Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Cooper Wilson, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 9, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 16, 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 BackgroundComplainant is the owner of registrations for the word, and word and device/design, trademark SANOFI, on the trademark registries of a substantial number of countries, including (without limitation), registration at the European Union Intellectual Property Office (EUIPO), (word mark) registration number 004182325, registration dated February 9, 2006, in international classes (ICs) 1, 9, 10, 16, 38, 41, 42, and 44, covering, inter alia, chemical products for use in the manufacture of pharmaceuticals and cosmetic goods; (word mark) registration number 010167351, registration dated January 7, 2012, in ICs 3 and 5, covering, inter alia, pharmaceutical and veterinary preparations as further specified. Complainant also is owner of International Registrations under the Madrid System, including (word mark) registration number 1092811, registration dated August 11, 2011, in ICs 1, 9, 10, 16, 38, 41, 42, and 44, including designation for a number of countries in Africa (not including Nigeria), and; (word mark) registration number 1094854, registration dated August 11, 2011, in ICs 1 and 5, including designation for a number of countries in Africa (not including Nigeria).
Complainant is a multinational pharmaceutical company headquartered in France, ranking among the largest in the world by value of prescription pharmaceutical sales. According to Complainant, it maintains a presence in more than 100 countries and employs 100,000 people. Complainant operates commercial websites at, among other addresses, “www.sanofi.com”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered or acquired registration of the disputed domain name on September 16, 2021.
Respondent has used the disputed domain name to direct Internet users to a webpage that appears to be operated by an open-source operating system community project (CentOS). There is no evidence in the record of this proceeding that CentOS is associated with Respondent other than having its website the object of re-direction of the disputed domain name. There is no evidence of other use of the disputed domain name by Respondent than to associate it with the CentOS website. The printout of the linked CentOS webpage furnished by Complainant includes links to various open source community contacts, including developers.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions A. ComplainantComplainant alleges that it owns rights in the trademark SANOFI and that the disputed domain name is confusingly similar to that trademark. Complainant states that SANOFI does not have any particular meaning.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent’s name does not bear any resemblance to Complainant’s trademark which is highly distinctive; (2) there is no relationship whatsoever between Respondent and Complainant, and Complainant has not authorized Respondent to use its trademark; (3) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to misleadingly divert consumers, including through links that are likely to create click-through revenues for Respondent, and; (4) Respondent is not making a noncommercial or fair use of the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) registration by Respondent of Complainant’s famous mark without an association with Complainant in itself constitutes bad faith registration and use; (2) Respondent’s name does not bear any resemblance to Complainant’s trademark which is highly distinctive; (3) Respondent had at least constructive, if not actual, notice of Complainant’s famous and distinctive trademark when it registered the disputed domain name; (4) Respondent registered the disputed domain name for purposes of creating confusion among Internet users seeking official information about Complainant’s products; (5) Complainant did not authorize Respondent to use its trademark in the disputed domain name; (6) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead to divert Internet users to Respondent’s webpage, which is wholly unrelated to Complainant, thereby disrupting Complainant’s business; (7) Respondent is using the disputed domain name to generate click-through revenues from the webpage to which it is directed, and; (8) Respondent’s use of the disputed domain name is likely to cause irreparable damage to Complainant because by redirection to Respondent’s website consumers may conclude that Complainant is out of business.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsIt is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery to Respondent could not be completed because the physical address in Respondent’s record of registration was materially incomplete. There is no indication in the case file that email transmission to Respondent was not completed. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly SimilarComplainant has provided substantial evidence of rights in the trademark SANOFI, including by registration at the EUIPO, International Registration under the Madrid System (including designation of countries in Africa), and by use in commerce in a substantial number of countries (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of trademark rights. The Panel determines that Complainant owns rights in the trademark SANOFI.
