The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain is for Sale at www.dan.com ---- c/o Dynadot, United States of America (“United States”) / Domain Administrator, Domain is for Sale at www.Dan.Com ----, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2021. On August 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 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 August 6, 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 August 12, 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 August 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on September 27, 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.
4. Factual BackgroundThe Complainant is a French pharmaceutical company with presence in more than 100 countries employing more than 100,000 people. The Complainant offers a wide range of patented prescription drugs in seven major therapeutic areas: cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. Per the Complaint, in 2018, the Complainant had a Research and Development investment of EUR 5.9 billion and consolidated sales of EUR 34.46 billion. The Complainant operates under the trademark SANOFI as well as various trademarks for its different pharmaceutical products. The trademark ELTULVY identifies a new pharmaceutical line of products for the prevention and treatment of blood disorders.
The Complainant is the owner of a registered trademark for the term “eltulvy”, namely Mexican Trademark Registration No. 2272571, ELTULVY, word, registered on July 7, 2021, in class 5 (“the ELTULVY mark”). Additionally, the Complainant has filed various trademark applications for the term “eltulvy”, including:
- Unites States Trademark Application No. 90593754, ELTULVY, field on March 22, 2021, in class 5;
- Canadian Trademark Application No. 2096847-00, ELTULVY, filed on April 1, 2021 in class 5;
- Chinese Trademark Application No. 54891941, ELTULVY, filed on April 2, 2021 in class 5; and
- Japanese Trademark Application No. 2021-41607,ELTULVY, filed on April 6, 2021 in class 5.
The disputed domain name was registered on March 26, 2021, and resolves to a parking website of “dan fast & easy domain transfers”, which offers the transfer of the disputed domain name for USD 990, with various options for its acquisition including its possible rent with buying option or installment purchase.
5. Parties’ Contentions A. ComplainantKey contentions of the Complaint may be summarized as follows:
The disputed domain name reproduces the ELTULVY mark, which has no particular meaning and is therefore highly distinctive, creating a likelihood of confusion with the Complainant’s trademark, being the generic Top-Level-Domain (“gTLD”) “.com” insufficient to avoid the confusing similarity. The registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity, as the UDRP makes no specific reference to the day of which the owner of the trademarks acquired its rights.
The Complainant and its trademark SANOFI are well-known due to its continued use over 40 years and substantial investments in promotion worldwide over these years. The likelihood of confusion of the disputed domain name with the Complainant and its trademarks is ascertained by the reputation of the Complainant’s trade name, trademarks, domain names, and goodwill. The Complainant is one of the world leaders among pharmaceutical companies, ranking first in Europe and fourth in the world in the pharmaceutical industry (for instance in the L2 Digital IQ Index “Pharm & Healthcare Providers” released by Scott Galloway, NYU Stern dated April 18, 2011).
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s name not bear any resemblance with the disputed domain name, the Complainant has never licensed or authorized the Respondent to use the ELTULVY mark, and there is no relationship between the Parties. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name nor is he using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to an inactive parking page indicating that it is for sale for USD 990.
The disputed domain name was registered and is being used in bad faith. Given the famous and distinctive nature of the Complainant, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s trademarks, which suggests opportunistic bad faith. The trademark SANOFI is one of the most cyber-squatted trademarks. The registration of the disputed domain name cannot be the result of mere coincidence. The absence of rights or legitimate interests in the Respondent infers its absence of good faith, having registered the disputed domain name targeting the Complainant and the ELTULVY mark for the primary purpose of gaining unfair benefit of the Complainant’s reputation. The non‑use of the disputed domain name corroborates the Respondent’s bad faith. Passive holding under the appropriate circumstances (including the international fame of the Complainant and its trademarks) and the offer of a domain name for sale are indicative of bad faith under the Policy. Additionally, the lack of use of the disputed domain name is likely to cause irreparable prejudice to the Complainant’s and the ELTULVY mark goodwill because Internet users could believe that the Complainant is not on the Internet or out of business.
