The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / blessing hosting, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2020 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 July 22, 2020. 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”). The Center received an email communication from the Respondent on July 24, 2020. At the request of the Complainant, the administrative proceeding was suspended on July 27, 2020, and reinstituted on August 27, 2020. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Center received 4 email communications from the Respondent on September 17 and 18, 2020. At the request of the Complainant, the administrative proceeding was suspended for the second time September 21, 2020, and reinstituted on October 22, 2020. The new the due date for Response was November 6, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on November 24, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on November 29, 2020. 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 date of the Domain Name registration was confirmed by the Registrar to be June 22, 2020. The trademark SANOFI-AVENTIS serves as house-mark of the Complainant and is protected as a registered trademark in numerous jurisdictions world-wide. The Complainant owns, inter alia, French trademark No. 3309318 for SANOFI-AVENTIS registered on August 20, 2004, covering a wide variety of goods and services related to pharmaceuticals. The Complainant has provided evidence that the SANOFI-AVENTIS trademark has also had extensive coverage and use. The trademark predates the registration date of the Domain Name registration for a very broad variety of goods and services in the pharmaceutical industry. In addition, the Complainant operates, among others, the following domain names reflecting its trademark in order to promote its goods and services: - "sanofi-aventis.com” registered on March 14, 2004; The Panel also conducted an independent search to determine that the Domain Name resolves to an error page. 5. Parties’ Contentions A. Complainant The Complainant alleges that with consolidated net sales of EUR 34.46 billion in 2018, EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014, the Complainant is a French multinational pharmaceutical company headquartered in Paris (France), ranking as the world’s 4th largest multinational pharmaceutical company by prescription sales. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the Complainant also develops over-the-counter medication. The Complainant, is a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA). 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. The Complainant is a multinational company settled in more than 100 countries on all 5 continents employing 100,000 people. With an R&D investment of EUR 5.9 billion in 2018, the Complainant’s Research and Development portfolio includes 83 projects in clinical development, 35 of which are at advanced stages. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in 7 major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. In short, the Complainant is a major player on the worldwide pharmaceutical market. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark, and the only difference between the Complainant trademarks and the Domain Name is the purposeful adding of the ending acronyms “pak” and “ltd”, which are an abbreviation standing for “Pakistan” (or could be perceived to designate a “pack” which is a generic and descriptive word) and “Limited”. Such abbreviation are purely descriptive of services necessarily conducted by any pharmaceutical firm such as the Complainant and is insufficient to alleviate the likelihood of confusion. In addition, the Respondent is neither affiliated with the Complainant in any way nor has the Respondent been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, Respondent cannot claim prior rights or legitimate interest in the Domain Name, as the SANOFI-AVENTIS trademark precedes the registration of the Domain Name for years. Hence, as a matter of fact, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. In addition, “Super Privacy Service LTD c/o Dynadot” indicated on the Whois Database as registrant of the Domain Name, is not the real registrant. Dynadot is a company which offers its clients to register domain names in its name and on behalf of third parties in order to keep secret the true identity of the registrant. The Complainant further argues that bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which the Respondent had no rights or legitimate interest. It is implausible that the Respondent was unaware of the Complainant when the Respondent registered the Domain Name. The composition of the Domain Name which entirely reproduces the Complainant’s trademark confirms that the Respondent was aware of the Complainant and its trademark thus suggesting opportunistic bad faith. In addition, the lack of use of the Domain Name particularly close to those used by the Complainant is likely to cause irreparable prejudice to its general goodwill because Internet users could be led to believe that the Complainant is not on the Internet or worse, that the Complainant is out of business. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark SANOFI-AVENTIS, in respect of a very broad range of pharmaceutical goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the terms “pak” and “ltd” add to the confusion. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, and constitutes opportunistic bad faith registration and use. