the records placed by the Complainant, the Respondent details had initially been privacy protected using the service Privacy Protect, LLC. In compliance of paragraph 4(b) of the Rules, the Registrar vide its email dated June 5, 2019, disclosed the detailed particulars of the Respondent in the present proceedings, following which the Complaint was amended by the Complainant on June 11, 2019. Extracts of the WhoIs records for the disputed domain name have been attached as Annex 1 to the Complaint.
The disputed domain name does not resolve to a fully functional and active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name reproduces its trademark SANOFI which is highly distinctive as it has no other meaning than as the Complainant’s trademark. The Complainant states that it has used the trademark and trade name SANOFI for over 40 years and has expended substantial financial resources over the years to advertise and promote its company as well as its registered trademark SANOFI in countries all over the world,
The Complainant asserts that the disputed domain name is confusingly similar to its trademark SANOFI as it wholly incorporates the said trademark in entirety as the dominant part of the disputed domain name, combined with a descriptive term “pharmaceutical” and the generic Top-Level Domain (gTLD) “.com”. As per the Complainant, where a domain name wholly incorporates a Complainant’s distinctive trademarks in its entirety, it is confusingly similar to that trademark despite the addition of a word or, in this case, of a descriptive term.
The Complainant states that the addition of the descriptive term “pharmaceutical”, a common English word does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark SANOFI but rather enhances the possibility of the same by suggesting to Internet users a connection between the disputed domain name and the Complainant’s pharmaceutical business. Likewise, the Complainant argues that it has been well established by previous UDRP panels that the addition of the generic Top-Level Designation “.com” as part of the domain name ought to be disregarded as it does not serve to distinguish domain names.
The Complainant states that the Respondent has selected the disputed domain name with the specific intent of free-riding on the fame of the Complainant’s trademark SANOFI. The Complainant contends that likelihood of confusion between the disputed domain name and the Complainant’s trademark SANOFI emanates from the reputation enjoyed by the Complainant’s trade name / trademarks / domain names comprising of the word SANOFI. The Complainant cites prior UDRP decisions to argue that its trademark SANOFI is “well-known”.
The Complainant argues that the Respondent has neither prior rights nor legitimate interests to justify its use of its well-known trademark SANOFI. The Complainant argues that Privacy Protect, LLC, initially indicated to be the registrant of the disputed domain name by the WhoIs records is not the real registrant of the said domain name but rather is a service provided to clients which enables them to register domain names by keeping secret the true identity of the registrant.
The Complainant points out that it has never licensed or otherwise authorized the Respondent to use its trademark SANOFI or to register any domain name consisting of the said trademark. The Complainant contends that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name nor is it using the disputed domain name in connection with a bona fide offering of goods or services so as to confer it with a right or legitimate interest in the disputed domain name. The Complainant asserts that the disputed domain name resolves into an inactive parking website, which constitutes passive holding of the said domain name. Extracts from the website of the Respondent hosted on the disputed domain name have been attached as Annex 11 to the Complaint.
The Complainant contends that the disputed domain name has been registered and used in bad faith. The Complainant states that given the famous and distinctive nature of the trademark SANOFI, the Respondent is likely to have had, at least, constructive notice, if not actual notice, as to the existence of the Complainant’s trademarks at the time he registered the disputed domain name and that this suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make illegitimate use of it.
The Complainant has relied on various UDRP decisions which have recognized that cases in which disputed domain names are confusingly similar to a Complainant’s well-known trademark is a manifestation of opportunistic bad faith registration. The Complainant asserts that the disputed domain name has been registered by the Respondent for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion, or at least an impression of association between its trademark SANOFI and the disputed domain name. The well-known status of the Complainant and its trademark SANOFI is already well established and has been recognized by market surveys, and UDRP decisions.
The Complainant argues that given the well-known nature of the Complainant’s trademark SANOFI, the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name since it could lead Internet users searching for official information or pharmaceutical products of the Complainant to the website hosted on the disputed domain name. The said knowledge characterizes Respondent’s bad faith in registering the disputed domain name. The Complainant asserts that disputed domain name directs Internet users into an inactive website, which constitutes passive holding of the disputed domain name. The Complainant in support of the said contention have relied upon previous UDRP panels which have categorically ruled that even passive holding of a domain name incorporating a well-known trademark under appropriate circumstances constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) clearly stipulates that the Respondent’s default (failure to submit a formal response) would not by itself mean that the Complainant is deemed to have prevailed. The burden still remains with the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, the Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant. (See WIPO Overview 3.0, section 1.2.1).
The Complainant has provided detailed evidence of its rights in the trademark SANOFI on the basis of its multiple trademark registrations for the same in various jurisdictions around the world, including United States of America, which have been registered since at least as early as 1988, well before the Respondent registered the disputed domain name on April 22, 2019. Likewise, the Panel notes that the Complainant is also the registrant of several domain names, comprising of its registered trademark SANOFI, the earliest of which goes back to 1995.
The Panel observes that the disputed domain name completely incorporates and subsumes the registered trademark SANOFI of the Complainant. Previous UDRP panels have ruled that fully incorporating an identical mark in a disputed domain name as the Complainant’s trademark is sufficient to establish that the disputed domain name is identical or confusingly similar to the trademark of the Complainant in which it has rights. See,RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059.
