The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Admnistrator, See PrivacyGuardian.org, United States of America (“United States”) / Da Wanjia, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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 October 15, 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 October 16, 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 October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2019. The Center appointed Jonathan Agmon as the sole panelist in this matter on November 19, 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 that is headquartered in Paris, France. The Complainant conducts research and development, manufacturing, and marketing of pharmaceutical products. The Complainant has a business presence in more than 100 countries and employs more than 100,000 people worldwide. The Complainant is the owner of numerous trademarks worldwide for the SANOFI marks, including but not limited to the following: - SANOFI (Registration No. 1482708) registered in France on August 11, 1988; - SANOFI (Registration No. 010167351) registered in the European Union on January 7, 2012; - SANOFI (Registration No. 004182325) registered in the European Union on February 9, 2006; - SANOFI (International Registration No. 1092811) registered on August 11, 2011 and designating, inter alia, Australia and Japan; - SANOFI (International Registration No. 674936) registered on June 11, 1997 and designating, inter alia, Switzerland; and - SANOFI (Registration No. 85396658) registered in the United States on July 24, 2012. The Complainant is also the owner of various domain names, including but not limited to the following: - - - - The disputed domain name was registered on June 27, 2019 and presently resolves to a website in Chinese offering gambling services. 5. Parties’ Contentions A. Complainant The Complainant’s contentions include the following: The Complainant argues that the disputed domain name is confusing similar to the Complainant’s registered trademark SANOFI as the disputed domain name wholly incorporates the SANOFI trademark and only differs from the SANOFI trademark by the addition of the acronym “kol”. The Complainant asserts that it has rights in the trademarks through numerous trademark registrations and that the Respondent’s use of its mark in the disputed domain name would mislead Internet users to believe that the disputed domain name is related to the Complainant. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the name of the Respondent does not bear any resemblance to the word “sanofi”. In addition, the Complainant has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain name. The Complainant further argues that the disputed domain name was registered and is being used in bad faith as the Respondent is using the disputed domain name with the intention to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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. The Complainant has provided evidence of its numerous trademark registrations in numerous jurisdictions. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name Firstly, it is well established where a complainant’s trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Novartis AG v. Radu LucaWIPO Case No. D2016-2582). The Complainant has submitted evidence that the letters “kol” may be attributed to the acronym of the term “key opinion leader” used in the marketing industry. Although it is not clear that the letters “kol” in the disputed domain name refer to “key opinion leader”, the actual meaning of the letters “kol” is irrelevant as the addition of these letters would not prevent a finding of confusing similarity. Next, it is established the addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a gTLD is technically required to operate a domain name (see Accor v. Noldc Inc.WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the gTLD is without significance and does not prevent a finding of confusing similarity. In the particular circumstances of the present case, the Panel is of the view that the disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (See WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns numerous trademark registrations in many jurisdictions long before the disputed domain name was registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks. (See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). In addition, the evidence submitted by the Complainant shows that all the details of the registrant on the WhoIs database are blocked by a privacy shield. Although the WhoIs record is protected by a privacy shield, the Registrar information shows that the disputed domain name is registered under the Respondent “da wanjia” which bears no resemblance to the disputed domain name in any way (see Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3). Furthermore, the disputed domain name resolves to a webpage offering gambling services. Past panels have held that this is neither a bona fide offering of goods and services for the purposes of the Policy nor is it a legitimate noncommercial or fair use (Sanofi and Genzyme Corporation v. zhanghui,WIPO Case No. D2018-2926). In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case. Accordingly, 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 The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant’s trademark registrations. According to the evidence filed by the Complainant, the Complainant has owned registrations for its SANOFI trademarks since 1988 and these registrations were active at the time the Respondent registered the disputed domain name in 2019. The Complainant has also shown evidence that the Complainant enjoys considerable reputation and goodwill worldwide, and that several other panels have considered that the Complainant’s SANOFI trademark is “well-known”. Therefore, the Panel draws the inference that the Respondent knew or should have known about the Complainant’s SANOFI trademark. Further, it is the Complainant’s evidence that the SANOFI mark has no inherent meaning other than in relation to the Complainant and its business. The Panel therefore finds it inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademarks and intention of benefiting from confusion with such trademarks (See Leite’s Culinaria, Inc. v. Gary Cieara,WIPO Case No. D2014-0041; WIPO Overview 3.0, section 3.2.2). Furthermore, the disputed domain name is confusingly similar to the Complainant’s SANOFI trademark which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. Taking the above into consideration, the Panel finds that under the particular circumstances of this case, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks under paragraph 4(b)(iv) of the Policy. In addition, the Respondent did not submit a Response in this proceeding and used a privacy shield to hide their identity, as shown in the WhoIs database page submitted by the Complainant. These are all further indications of the Respondent’s bad faith, which were considered by the Panel. Based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s trademark, the confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent’s use of the disputed domain name and the failure of the Respondent to submit a Response, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith. Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 disputed domain name Jonathan Agmon
Sole Panelist
Date: December 3, 2019
Full & Egal Universal Law Academy