The disputed domain name is identical to Complainant’s distinctive trademark, except for a hyphen (-) between “sano” and “fi”. It is sufficient for purposes of finding confusing similarity within the meaning the Policy for the Panel to find that Complainant’s distinctive trademark is readily identifiable within the disputed domain name, which it is. The addition of the hyphen (and the gTLD .com) are immaterial to this assessment. Moreover, the visual appearance of the disputed domain name and Complainant’s distinctive trademark are “highly similar”, and it would appear that the oral pronunciation or sound of the terms would be identical. According to Complainant, SANOFI does not have a particular meaning. It appears to be a coined term. There is no suggestion of a meaning of the disputed domain name from Respondent. The Panel concludes that there is no difference in meaning between Complainant’s trademark and the disputed domain name. Based on ready identification of Complainant’s trademark in the disputed domain name, and the fact that the disputed domain name is essentially identical to Complainant’s trademark in visual impression, sound and meaning, the Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant owns rights in the SANOFI trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate InterestsComplainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and 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 replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain names to direct Internet users to the website of a community-based open-source operating system (CentOS) platform does not establish rights or legitimate interests in favor of Respondent. There is no indication in the record of this proceeding that there is any association between Respondent and CentOS, other than that Respondent has directed the disputed domain name to the CentOS website. More important, there is no apparent legitimate basis for associating Complainant’s distinctive trademark with the CentOS platform. Absent some plausible explanation of a legitimate basis from Respondent, the Panel will not speculate about possibilities. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services by Respondent, nor does it constitute legitimate noncommercial or fair use of the disputed domain name.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithIn order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Respondent registered the disputed domain name that incorporates Complainant’s distinctive and well-known trademark. It is highly unlikely that Respondent inadvertently or accidentally decided upon Complainant’s trademark term. Complainant has not provided evidence of registration of its trademark in Nigeria, nor has Complainant provided specific evidence of use of its trademark in Nigeria. Nonetheless, Complainant has provided evidence of international registrations of its trademark that designate various countries in Africa, and a routine Internet search of the disputed domain name by Respondent would have generated numerous references to Complainant and its trademark. The Panel infers that Respondent was aware of Complainant’s trademark when it registered the disputed domain name.
Respondent has not attempted to provide an explanation for registering the disputed domain name, which is confusingly similar to Complainant’s distinctive and well-known trademark.
Without more evidence to support the argument, the Panel does not accept Complainant’s contention that Respondent is using the CentOS website as the destination for the disputed domain name because Respondent is generating click-through revenues from that website. The links on the CentOS website, which is an open-source operating system platform, are not on their face directed toward commercial products or services for which click-through advertisement revenues would ordinarily be generated. While the Panel cannot wholly exclude that possibility here, it is not persuaded on the face of Complainant’s contention.
The Panel does however accept that diversion of Internet users to the CentOS platform at least in some modest way disrupts Complainant’s business. Domain names are frequently mis-typed or mispelled by Internet users. There is a possibility that Internet users will inadvertently enter the disputed domain name, instead of Complainant’s website address, and be diverted to the CentOS platform. Inexperienced Internet users might be confused and abandon their search for Complainant’s website, thereby disrupting Complainant’s business.
More important from the standpoint of the Panel, Respondent has not offered any plausible explanation for registration of Complainant’s trademark in the disputed domain name (with a hyphen). If Respondent uses that disputed domain name as the domain in an email address, recipients of Respondent’s email might easily fail to notice the difference and assume that Respondent’s email originated from Complainant. The potential for fraud associated with such deceptive emails is sufficiently great that the Panel considers it appropriate -- particularly in cases where there is no plausible explanation for registration of a distinctive and well-known trademark -- to take the precautionary measure of presuming bad faith intent prior to the undertaking-in-fact of fraud. After deceptive email-based fraud has been committed it may be extremely difficult for the target of such fraud to recover its funds, data, etc. In cases such as the present one, the risks from leaving the disputed domain name in the hands of a third-party (i.e., Respondent) exceed the possibility that there might be some plausible legitimate explanation for Respondent’s registration and use of the disputed domain name.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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,
Frederick M. Abbott
Sole Panelist
Date: November 30, 2021