The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is WhoisGuard, Inc., Panama / Charles Kafumbi, tandidzo, Zambia. 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 August 2, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 August 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 August 7, 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 August 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.
The Center appointed Gérald Page as the sole panelist in this matter on September 4, 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
SANOFI is a French multinational pharmaceutical company headquartered in Paris (France), ranking 4th world’s largest multinational pharmaceutical company by prescription sales.
SANOFI engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication.
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.
SANOFI is a multinational company settled in more than 100 countries on all 5 continents employing 100,000 people.
SANOFI is a major player on the worldwide pharmaceutical market.
The Complainant is the rightful owner of the following trademarks, among others :
− French trademark SANOFI number 3831592, registered on May 16, 2011, in classes 01; 03; 05; 09; 10;16; 3; 38; 40; 41; 42; 44 notably concerning pharmaceutical products;
− French trademark SANOFI number 96655339, registered on December 11, 1996, in classes 01; 03; 05; 09; 10; 35; 40; 42 notably concerning pharmaceutical products;
− French trademark SANOFI number 92412574, registered on March 26, 1992, in class 05 concerning pharmaceutical products;
−French trademark SANOFI number 1482708, registered on August 11, 1988, in classes 01; 03; 04; 05; 10; 16; 25; 28; 31 notably concerning pharmaceutical products;
− European Union trademark SANOFI number 010167351, filed on August 2, 2011, and registered on January 7, 2012 in classes 03; 05 notably concerning pharmaceutical products;
− European Union trademark SANOFI number 004182325, filed on December 8, 2004, and registered on February 9, 2006 in classes 01; 09; 10; 16; 38; 41; 42; 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 03; 05 notably concerning pharmaceutical products;
− International trademark SANOFI number 1091805, registered on August 18, 2011, in classes 01; 03; 05; 09; 10; 16; 35; 38; 40; 41; 42; 44 notably concerning pharmaceutical products, and designating among others Georgia, Russian Federation, Ukraine;
− International trademark SANOFI number 1092811, registered on August 11, 2011, in classes 01; 09; 10; 16; 38; 41; 42; 44 notably concerning products in pharmaceutical and medical spheres, and designating among others Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation, Ukraine;
- International trademark SANOFI number 1094854, registered on August 11, 2011, in classes 03; 05 notably concerning pharmaceutical products, and designating among others Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation, Ukraine;
− International trademark SANOFI number 674936, registered on June 11, 1997, in classes 03; 05 notably concerning pharmaceutical products and designating among others Switzerland, Cuba, Romania, Russian Federation, Ukraine;
− International trademark SANOFI number 591490, registered on September 25, 1992, in class 05 concerning pharmaceutical products, and designating among others Switzerland, China, Cuba, Romania, Russian Federation;
- American trademark SANOFI number 85396658, filed on August 12, 2011, and registered on July 24, 2012, in class 05 notably concerning pharmaceutical products.
The Complainant is also the owner of the following domain names among others:
− 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 05, 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;
− registered on April 28, 2004.
The Respondent registered the disputed domain name through the Registrar on July 16, 2019 (hereinafter: the “Domain Name”).
The Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends, inter alia, that the three requisites of paragraph 4(a) of the Policy are met :
i. The Complainant claims that the reproduction of the Complainant’s trademarks as the dominant part of the disputed domain name is confusingly similar to prior above cited trademarks, regardless of the generic Top-Level Domain (“gTLD”) extension .
The Complainant explains that the Domain Name comprises: (a) an exact reproduction of the its trademark and (b) followed by gTLD .
The Complainant states that it is well established that the gTLD used as part of a domain name should be disregarded as it does not serve to distinguish domain names. The relevant comparison to be made is with the second level portion of the disputed domain names.
Finally, the Complainant contends that the likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill.
ii. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name: the Respondent is not related in any way to the Complainant’s business, he is not one of its agents and does not carry out any activity for, or has any business with it. No license or authorization has been granted to the Respondent to make any use, nor apply for registration of the Domain Name.
iii. The Complainant adds that the Respondent registered and used the Domain Name in bad faith. The circumstances surrounding the registration and its utilization by the Respondent show that he acted in bad faith.
The Complainant believes that because of the notoriety of SANOFI trademark, the Respondent must have been aware of the Complainant’s rights in SANOFI trademarks.
Then, the name “Charles Kafumbi” does not bear any resemblance with the word “SANOFI” – which has no particular meaning and is highly distinctive.