According to the Panel, the addition of the descriptive or generic word “pharmaceutical” to the Complainant’s trademark SANOFI does not avoid confusing similarity between the Complainant’s trademark and the disputed domain name (See eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307). The Panel rules that on the contrary it suggests to Internet users that the disputed domain name is related to the Complainant’s pharmaceutical activities, as the Complainant’s trademark is the dominant component of the disputed domain name (See, CNH America LLC v. UnderHost Networks Ltd,WIPO Case No. D2013-1252).
The Complainant has relied on previous UDRP decisions namely Regeneron Pharmaceuticals, Inc. v. Cameron David Jackson,WIPO Case No. D2016-1927; Sanofi v. Sarthak Kapoor, WIPO Case No. D2019-0370,and Rockefeller & Co., Inc. v. All Value Network a/k/a AVN,WIPO Case No. D2011-1957,in support of its contentions and the same are found by the Panel to be squarely applicable to the facts and circumstances of the instant proceedings.
As per WIPO Overview 3.0, section 1.11, generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) are a standard registration requirement and have to be disregarded under the first element in the confusing similarity test.
In view of the above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark SANOFI and that the requirement of paragraph 4(a)(i) of the Policy stands satisfied. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that the Complainant has already submitted evidence that it holds exclusive rights in the trademark SANOFI by virtue of both statutory registrations and common law use, which rights have accrued in the Complainant’s favour long prior to the Respondent’s registration of the disputed domain name on April 22, 2019.
The Panel also observes that the Complainant owns domain registrations comprising the trademark SANOFI which also pre-date the date of registration of the disputed domain name by the Respondent, more specifically the Complainant’s domain name which hosts a fully functional website which is targeting Internet users in United States of America from where the Respondent originates. See,Annex 9.4 of the Complaint.
The Panel is therefore satisfied that the Complainant has made out a prima facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name, the burden of production on this element therefore shifts onto the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the said domain name. The Panel notes that the Respondent has failed to produce any countervailing evidence of any rights or legitimate interests in the disputed domain name and opines that the Complainant can be deemed to have satisfied the second element under paragraph 4(a)(ii) of the Policy. See, section 2.1 of the WIPO Overview 3.0.
As the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent, See, Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007.
Based on the evidence submitted by the Complainant, the Panel finds that the Complainant’s trademark SANOFI has no established meaning and is therefore distinctive only of the Complainant and its business. The Panel notes that the Complainant has never licensed or otherwise authorized the Respondent to use its trademark SANOFI or incorporate the same in any domain name.
The Panel observes that the Respondent deployed a service called Privacy Protect, LLC, which enabled it to register the disputed domain name by keeping its true identity secret. It may be noted that the practice of using a proxy service to achieve registration of domain names creates a potential for abuse by cyber squatters. The Panel finds that the Respondent has registered the disputed domain name to confuse Internet users by taking advantage of the goodwill and reputation associated with the Complainant’s trademark SANOFI.
The Panel concurs with the finding of previous UDRP decisions that the use of a proxy service is indicative of the fact that the Respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. Considering the circumstances of this case, the Panel concludes that the natural inference is a negative one - that the Respondent has ‘something to hide’. See, The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”,WIPO Case No. D2008-0156.
The Panel notes that the disputed domain name resolves into an inactive web page and that the disputed domain name has been unexploited since its registration. Further the Respondent is not commonly known either by the disputed domain name or by the name SANOFI and has no trademark registrations for the same. The Respondent therefore has failed to assert any such right or legitimate interests in the disputed domain name. See ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
Lastly the Panel observes that the Respondent has not made a bona fide offering of goods or services or a noncommercial use of the disputed domain name and has not demonstrated any effort to use the disputed domain name for legitimate purpose so as to confer it with a right or legitimate interest in the same in accordance with paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds the Complainants has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to the Policy, bad faith is understood to occur where a Respondent takes unfair advantage of or otherwise abuses a Complainant’s mark (see section 3.1 of the WIPO Overview 3.0). The Panel notes that section 3.1.4 of the WIPO Overview 3.0 states that the mere registration of a domain name that is identical to a registered and widely known trademark, by an unaffiliated entity can itself create a presumption of bad faith.
Previous UDRP panels have consistently found that it ought to be presumed that the respondent had constructive notice of the complainants’ trademark if it is shown by the complainant to be well known or in wide use on the Internet or otherwise. Such knowledge of the Respondent is an indicator of bad faith on its part in having registered the disputed domain name. See, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
In the backdrop of the Complainant’s extensive use, widespread business and numerous trademark registrations worldwide, coupled with the fact that the Complainant is also carrying out operations in United States of America where the Respondent is apparently domiciled, it is highly unlikely that the Respondent did not have knowledge of the Complainant’s rights in the trademark SANOFI.
The Panel takes note of previous UDRP decisions which have held that the trademark SANOFI of the Complainant is widely known in many jurisdictions, The Panel concludes that the Respondent must have been aware of the goodwill and reputation associated with the Complainant’s trademark and had registered the disputed domain name comprising a substantial reproduction of the Complainant’s trademark in bad faith. According to the Panel, the Respondent has acted with opportunistic bad faith in registering the disputed domain name.
The Panel has perused Annex 11 of the Complaint and observes that the disputed domain resolves into an inactive website. The Respondent is passively holding the disputed domain name and is not making any use of the same.
Previous UDRP panels have ruled that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028.
WIPO Overview 3.0, section 3.3 stipulates that:
“[w]hile 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.”
Accordingly the Panel holds that the Complainant has satisfied the requirements of 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.
Shwetasree Majumder
Sole Panelist
Date: August 5, 2019
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