Complainant is Sanofi, France (“Complainant), represented by Selarl Marchais & Associés, France.
Respondent is Omprakash Bind, Exicon Consulting Pvt. Ltd., India (hereinafter referred to jointly and severally as “Respondent”). 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 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2020, 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 July 11, 2020 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 13, 2020. The Center verified that the Complaint together with the amendment to the Complaint (hereinafter 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 July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. On July 21, 2020, the Center received an email communication from someone apparently connected to Respondent requesting the Center “to kindly share the Complaint copy including any annexure”. The Center notified the Commencement of Panel Appointment Process on August 6, 2020. The Center appointed M. Scott Donahey as the sole panelist in this matter on August 17, 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 Complainant is a French pharmaceutical company with a presence in more than 100 countries employing more than 100,000 people. Complaint, Annex 5. Complainant has had sales of more than EUR 3.1 billion in each successive year beginning in 2014 and extending through 2018. Complaint, Annex 5. Originally formed in 2004 as Sanofi-Aventis, Complainant changed its name to Sanofi in May 2011. Complainant has a large portfolio of high growth drugs, with a Research and Development investment of EUR 5.9 billion in 2018. Complainant offers a wide range of patented prescription drugs in 7 major therapeutic areas: cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. Complaint, Annex 6.4. Complainant is the owner of numerous registered trademarks for SANOFI in France (the earliest of which is trademark registration No. 1482708 registered on August 11, 1988), in the European Union (the earliest of which is trademark registration No. 010167351 registered on August 2, 2011), and in the United States (trademark registration No. 4178199 registered on July 24, 2012). Complainant is also the registrant of international trademarks for SANOFI. Complaint, Annex 8. As the SANOFI trademark has no linguistic significance, it is “highly distinctive.” Complainant is the owner of numerous domain names featuring the SANOFI trademark as the Second-Level Domain (“SLD”) in the following Top-Level Domains (“TLDs”): “.com”, “.cn”, “.fr”, “.us”, “.net”, “.ca”, “.biz”, :.info”, “.org”, “.mobi” and “.tel”. All of thesedomain names were registered between October 13, 1995, and March 17, 2011. Complaint Annex 9. Complainant launched a reusable insulin pen under the name “AllStar” in India in 2012. Respondent registered the disputed domain name on June 9, 2020. Complaint, Annex 1. Respondent is using the disputed domain name to resolve to website on which advertisements for Complainant’s ALLSTAR AllStar medical devices and other products trademarked by Complainant are depicted. According to the Complaint, Complainant has never authorized Respondent to use its name, products or trademarks for any purpose. 5. Parties’ Contentions A. Complainant Complainant alleges that the disputed domain name is confusingly similar to Complainant’s well-known SANOFI trademark. Complainant asserts that Respondent has no rights or legitimate interests in respect to the disputed domain name. Finally, Complainant contends that Respondent registered and has been using the disputed domain name in bad faith as Respondent has no connection whatsoever to Complainant nor to its “Allstar” products and has never been authorized to use any of Complainant’s trademarks for any purpose. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings “A Panel shall decide a complaint on the basis of the statements 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 directs that the complainant must prove each of the following: (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; and, (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 is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name consists of Complainant’s well-known and highly distinctive SANOFI trademark, and the English word “allstar”, which describes a product which Complainant sells in the Indian market (Respondent lists its country of residence as “India” in its registration information provided at the time of the registration of the disputed domain name). Taken as a whole, the disputed domain name suggests a connection to Complainant and to Complainant’s “Allstar” product marketed in India. Complainant’s SANOFI trademark is clearly recognizable within the disputed domain name and the addition of this term does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known mark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Moreover, the disputed domain name carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name C. Registered and Used in Bad Faith Respondent is using the disputed domain name to resolve to website on which advertisements for Complainant’s AllStar medical devices and other products trademarked by Complainant are depicted. In the present case, a person searching for help with a medication manufactured or provided by Complainant, finding this domain name might well believe that it had been taken to a website provided by Complainant, thereby creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This is evidence of bad faith registration and use. Moreover, noting the nature of the disputed domain name, there is no other conceivable legitimate use to which the disputed domain name could be put that would not constitute bad faith registration and use. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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, M. Scott Donahey
Sole Panelist
Date: August 25, 2020
Full & Egal Universal Law Academy