The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Todd Peter, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 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 the Complainant on August 7, 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 August 7, 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2020. The Center appointed Federica Togo as the sole panelist in this matter on September 21, 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 Complainant is the registered owner of several trademarks worldwide consisting of or containing the term SANOFI, e.g. International Registration No. 674936 SANOFI (word mark) registered on June 11, 1997 in classes 3 and 5, notably concerning pharmaceutical products and designating several countries worldwide. This mark has been duly renewed and is in force. European Union Trade Mark Registration No. 010167351 SANOFI (word mark) registered on January 7, 2012 in classes 3 and 5, notably concerning pharmaceutical products. This mark is in force. In addition, the Complainant owns the website “www.sanofi.com”, which was created on October 13, 1995 and is used by the Complainant in connection with its activity. It results from the information disclosed by the Registrar that the disputed domain name was created on July 17, 2020. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a parking website comprising pay-per-click links, some of which are clearly related to the pharmaceutical sector in which the Complainant operates. 5. Parties’ Contentions A. Complainant It results from the Complainant’s undisputed allegations that the Complainant is a French multinational pharmaceutical company headquartered in Paris, ranking as the world’s 4th largest multinational pharmaceutical company by prescription sales. It 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. In addition, it is a multinational company settled in more than 100 countries on five continents employing 100,000 people and is a major player on the worldwide pharmaceutical market. The Complainant contends that its trademarks SANOFI are highly distinctive and well-known. The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s registered trademarks since it comprises an exact reproduction of its trademark SANOFI combined with a descriptive acronym “hr”, suggesting a human resources dedicated website. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, it has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. It further results from the Complainant’s undisputed contentions that the disputed domain name resolves to a parking website comprising pay-per-click links. According to the Complainant, the Respondent is more than likely generating click-through revenue from such links. The Complainant therefore concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant’s undisputed allegations, the Respondent must have had knowledge of the Complainant’s trademarks at the time of the disputed domain name’s registration, given the famous and distinctive nature of the trademark SANOFI. The Complainant further contends that the Respondent is undoubtedly trying to ride off SANOFI’s worldwide reputation, since according to the Complainant’s proved allegations the disputed domain name resolves to a parking website comprising pay-per-click links. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “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 requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the 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. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the element SANOFI. Reference is made in particular to International Registration No. 674936 SANOFI (word mark) registered on June 11, 1997 in classes 3 and 5, notably concerning pharmaceutical products and designating several countries worldwide. This mark has been duly renewed and is in force. European Union Trade Mark Registration No. 010167351 SANOFI (word mark) registered on January 7, 2012 in classes 3 and 5, notably concerning pharmaceutical products. This mark is in force. (These trademark registrations predate the creation date of the disputed domain name, which is July 17, 2020). UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark SANOFI is fully included in the disputed domain name, preceded by the letters “hr” (which might be seen as an acronym standing for human resources) and of a hyphen. Furthermore, it is the view of this Panel that the addition in the disputed domain name of the letters “hr” and of a hyphen cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademark, since the Complainant’s trademark is clearly recognizable in the disputed domain name. In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark SANOFI or the registration of the disputed domain name. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. In addition, it results from the undisputed evidence before the Panel that the disputed domain name resolves to a parking website comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark. UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead internet users (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.9 with further references). This Panel shares this view and notes that the Complainant’s trademark SANOFI has gained a worldwide reputation (see also e.g., Sanofi v. Marius Graur,WIPO Case No. D2019-0965; Sanofi v. Sarthak Kapoor,WIPO Case No. D2019-0370; Sanofi v. Bo Li,WIPO Case No. D2013-1971). Therefore, such use can neither be considered as bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand. The Complainant’s trademarks have existed for decades and have gained a worldwide reputation. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s SANOFI trademarks when it registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed SANOFI mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g., Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No.. D2019-1409; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). The Complainant also proved that the disputed domain name resolves to a parking website comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark, so that the Panel is satisfied that the disputed domain name, incorporating in its entirety the Complainant’s trademark that has gained a worldwide reputation, is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location. Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In that regard, the Respondent originally used a privacy service to conceal its identity and the Respondent did not provide any response with a conceivable explanation of its behavior. In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 Federica Togo
Sole Panelist
Date: October 5, 2020
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