Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Whois Privacy Protection Foundation, Netherlands / Richard Agu, Nduka, Nigeria. 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 15, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 October 16, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 18, 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2019. The Center appointed Phillip V. Marano as the sole panelist in this matter on November 21, 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 the fourth largest pharmaceutical company in the world by prescription sales with offices in more than 100 countries spread across all five continents employing over 100,000 people worldwide. Complainant owns valid and subsisting registrations for the SANOFI trademark, including in standard characters, stylized, and with various designs, in numerous countries and geographic regions, with the earliest being the French trademark SANOFI, registered on August 11, 1988, with trademark registration number 1482708. Respondent registered the disputed domain name on September 16, 2019. At the time of this decision, the disputed domain name resolved to a parking page that reads, “The domain is marked as inactive. For more information, please contact your hosting provider”. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the SANOFI trademark and has adduced as evidence numerous trademarks registrations in France and the European Union, as well as international registrations designating among other countries, Australia, China, Cuba, Georgia, Japan, Romania, the Russian Federation, the Republic of Korea, Switzerland, and Ukraine. The disputed domain name is confusingly similar to Complainant’s SANOFI trademark, according to Complainant, because the two are identical disregarding the “.icu” Top-Level Domain (“TLD”). Adding to the confusing similarity, Complainant further argues that the SANOFI trademark has been substantially advertised and promoted throughout the world, considered as “well known” by in numerous prior determinations under the Policy, and does not have any particular meaning, making it highly distinctive. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any authorization by Complainant to use the SANOFI trademark; the lack of any evidence that Respondent is known by the SANOFI trademark; and the lack of any evidence that the disputed domain name is being used in any bona fide offering of goods or services. To the contrary, Complainant asserts that the disputed domain name has only ever been used to direct to an inactive parking page, as well as to send phishing emails impersonating Complainant. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including that: Respondent’s registration and use of the disputed domain name, which is identical to the famous and distinctive SANOFI trademark, suggests that Respondent acted with prior knowledge of the Complainant and opportunistic bad faith; Respondent has passively held the disputed domain name, which is identical to Complainant’s famous SANOFI trademark; and Respondent used the disputed domain name to send false email correspondence impersonating Complainant’s employees. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. The disputed domain name is identical or confusingly similar to a trademark 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. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. See WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the SANOFI trademark has been registered in numerous jurisdictions around the world with the first registration dating back to August 11, 1988, nearly 31 years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the SANOFI trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s SANOFI trademark. In this Complaint, the disputed domain name is identical to Complainant’s SANOFI trademark because, disregarding the “.icu” TLD, that trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 . (“This test typically 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 domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). TLDs, such as “.icu” in the disputed domain name, are generally viewed a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . In view of Complainant’s widespread registration for the SANOFI trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this case, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. See WIPO Overview 3.0 , section 2.1 . To that end, it is evident that Respondent, identified by registration data for the disputed domain name as Richard Agu, is not commonly known by the disputed domain name or Complainant’s SANOFI trademark. Moreover, Panels have categorically held that use of a domain name for illegal activity – including phishing, impersonation, and other types of fraud – can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable. See WIPO Overview 3.0 , section 2.13 . See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives.”) In addition, Complainant has adduced evidence that the disputed domain name and associated email accounts were disabled by the Registrar upon an abuse report submitted by Complainant. In the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and in view of both Complainant’s credible argument that the disputed domain name was used to impersonate Complainant and Respondent’s use of a proxy registration service to mask its identity, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of a domain name: “i. Circumstances indicating that [respondent] has registered or [respondent] has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out of pocket costs directly related to the domain name; or ii. [Respondent] has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that [respondent] has engaged in a pattern of such conduct; or iii. [Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the domain name, [respondent] has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.” Passively holding a domain name cannot prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3. This includes domain names that do not resolve to any website content as well as domain names that are parked with a “coming soon” message or other similar content like “The domain is marked as inactive”, as in the case at hand. Where a domain name is being passively held, as alleged in this case, bad faith registration and use exists where: (i) Complainant’s SANOFI trademark has a strong reputation and is widely known, making any good faith uses of the disputed domain name implausible; (ii) Respondent declined to respond or provide any evidence of actual or contemplated good-faith use of the disputed domain name; and (iii) Respondent has used a proxy registration service to conceal its identity. See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”). To that end, the Panel acknowledges the multitude of prior panel determinations under the Policy cited by Complainant concluding that Complainant’s SANOFI trademark is “well known” and “has no meaning other than to refer to the Complainant and its products.” See e.g. Sanofi v. Joseph Donovan,WIPO Case No. DCO2013-0015; Sanofi v. vddfwees qqweadsgg,WIPO Case No. D2013-1740; and Sanofi v. Zhang John,WIPO Case No. D2014-2147. The passive holding doctrine is not always mutually exclusive with additional indicia of bad faith registration and use under the Policy. This is particularly true for surreptitious bad faith uses made through email or other services that might not be initially or even fully detected. To that end, panels have also categorically held that registration and use of a domain name for illegal activity - including phishing, malware distribution, and other types of fraud – is manifestly considered evidence of bad faith. See WIPO Overview 3.0, section 3.4 and i.a. Go Daddy Operating Company, LLC v. Wu Yanmei, WIPO Case No. D2015-0177 (emails sent by the respondent from domain names using the complainant's trademark in an attempt to obtain complainant’s customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy); AB Electrolux v. Piotr Pardo,WIPO Case No. D2017-0368 (engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy). The Panel accepts the evidence adduced by Complainant showing that the disputed domain name and its associated email accounts were disabled by the Registrar based on an abuse report submitted by Complainant. While the dispute domain name resolved to only passive website content, it is clear that it was adopted by Respondent because it is identical to Complainant’s well-known SANOFI trademark and so that Respondent could attempt to impersonate at least one of Complainant’s employees. In view of the strong reputation of Complainant’s SANOFI trademark and Respondent’s evident opportunistic bad faith, as well as Complainant’s credible argument that the disputed domain name was used to impersonate Complainant the Panel concludes that Complainant has established the third element 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 Phillip V. Marano
Sole Panelist
Date: December 3, 2019
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