The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Sanofil Crop Science Hyderabad, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 November 5, 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 November 9, 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Response was filed late with the Center on December 3, 2021.
The Center appointed David H. Bernstein as the sole panelist in this matter on December 10, 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 multinational pharmaceutical company headquartered in Paris (France) who engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market (the firm also develops over-the-counter medication). The Complainant was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. It is now established in more than 100 countries, with consolidated net sales of more than 36 billion euros in 2020.
The Complainant owns multiple trademarks, including:
- French trademark SANOFI (+device), registered under No. 3831592 on May 16, 2011.
- French trademark SANOFI, registered under No. 96655339 on December 11 1996.
- French trademark SANOFI (+device), registered under No. 92412574 on March 26, 1992.
- French trademark SANOFI, registered under No. 1482708 on August 11, 1988.
- European Union trademark SANOFI, registered under No. 010167351 on January 7, 2012.
- European Union trademark SANOFI, registered under No. 004182325 on February 9, 2006.
- European Union trademark SANOFI, registered under No. 000596023 on February 1, 1999.
- International trademark SANOFI (+device), registered under No. 1091805 on August 18, 2011.
- International trademark SANOFI, registered under No. 1092811 on August 11, 2011.
- International trademark SANOFI, registered under No. 1094854 on August 11, 2011.
- International trademark SANOFI, registered under No. 674936 on June 11, 1997.
- International trademark SANOFI (+device), registered under No. 591490 on September 25, 1992.
- United States of America (“United States”) trademark SANOFI, registered under No. 4178199 on July 24, 2012.
The Complainant is also the owner of multiple domain names, including:
The above trademarks and domain names were registered prior to the registration of the disputed domain name
The Respondent is a Hyderabad-India based organization registered under the Company Identification Number U24299TG2019PTC131055 as SANOFIL CROP SCIENCE PRIVATE LIMITED. According to the Respondent, it manufactures agrochemicals, pesticides and farming inputs.
5. Parties’ Contentions A. ComplainantThe Complainant argues that it is the rightful owner of the trademark SANOFI, which is a word with no particular meaning and therefore highly distinctive. It has utilized its trademarks for over 40 years in countries worldwide, including in India, where it owns Sanofi India Limited. The disputed domain name
The Complainant argues that the Respondent does not have any rights or legitimate interests in the word SANOFI, which is a well-known trademark and in use in many domain names belonging to the Complainant. The Complainant has never authorized the Respondent to use its trademark. The Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy because the disputed domain name is not used legitimately by the Respondent, but has only been registered to attract Internet users to its webpage. Further undermining any claim that the Respondent is using the disputed domain name in connection with the legitimate sale of products, the Respondent’s webpage does not offer pricing information and merely directs potential consumers to a WhatsApp conversation. The Respondent’s webpage is misleading in that it states “Sanofil Crop Science Pvt. Ltd. is a successful and progressive multi-national corporation” and “a renowned agro-pastoral company”; the Respondent is neither renowned nor a successful multi-national corporation. To the extent the Respondent is engaged in business, its purpose is to obtain indirect commercial gain by representing that its company is a new business line of the Sanofi group related to chemicals and pesticides.
Given the famous and distinctive nature of the SANOFI mark, the Respondent had constructive or actual notice of the existence of the mark. The registration and use of a domain name that incorporates an established trademark of another, without rights or legitimate interests in the domain name, indicates that the Respondent was acting in bad faith.
B. RespondentThe Respondent submitted a late response in the form of a short letter without any attached evidentiary support and without the required certification. According to the Respondent, it manufactures agrochemicals, pesticides and farming inputs. It states that it purchased its domain name per the recommendation of GoDaddy.com. It argues that there has been no breach of trademark law because the SANOFI trademark is registered in a different class of business operations from the Respondent’s business. Additionally, the Respondent asserts that it has legally purchased its domain name and has invested a considerable amount in developing the website to which the disputed domain name resolves.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of evidence in order to obtain transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A Panel may consider a late-filed Response at its discretion. WIPO Notification of Complaint and Commencement of Administrative Proceeding at paragraph 7, (“The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so.”). Here, the Respondent submitted its Response two days late. Although the Respondent did not provide any excuse for its late submission, because the Respondent appears pro se and because the Response was submitted within the four day period that was available for an automatic extension of the deadline for a Response, the Panel exercises its discretion to accept the Response.
A. Identical or Confusingly SimilarThe Complainant has submitted evidence that it owns International, French, and United States registrations for the SANOFI trademark. As such, the Complainant has clearly established that it has rights in the SANOFI trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“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.”).