Furthermore, the Complainant found that “Charles Kafumbi” has indicated on the WhoIs Database, as registrant of the disputed domain name, a name which is not the real registrant.
The Complainant explains that “Charles Kafumbi” is the result of a service provided by the Registrar to a registrant which offers clients to register domain names in its name and on behalf of third party in order to keep the true identity of the registrant secret.
Before obtaining the deactivation of the Domain Name web page, the Complainant stated that the Respondent only registered the Domain Name for the purpose of unfairly attracting the Complainant’s consumers.
The Complainant alleges that the Respondent only used the Domain Name to obtain commercial gain by misleading by diverting consumers.
Since the deactivation of the Domain Name home page, the Domain Name is no longer used. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
Therefore, the Respondent has challenged any of the Complainant’s allegations of fact. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel, as to the principles the Panel has to use in deciding the dispute, “A Panel shall decide a complaint on the basis of the statement and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or no legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that the Complainant has been using the SANOFI trademark for decades worldwide and in particular in the area and that it has rights on several SANOFI trademarks. The Panel finds that this trademark, owned by the Complainant, is widely known.
The SANOFI trademark is included in its entirety in the Domain Name.
The extension “.llc” is considered as a technical element and has consequently no distinguishing effect.
Consequently, there is no doubt that the Internet users will associate the Domain Name with the Complainant’s trademark.
In view of the above, the Panel concludes that is confusingly similar to the Complainant’s trademarks and that the Complainant satisfies the criteria defined in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of production, several decisions of UDRP panels have held that “although Paragraph 4(a) of the Policy requires that the Complainant prove[s] the presence of this element (along with the other two), once a Complainant makes a prima facie showing [of his rights or legitimate interests], the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name” (see Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; see also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; Ets Leobert, SARL v. Jeonggon Seo,WIPO Case No. D2009-0004).
The Complainant underlines without being contradicted, that the Respondent is not related in any way to its business. There is no evidence of any license or authorization granted to the Respondent to use the Domain Name. The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The Respondent, through his silence, has not shown any rights or legitimate interests in respect to the Domain Name. He has not shown either that he uses or intends to use the Domain Name for a legitimate business purpose.
In similar circumstances, UDRP panels have regularly decided that the Respondent has neither rights nor legitimate interests in the Domain Name (see Credit Industriel et Commercial S.A. v. Jeongyong Cho,WIPO Case No. D2013-1263).
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, bad faith should be demonstrated both for registration and use of the Domain Name. Paragraph 4(b) of the Policy mentions “in particular but without limitation” four methods for showing bad faith registration and use of a disputed domain name.
As for the registration of the Domain Name, considering the reputation of the trademark SANOFI in the world, the Panel considers that the Respondent could not have ignored this trademark when he registered the confusingly similar Domain Name in 2019.
In the present case, the Complainant has provided evidence that the Domain Name was resolving to a copycat website which was pretending to be the Complainant’s website, using the Complainant’s logo. The Complainant has alleged, without being contradicted that the sole purpose of the Respondent’s home page was to attract traffic, and that therefore this website was deactivated.
At the time the Complaint was submitted the website at the Domain Name was inactive.
Several UDRP panels have ruled on this issue, and it has been widely accepted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the Domain Name, but instead whether, in view of all the circumstances of the case, it can be said that the Respondent is acting in bad faith” (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; see also Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393).
Therefore, the Panel will examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
The Respondent was not making a legitimate or fair use of the Domain Name nor is he using the litigious Domain Name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. Nothing shows, and the Respondent makes no allegations to this effect, that the Domain Name is used legitimately. In particular, the fact that the Domain Name was registered only for the purpose of unfairly attracting Internet users was not contradicted. The Panel therefore accepts the Complainant’s claims.
The Panel notes the risk for the Complainant in his business to have the Domain Name under the Respondent’s control, which could be detrimental to its clients or its reputation.
The Respondent has remained silent during the proceedings, and did not respond to the Complaint. He did not object to the Complainant’s credible submission concerning bad faith. In particular, he gave no other reason or purpose for its use of the Domain Name.
In view of these circumstances, the Panel is therefore convinced that the Respondent has registered and is using the Domain Name in bad faith. Accordingly, it finds that the Complainant has also satisfied the requirement under 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 Domain Name be transferred to the Complainant.
Gérald Page
Sole Panelist
Date: September 17, 2019
Full & Egal Universal Law Academy