Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States” or “U.S.”)) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 November 13, 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 November 17, 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” o “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 November 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 14, 2020. The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on December 28, 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 Sanofi is a French pharmaceutical company. It is the world’s fourth largest drug company as measured by prescription sales. Complainant’s prescription drugs treat patients with serious diseases and it has leading positions in major therapeutic areas, including cardiovascular, oncology, internal medicine, and vaccines. Complainant has operations in more than 100 countries on five continents and employs around 100,000 people. Complainant owns both national (France and the U.S.) and International trademark registrations for the SANOFI mark, the earliest of which appears to have been issued in 1992. Complainant also owns domain names that incorporate the term “sanofi”. According to Complaint, the disputed domain name Complainant asserts that the disputed domain name is confusingly similar to the SANOFI trademark. It notes that the disputed domain name comprises an exact reproduction of the mark combined with descriptive terms (“patient” and “connect”) followed by a generic Top-Level Domain suffix (“.com.”). Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that it has never licensed or otherwise authorized Respondent to use the SANOFI mark or to register any domain names that include the mark. Complainant also maintains that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. It alleges that the disputed domain name leads to a fraudulent parking website that was registered only for the purpose of attracting Internet users to click on sponsored links that generate spywares. Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith. It first contends that, given the widespread use of the SANOFI mark, it may be presumed that Respondent was aware of Complainant and of the SANOFI mark at the time the disputed domain name was registered, and that such presumption gives rise to a finding of bad faith. As stated by Complainant, “it should be considered that, given the famous and distinctive nature of the mark ‘SANOFI’, Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of Complainant’s marks at the time he registered the disputed domain name. This suggests that Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it.” In support of its assertion of bad faith use of the disputed domain name, Complainant reiterates its claim that Respondent is using the disputed domain name to divert Internet users to a fraudulent parking website for the purpose of enticing Internet users to click onto sponsored links, thereby generating revenue to Respondent or to gather sensitive details on the Internet users. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the SANOFI trademark. The disputed domain name incorporates in full the SANOFI mark, adding only descriptive terms and the generic Top-Level Domain “.com.” These additions are insufficient to avoid a finding of confusing similarity. “[…] [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark […].” See WIPO Overview of WIPO Panel Views of Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, and cases cited therein. The Panel further finds that Complainant, through its ownership of national and international registrations of the SANOFI mark, has rights in such mark. “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” See WIPO Overview 3.0, section 1.2, and cases cited therein. B. Rights or Legitimate Interests The Panel concludes that Complainant has satisfied its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The unrebutted evidence indicates that the disputed domain name resolves to a fraudulent parking website featuring sponsored links which generate spywares. The use of a domain name to host a parked page with sponsored links does not represent a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. See WIPO Overview 3.0, section 2.9, and cases cited therein. And, since Complainant, presumably, earns revenue every time an Internet user clicks on a sponsored link, it may not be held that Respondent is making a legitimate noncommercial use of the disputed domain name, within the meaning of paragraph 4(c)(iii) of the Policy. There is also no evidence that Respondent is commonly known by the disputed domain name. C. Registered and Used in Bad Faith The Panel determines that the disputed domain name was registered and is being used in bad faith. Taking into account the worldwide reputation of Complainant and of its SANOFI mark, the Panel finds that it is inconceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time the disputed domain name was registered. See Sanofi v. Bo Li,WIPO Case No. D2013-1971; WIPO Overview 3.0, section 3.2.2, and cases cited therein. The fact that the disputed domain name includes descriptive terms (“patient” and “connect”) that relate, in general, to Complainant’s pharmaceutical business provides further support for the finding of actual notice. Such finding supports a determination of bad faith registration. “It is well established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name is highly indicative of bad faith registration.” See NBC Universal Inc. v. Szk.com/Michele Dinoia,WIPO Case No. D2007-0077. The Panel further concludes that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s SANOFI mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on such site, within the meaning of paragraph 4(b(iv) of the Policy. As noted above, the disputed domain name is confusingly similar to Complainant’s SANOFI trademark. The additional descriptive terms “patient” and “connect” exacerbate the likelihood of confusion insofar as such terms relate to Complainant’s line of business. The fact that the disputed domain name resolves to a website with a sponsored links scheme supports a finding that Respondent’s use of the disputed domain name is motivated, primarily, by commercial gain. 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 Jeffrey M. Samuels
Sole Panelist
Date: January 11, 2021
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