The Complainant has also demonstrated that the disputed domain name is confusingly similar to the Complainant’s trademarks in that the second level of the disputed domain name,
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate InterestsA complainant has the burden to prove that a respondent lacks rights or legitimate interests in the domain name at issue. This requires the complainant to “prove a negative”, which can be challenging because it requires information that is usually within the exclusive knowledge or control of the respondent. Id., section 2.1. For this reason, “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 relevant evidence demonstrating rights or legitimate interests in the domain name”. Id. In such circumstances, if the respondent fails to come forward with evidence establishing rights or legitimate interests in the disputed domain name, the complainant is deemed to have satisfied this element. Id.
The Complainant has alleged a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It has alleged that it has not given the Respondent permission to use the SANOFI trademark; that the Respondent had constructive and/or actual notice of its trademark prior to its use of the mark; that the Respondent used its mark with the intention to misleadingly divert consumers to its website; and that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain name.
According to paragraph 4(c)(i) of the Policy, a respondent may establish rights or legitimate interests in a domain name if the Panel finds (based on its evaluation of all the evidence presented) the respondent’s “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” before notice to the respondent of the dispute.
The Respondent states that it established its company name “Sanofil Crop Science Pvt. Ltd.” prior to registering the disputed domain name (its website states that the company was incorporated in 2018). It also claims to have invested “a considerable amount” in developing the website to which the domain name resolves. Even if that is true, use of the “Sanofil Crop Science” name cannot be bona fide if it is abusive of the Complainant’s rights, such as if it constitutes trademark infringement or tries to take advantage unfairly of its similarity with the Complainant’s trademark. WIPO Overview 3.0, section 2.15 (“to support a claim to rights or legitimate interests under the UDRP, the use of a disputed domain name must in any event not be abusive of third-party trademark rights.”); On AG, On Clouds GmbH v. Nguyen Luu, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Vuong Hoang, AN NGUYEN, NEO CORP., and Ngoc Tam Nguyen,WIPO Case No. D2021-1714 (use is not bona fide if domain name infringes complainant’s trademark rights).
The Respondent states that it first became aware of registration No. 4178199 of the SANOFI trademark by way of this dispute. The Respondent’s claimed lack of knowledge regarding a single specific trademark registration does not constitute a denial that it had knowledge of the SANOFI brand and of SANOFI trademarks at large. Indeed, any such assertion would be non-credible given the international renown of the SANOFI mark.
The Respondent also argues against a finding of trademark infringement because, it states, it operates in a different class of business operations. However, the Complainant has presented an unrebutted argument that the agrochemical industry lies in a natural zone of expansion from its ongoing operations in the pharmaceutical sector. Moreover, given the fame of the SANOFI mark, the Panel finds that the Respondent’s use of the name SANOFIL in the agrochemical sector infringes the Complainant’s SANOFI trademark for pharmaceuticals and related products and services (or relies on its similarity to take unfair advantage of the SANOFI trademark) for the purposes of the Policy.
Given the history and repute of the Complainant’s trademark, the Panel finds that the Respondent likely had prior knowledge of the SANOFI trademark when it incorporated in 2018 (if that date is accurate) and when it registered the disputed domain name in 2021. The Complainant’s brands and trademarks are internationally known and have been considered to be well-known in many UDRP decisions. See, e.g., Sanofi v. Domain Admin, Whoisprotection.cc / Jose Flora, Waeco mart ltd, WIPO Case No. D2021-1857; Sanofi v. Svetlana Guseva, WIPO Case No. D2019-2815; Sanofi v. Yansheng zhang, GNAME.com PTE. LTD,WIPO Case No. D2021-1751. Therefore, any use of the name “Sanofil Crop Science” in connection with the Respondent’s business, constituted an infringing use of the Complainant’s trademark and cannot be considered bone fide as required by paragraph 4(c)(i) of the Policy.
Accordingly, the Panel concludes that the Complainant has demonstrated by the preponderance of the evidence that the Respondent does not have rights or legitimate interests in respect to the disputed domain name.
C. Registered and Used in Bad FaithThis Panel finds that the Complainant’s trademark is a famous and distinctive mark, and credits its argument that the Respondent was likely aware of the Complainant’s trademark at the time it registered and used the disputed domain name. According to WIPO Overview 3.0, section 3.1.4, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
Bad faith registration and use is also established where the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location”. Policy, paragraph 4(b)(iv). Here, the Respondent is using a domain name that is likely to mislead consumers into believing that the company is an agrochemical branch of the greater Sanofi enterprise. That confusion is reinforced by the statement on the Respondent’s webpage that promotes the company as a “successful and progressive multi-national corporation” who has “extensively researched products for improved performance”. That, however, is not true; in the Respondent’s email to the Center, it states: “we are [a] small company.” Taken at face value, the Respondent’s own words support the argument that the Respondent is in fact a small company attempting to expand its operations by association with the Complainant’s trademark and goodwill.
Accordingly, this Panel finds that the Complainant has established that the Respondent registered and used the disputed domain name in bad faith.
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
David H. Bernstein
Sole Panelist
Date: December 20, 2021