The Complainants are Sanofi (the “First Complainant”), France, and Genzyme Corporation (the “Second Complainant”), United States of America (“United States”), both represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private / Domains By Proxy, LLC / Arkadi Shaposhnik, Indegene, United States. 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 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 Complainants on October 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 23, 2020. The Center verified that the Complaint together with the amended 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 October 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020. The Center appointed Andrew Christie as the sole panelist in this matter on December 3, 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 First Complainant, Sanofi, is a French multinational pharmaceutical company headquartered in Paris, France. It was formed as Sanofi-Aventis in 2004 and changed its name to Sanofi in 2011. It engages in research and development, and in the manufacturing and marketing, of pharmaceutical products. It is one of the world’s largest multinational pharmaceutical companies by prescription sales, and in 2018 had net sales of EUR 34.46 billion. It has a presence in more than 100 countries, and employs 100,000 people. The Second Complainant, Genzyme Corporation, is an American biotechnology company founded in 1981 and owned by the First Complainant. It is composed of two business units, Rare Diseases and Multiple Sclerosis, which develop treatments for serious and debilitating diseases in the fields of genetic, endocrine and cardiovascular diseases. The Second Complainant is a key element of the First Complainant’s strategy, delivering affordable and trusted medicines to patients and healthcare providers across Europe. The First Complainant is the owner of a number of trademark registrations in France and elsewhere for the word trademark SANOFI, including European Union Trade Mark Registration No. 004182325 (filed on December 8, 2004, and registered on February 9, 2006). The Second Complainant is the owner of a number of trademark registrations in the United States and elsewhere for the word trademark GENZYME, including United States Trademark Registration No. 1859429 (filed on September 27, 1993, and registered on October 25, 1994). The First Complainant and the Second Complainant own and operate a number of domain names in connection with their business activities, including The disputed domain name was registered on July 9, 2020. The Complainants have provided a screenshot, taken on a date that appears to be some time in October, 2020, showing that the disputed domain name resolved to a parking page with what appears to be automatically-generated click-through links, some of which concerned pharmacy-related products or services and others of which concerned products or services unrelated to pharmacy. 5. Parties’ Contentions A. Complainant The Complainants contend that the disputed domain name is confusingly similar to a trademark in which they have rights because: (i) the disputed domain name reproduces their SANOFI and GENZYME trademarks, which do not have any particular meaning and are therefore highly distinctive; (ii) the First Complainant has used its trade name for over 40 years and invested substantial financial resources over the years to advertise and promote its company name and its SANOFI trademark in countries all over the world; (iii) regardless of the adjunction of the descriptive acronym “hem” (which stands for “healthcare emergency management”), the addition of the descriptive term “conference” (which will lead Internet users to believe it is a press event organized by the First Complainant), and the generic Top-Level Domain (“gTLD”) <.com> (which should be disregarded as it does not serve to distinguish domain names), the disputed domain name is confusingly similar to the Complainants’ trademarks because it wholly incorporates them and they are the dominant part of it; and (iv) the likelihood of confusion is ascertained by the reputation of the Complainants’ trade name, trademarks, domain names and goodwill, and the First Complainant’s SANOFI trademark has been found by earlier panels to be well-known in various jurisdictions. The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Complainants have never licensed or otherwise authorized the Respondent to use their trademarks or to register any domain name including their SANOFI and GENZYME trademarks; (ii) there is no relationship whatsoever between the Complainants and the Respondent, and the Respondent has clearly modified the Complainants’ trademarks for its own use; (iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as it is clearly used for a parking website; (iv) the Respondent is more than likely generating click-through revenue from the links on the website resolving from the disputed domain name, which is not a noncommercial or fair use of the disputed domain name; and (v) the Respondent has clearly adopted the Complainants’ trademarks for its own use and incorporated them into the disputed domain name in order to confuse Internet users into believing the Respondent is linked to the Complainants, which does not constitute a bona fide offering of goods and services. The Complainants contend that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has neither a prior right nor a legitimate interest to justify the registration or use of the already well-known and worldwide trademarks of the Complainants; (ii) the Respondent is likely to have had at least constructive, if not actual, notice as to the existence of the Complainants’ trademarks at the time it registered the disputed domain name, suggesting it acted with opportunistic bad faith to make an illegitimate use of the disputed domain name; (iii) the disputed domain name has been registered for the purpose of attracting Internet users to the website that resolves from it, by creating a likelihood of confusion, or at least an impression of association, between the SANOFI and GENZYME trademarks and the disputed domain name; (iv) the Respondent has clearly modified the Complainants’ trademarks for its own use and incorporated them into the disputed domain name without the Complainants’ authorization; (v) the disputed domain name leads to a parking website and has been registered only for the purpose of unfairly attracting the Complainants’ consumers and misleadingly diverting them into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainants and their businesses, or that the Respondent’s activities are approved or endorsed by the Complainants; (vi) the advertisements and links on the parking website resolving from the disputed domain name provide income to the Respondent on a pay-per-click basis; and (vii) the lack of apparent genuine use of the disputed domain name, which is particularly close to domain names used by the Complainants, is likely to cause irreparable prejudice to the Complainants’ goodwill because Internet users could be led to believe that the Complainants are not on the Internet or that they are out of business. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainants’ registered word trademarks SANOFI and GENZYME, followed by the string “hemconference”. The Complainants’ trademarks are clearly recognizable within the disputed domain name. The addition of the string “hemconference” (which is likely to be read by at least some Internet users as a reference to a conference on health emergency management) does not avoid the confusing similarity of the disputed domain name with the trademarks. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and has not been authorized by the Complainants to use their SANOFI and GENZYME trademarks. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainants shows that the disputed domain name has been used to resolve to a parking page with various links, some of which are pharmacy-related and others of which are not. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. As described above, the Complainants have put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainants first registered their SANOFI and GENZYME trademarks. The evidence on the record provided by the Complainants with respect to the use of their SANOFI and GENZYME trademarks, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainants’ trademarks. Furthermore, the evidence on the record provided by the Complainants indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainants. Accordingly, the Panel finds that the disputed domain name has been 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 Andrew F. Christie
Sole Panelist
Date: December 17, 2020
Full & Egal Universal Law Academy