The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Chima Ugorji, Sidmach Technologies, United States of America (“United States”)1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2021. On April 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2021, 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 April 29, 2021, 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 May 3, 2021. 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 May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021. The Center appointed Zoltán Takács as the sole panelist in this matter on June 2, 2021. 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. The language of the Registration Agreement for the disputed domain name is English, which the Panel establishes as the language of this administrative proceeding. 4. Factual Background With providing healthcare solutions in 170 countries and employing over 100,000 people, the Complainant ranks among the largest multinational pharmaceutical companies in the world by prescription sales. The Complainant has an extensive portfolio of trademarks consisting of or comprising the word “Sanofi”, including the International Trademark Registration (“IR”) No. 1092811, SANOFI, registered on August 11, 2011, for various goods and services of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks. Since October 13, 1995, the Complainant owns the domain name The disputed domain name was registered on February 28, 2021, and has not resolved to an active website since registration. 5. Parties’ Contentions A. Complainant The Complainants contends that the disputed domain name is confusingly similar to its SANOFI trademark. The Complainants further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in Paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Complainants claims that the Respondent certainly knew of its SANOFI trademark at the time of obtaining the disputed domain name and has registered it in order to take advantage of its goodwill. The Complainants request that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”. It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (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. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, there are two requirements which a complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant submitted evidence of having registered rights in the SANOFI trademark and for the purpose of this proceeding the Panel establishes that the IR No. 1092811 satisfies the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainants trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the SANOFI trademark. According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Complainant’s SANOFI trademark is fully reproduced in the disputed domain name and it differs from it only in the addition of the descriptive word “jobs”. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a disputed domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services; In the present case, the Complainant submitted sufficient and uncontested evidence of holding The Complainant never authorized the Respondent to use its SANOFI trademark in any way, and its prior rights in the SANOFI trademark precede the date of registration of the disputed domain name. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, 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 the 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. The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainants’ prima facie case. Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the Overview 3.0). The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Complainant’s SANOFI trademark is inherently distinctive and its well-known status has been recognized by previous UDRP panels (e.g. Sanofi v. Francisco Sánchez Fernández, inserious,WIPO Case No. D2019-0169; Sanofi v. Jamey Kirkes,WIPO Case No. D2019-0657). Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0). The Respondent’s reproduction of the inherently distinctive and well-known SANOFI trademark in the disputed domain name convinces the Panel that the Respondent was aware of the Complainants’ business and prior rights at the time of obtaining the disputed domain name and chose to register it in order to exploit the reputation behind the SANOFI trademark without any authorization or rights to do so. The disputed domain name has not resolved to an active website since registration. There is no evidence that the disputed domain name has been used in any active way. According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Considering the high level of distinctiveness and global reputation of the Complainant’s SANOFI trademark; the Respondent’s lack of any rights or legitimate interests in the disputed domain name; the absence of any conceivable good faith use of the disputed domain name by the Respondent; and, the failure by the Respondent to react and respond to the compelling evidence submitted by the Complainants, in view of this Panel further support an undisputed presumption of the Respondent’s evident targeting of the Complainant’s trademark rights and suggest that the Respondent’s non-use of the disputed domain name is in bad faith. Noting the above discussed facts and circumstances the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 Zoltán Takács 1 The Complaint was initially filed against “Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf”. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amendment to the Complaint names the underlying registrant as the Respondent.
The disputed domain name reproduces its well-known SANOFI trademark in its entirety and addition of the descriptive word “jobs” is not sufficient to prevent finding of confusing similarity.
(ii) it has been commonly known by the disputed domain name;
(iii) it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
registered rights in the SANOFI trademark.
Sole Panelist
Date: June 11, 2021
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