The Complainant has cited numerous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly SimilarThe Complainant has rights in the ELTULVY mark by virtue of its trademark registration in Mexico. It is to be noted that although the Complainant has pending trademark applications for the ELTULVY mark in various jurisdictions, these applications do not establish trademark rights under the Policy. See section 1.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
The Panel notes that the Complainant’s rights over the ELTULVY mark postdates the registration of the disputed domain name. The fact that the disputed domain name was registered before the Complainant acquired trademark rights in the term “eltulvy” does not by itself preclude the Complainant’s standing to file a UDRP case, nor a finding of identity or confusing similarity under the first element, albeit, only in exceptional circumstances, would the Complainant be able to prove the Respondent’s bad faith. See section 1.1.3, WIPO Overview 3.0.
In 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 identical or confusingly similar to that mark for purposes of the Policy. Furthermore, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, and 1.11, WIPO Overview 3.0.
The disputed domain name incorporates the ELTULVY mark in its entirety, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark ELTULVY, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate InterestsAlthough the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that demonstrating 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 primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent, of producing evidence of rights or legitimate interests in the disputed domain name providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.
The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has conducted various searches over the Internet verifying that the term “eltulvy” does not appear to have any particular meaning in any language.
The disputed domain name incorporates the ELTULVY mark (with no alteration) and bears no resemblance with the Respondent’s name. The Panel notes that the Respondent’s name provided in the registration of the disputed domain name and revealed by the Registrar verification was concealed under a privacy registration service and has no resemblance with the term “eltulvy”.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the disputed domain name not being authorized to use the ELTULVY mark, and that the disputed domain name is inactive resolving to a parking website that offers the transfer of the disputed domain name for a price exceeding normal costs of registration.
It is further to be noted that a core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. However, the disputed domain name incorporates the ELTULVY mark in its entirety, being identical to this trademark and generating a risk of implied affiliation.
Furthermore, the Panel considers remarkable that the Respondent has chosen not to reply to the Complaint, not providing any evidence of any rights or legitimate interests in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has nor rebutted the Complainant’s prima facie case, and nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes that the disputed domain was registered in anticipation of the Complainant’s trademark rights. In this respect, the Panel considers that the cumulative circumstances of this case point to bad faith registration and use of the disputed domain name. See section 3.8.2, WIPO Overview 3.0.
The Panel finds remarkable that the disputed domain name is identical to the Complainant’s trademark and the word “eltulvy” seems to be a coined term with no particular meaning in any language.
It is further remarkable that the Respondent has not offered any explanation of any rights or legitimate interests in this term or in the disputed domain name, and has not come forward to deny the Complainant’s assertions of bad faith.
Other circumstances that may point to bad faith registration and use of the disputed domain name under the Policy are the use of a privacy registration service and the passive holding of the disputed domain name, resolving to a parking website that offers its sale for valuable consideration in excess of normal costs of registration (USD 990). See sections 3.1.1 and 3.3, WIPO Overview 3.0.
In addition, the Panel finds particularly relevant that the disputed domain name was registered only a few days after the filing of the Complainant’s trademark application for the ELTULVY mark in Unites States, which was filed on March 22, 2021 (four days before the registration of the disputed domain name).
The Panel, under its general powers articulated inter alia in paragraph 10 of the Rules, has been able to corroborate that the Complainant and its trademarks have been subject of many cases of cybersquatting. This circumstance evidences that the Complainant is a common objective of cyber squatters that have registered many domain names targeting the Complainant and its trademarks with opportunistic bad faith, for gaining unfair advantage of the Complainant’s reputation and goodwill. This circumstance may further indicate a higher probability that applications for new trademarks filed by the Complainant may be monitored by cyber squatters to target these new trademarks with the registration of corresponding domain names in bad faith. The Panel has found more than 1,800 decisions in the WIPO UDRP database related to the Complainant and its trademarks.
The Panel has further found in the WIPO UDRP database various decisions where apparently the same Respondent has been involved in prior cases under the Policy, most of them being decided with the transfer of the respective disputed domain names to the other party, which may point to a pattern of bad faith registration and use under the Policy.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel finds that the disputed domain name was registered and is being used targeting the trademark ELTULVY in bad faith. The Panel considers that disputed domain name has been registered with the intention of free riding on the established reputation of the Complainant by transferring the disputed domain name to the Complainant, to one of its competitors or to any third party, for valuable consideration likely in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The Respondent’s conduct has further prevented the Complainant from reflecting its trademark in a corresponding domain name.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Reyes Campello Estebaranz
Sole Panelist
Date: October 11, 2021