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests cancellation of the Domain Name. B. Respondent The Respondent did not file a formal response on the merits or the substance of the case. The Respondent did send emails to the Center stating that he does not argue to keep the Domain Name, however, the Respondent does not appear to have unequivocally agreed to cancel the Domain Name (which was the remedy sought by the Complainant). Further, the Respondent also indicated in emails to the Center that “but client domain not registeding [sic] illegal” and “refund my money”. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) That the Domain Name has been registered and used in bad faith The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the cancellation of the Domain Name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond substantively to this Complaint (even if the emails might be considered a questionably technical response), the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for SANOFI-AVENTIS. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the terms “pak” and “ltd” to the Domain Name does not change the overall impression of the Domain Name being connected to the trademark of the Complainant, being the latter recognizable within the Domain Name. The addition of these terms does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005 0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” Further, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 states that an additional term does not prevent a finding of confusing similarity and the meaning of such term would be relevant (if anything) for the analysis under the second and third elements. Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted by the Respondent, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is persuaded by the Complainant’s arguments that the Respondent intentionally attempts to attract Internet users and the probability is that the choice of the Domain Name was meant to confuse Internet users as to source or affiliation and suggests opportunistic bad faith. The Panel finds that the registration of the Domain Name based on a well-established mark at the time of registration and the Respondent’s passive holding of the Domain Name leads to a finding of bad faith squarely within the meaning of the Policy. The Domain Name was selected in knowledge of the Complainant’s mark and brand, and further the Domain Name was chosen in order to capitalize on Internet traffic intended for the Complainant’s website. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name or to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. The Panel agrees with the Complainant’s argument that it has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith – especially in cases such as this one, where the mark is well known. See e.g., Telstra Corporative Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the panel found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that the respondent had undertaken any positive action in relation to the domain name. Indeed, in circumstances of inaction (“passive holding”), this behavior falls within the concept of the domain name “being used in bad faith”. See also, Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028 and M. Antonino Amaddeo (Reminiscence Diffusion Internationale) contre Gas Bijoux SAS / GAS Olivier),WIPO Case No. D2012-1831. The Panel finds in accordance with the consensus view that the apparent lack of an active domain name even without the attempt to contact the trademark holder (“passive holding”) does not prevent a finding of bad faith. The cumulative circumstances in this case that support the Panel’s finding of bad faith use and registration include the Complainant’s well-known trademark, the Respondent’s concealment of its identity, the addition of terms that are “descriptive” and one of them arguably geographic, that only add to the possible confusion for Internet users. The Panel agrees with the Complainant that due to the well-known and distinctive character and reputation of the SANFOI-AVENTIS trademark, the Respondent must have been aware of the Complainant and its trademark when registering the Domain Name, and sought to capitalize on any confusion with the Complainant. This finding is consistent with previous panels which have considered the Complainant’s trademark to be “well-known” or “famous”. See e.g., SANOFI-AVENTIS v. Andris Maupalis,WIPO Case No. D2007-1341 (December 3, 2007). It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name or to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. The Panel finds that this is a classic example of the unfortunate fraudulent and/or opportunistic cybersquatting registration that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to target the Complainant’s trademark. Further, the Panel finds that the registration of the Domain Name with the use of the privacy registration further supports such inference. This is consistent with section 3.6 of the WIPO Overview 3.0, which states that: “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements. Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.” In this case, no such inference was refuted by the Respondent. Moreover, even if the emails submitted by the Respondent would serve in any way as a response, the Panel does not consider that the Respondent’s assertions prevent a finding of bad faith. Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, 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 Ellen B Shankman
- “sanofi aventis.eu” registered on March 10, 2006;
- “sanofi -aventis.fr” registered on December 18, 2006;
- “sanofi -aventis.us” registered on April 26, 2004;
- “sanofi -aventis.net” registered on April 26, 2004;
- “sanofi -aventis.ca” registered on April 27, 2004;
- “sanofi -aventis.biz” registered on April 26, 2004;
- “sanofi-aventis.info” registered on April 26, 2004; and
- “sanofi-aventis.org” registered on April 26, 2004.
Sole Panelist
Date: December 16, 2020
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