Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Cerol Tugna, Germany. 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 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 7, 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 October 9, 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 October 12, 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 3, 2020. The Center appointed Richard W. Page as the sole panelist in this matter on November 12, 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 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, Complainant is a French multinational pharmaceutical company headquartered in Paris, France, ranking as the world’s 4th largest multinational pharmaceutical company of prescriptions sales. Complainant engages in research and development (“R&D”), manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but Complainant also develops over-the-counter medications. Complainant is a full member of the European Federation of Pharmaceutical Industries and Associations (“EFPIA”). Historically Complainant was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Syntélabo, and changed its name to Sanofi in May 2011. The new group benefits from a larger portfolio of high-growth drugs. Complainant is a multinational company located in more than 100 countries on all five continents employing 100,000 people. With an R&D investment of EUR 5.9 billion in 2018, Complainant’s R&D portfolio includes 83 projects in clinical development, 35 of which area at advanced stages. Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. Complainant has registered trademarks in SANOFI (the “SANOFI Mark”) around the world. For example, International Trademark Registration No. 674936, registered June 11,1997. The Disputed Domain Name was registered on September 3, 2020, and it does not resolve to any active website. 5. Parties’ Contentions A. Complainant Complainant contends that it is the rightful owner of many trademarks for SANOFI, including without limitation (1) French Registration No. 3831592 for SANOFI, registered May 16, 2011; and (2) French Registration No. 96655339 for SANOFI, registered December 11, 1996. Complainant further contends that the SANOFI Mark is well known worldwide. Complainant further contends that it has registered numerous domain names containing the element “Sanofi”, including without limitation: Complainant alleges that the Disputed Domain Name contains the entirety of the highly distinctive word “Sanofi”. Complainant has used the SANOFI Mark for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI Mark in countries all over the world. Complainant further alleges that the Disputed Domain Name includes the dominant element of the SANOFI Mark which makes it confusingly similar to the SANOFI Mark, pursuant to paragraph 4(a)(i) of the Policy. The Disputed Domain Name also includes additional non-distinctive word: (1) “Canada” which is a location where Complainant does business, and (2) the generic Top-Level Domain (“gTLD”) extension “.com”. Complainant further alleges that the Disputed Domain Name contains the entirety of the SANOFI Mark with only the addition of a descriptive geographical word and a gTLD. Complainant states that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Complainant alleges that “WhoisGuard Protected” indicated in the WhoIs database as the registrant of the disputed domain name is not the real registrant, rather it is a privacy service provided by the Registrar, and further alleges that Respondent has never been known by the name Sanofi. Complainant alleges that it has never licensed or given permission to Respondent to use the SANOFI Mark in any way. Complainant alleges that Respondent has actual and constructive knowledge of the SANOFI Mark, hence use of the Disputed Domain Name cannot be bona fide nor can it be a legitimate noncommercial or fair use. Furthermore, the lack of use of an active website to which the Disputed Domain Name resolves does not satisfy these elements. Complainant avers that the Disputed Domain Name resolves to an inactive logging webpage. Complainant further avers that the elements of paragraph 4(a)(iii) of the Policy are nonexclusive. Inaction may be found as a basis for bad faith registration and use, citing Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003 (“Telstra”). B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Respondent is not obliged to participate in this proceeding, but if it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: (i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the SANOFI Mark; and, (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant contends that it has numerous registrations of the SANOFI Marks. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Section 1.2.1 of the WIPO Overview 3.0 also states that registration is prima facie evidence of Complainant having enforceable rights in the SANOFI Mark. Respondent has not contested the allegations that there are numerous registrations of the SANOFI Mark. Complainant further contends that the Disputed Domain Name is confusingly similar to the SANOFI Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant alleges that the Disputed Domain Name contains the entirety of the highly distinctive word “Sanofi”. Complainant further argues that the Disputed Domain Name contains the entirety of the SANOFI Mark with only the addition of one geographical word “Canada”, and a gTLD “.com”. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also, section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also, section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as “.com” may be disregarded for purposes of assessing confusing similarity. The Panel finds that the Disputed Domain Name is confusingly similar to the SANOFI Mark for purposes of paragraph 4 (a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interests in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the SANOFI Mark. Complainant alleges that Respondent has never been known by the name “Sanofi”. Complainant alleges that it has never licensed or given permission to Respondent to use the SANOFI Mark in any way. Complainant alleges that Respondent has actual and constructive knowledge of the SANOFI Mark, hence use of the Disputed Domain Name cannot be bona fide nor can it be a legitimate noncommercial or fair use. Furthermore, the lack of use of an active website to which the Disputed Domain Name resolves does not satisfy any potential claim by Respondent for rights or legitimate interests. The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not contested Complainant’s allegations. Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the SANOFI Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the SANOFI Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the SANOFI Mark as to the source, sponsorship, affiliation, or endorsement of your website. Complainant asserts that the lack of use by Respondent of the website to which the Disputed Domain Name resolves is sufficient evidence of bad faith. The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra, supra. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. One such factor is that Respondent has made no use of the Disputed Domain Name. Complainant alleges that Respondent has not developed any active website or made any other use of the Disputed Domain Name. In Telstra it was established that registration together with “inaction” or “passive use” and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent UDRP panels. The Panel finds that the SANOFI Mark is well known throughout the world and that Respondent had actual and/or constructive knowledge of Complainant’s trademark rights. Furthermore, the Panel finds that Respondent has made no use of the Disputed Domain Name. These elements are sufficient to establish bad faith registration and use 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 Richard W. Page
The Panel finds that Complainant has enforceable rights in the SANOFI Mark for purposes of this proceeding.
Sole Panelist
Date: November 20, 2020
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