The Complainant is Sanofi of Paris, France, represented by Selarl Marchais, France.
The Respondent is Joseph Donovan of Coos Bay, Oregon, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Name. On May 27, 2013, GoD, LLC transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on May 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2013. The Response was filed with the Center on June 17, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 21, 2013. 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
The Complainant is a multinational pharmaceutical company headquartered in Paris, France.
The Respondent is a private individual resident in Coos Bay, Oregon, United States.
The Complainant is the owner of trademark registrations in numerous jurisdictions for the mark SANOFI, including French, Community, Colombian and International trademarks, as described in more detail below.
The Domain Name was registered on January 27, 2013.
At the date of the Center’s formal compliance review, June 17, 2013, the Domain Name resolved to a website stating: “Sorry! This site is not currently available.” 5. Parties’ Contentions A. Complainant
The Complainant states that it is the world’s fourth largest multinational pharmaceutical company by prescription sales. It was known as Sanofi-Aventis from 2004 and changed its name to Sanofi in 2011. It has facilities in over 100 countries on all five continents throughout the world, employing over 100,000 people. Its consolidated net sales for 2012 were EUR 34.9 billion. The Complainant provides evidence of its operations and the scale of its activities referred to above.
The Complainant submits evidence of its trademark registrations comprising or including the mark SANOFI including French, Community, International and (in view of the country code Top-Level Domain (ccTLD) of the Domain Name) Colombian trademarks. These include:
- French trademark number 96655339 for SANOFI registered on December 11, 1996 in numerous classes, for goods and services including pharmaceutical products.
- Community Trade Mark number 004182325 for SANOFI filed on December 8, 2004 and registered in numerous classes, for goods and services including pharmaceutical products.
- International trademark number 674936 for SANOFI registered on June 11, 1997 in International Classes 03 and 05, for goods and services including pharmaceutical products, and designating numerous countries throughout the world.
- Colombian trademark number 366054 for SANOFI filed on August 24, 1992 and registered in International Class 03, for goods and services including pharmaceutical products.
The Complainant also provides evidence that it is the owner of numerous domain name registrations including the term “sanofi”, including , and .
The Complainant submits that its mark SANOFI has been recognized by numerous UDRP panels to have the status of a well-known trademark and provides case citations in that regard, e.g., Sanofi v. PrivacyP / ICS INC., WIPO Case No. D2012-1293.
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy). Ignoring the suffix “.co”, which should be disregarded, the Domain Name is identical to the Complainant’s SANOFI mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy). The term “sanofi” has no particular meaning other than to refer to the Complainant. The Domain Name has no connection with the Respondent’s own name, Joseph Donovan. The Complainant has never licensed or permitted the Respondent to use its trademark or to register the Domain Name and there is no relationship between the parties. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, or at all.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant repeats its submission that the Respondent has no rights or legitimate interests in the registration or use of the Domain Name, which reflects the Complainant’s distinctive trademark. The Complainant states that the Domain Name has clearly been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the Domain Name and the Complainant’s trademark. Furthermore, the fact that the Complainant’s trademark has “well-known” status is sufficient of itself to support a finding of bad faith on the basis that the Respondent knew or should have known of the Complainant’s trademark and business (see, e.g., NBC Universal Inc. v. S / Michele Dinoia,WIPO Case No. D2007-0077). The Complainant adds that the Respondent’s choice of the “.co” suffix is unlikely to be coincidental: it is suggestive of “company” and “.com” and adds to the confusion caused by the Domain Name.
The Complainant submits that it makes no difference that the Domain Name is a “passive holding” and has not been used for the purpose of any active website (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Complainant argues that bad faith may be inferred in the case of a passive holding where the Respondent has offered no explanation for the choice of the Domain Name and there is no legitimate use to which the Respondent could put the Domain Name. Finally, the Complainant submits that anyone mistakenly accessing the Respondent’s website might believe that the Complainant was not on the Internet or that it was out of business.
The Complainant seeks a transfer of the Domain Name. B. Respondent
The Respondent states that the Complainant could itself have registered the Domain Name at any time in the two years from 2011 up to the date of the Respondent’s own registration, but chose not to do so.
The Respondent states that the Domain Name is “generic” (no further explanation or evidence is provided in support of this assertion).
The Respondent states that the current, undeveloped, use of the Domain Name is incapable of causing confusion and that the same will be true of any future use otherwise than in connection with pharmaceuticals. The Respondent has no wish to use the Domain Name in connection with pharmaceuticals or to attract “random pharmacy type people” to his website.
The Respondent denies that the Complainant’s mark SANOFI is as well-known as the Complainant states. This is certainly not the case in the Respondent’s town of 30,000 people and the name was unknown to the Respondent’s local pharmacist.
The Respondent disputes the significance of the fact that the Domain Name bears no resemblance to the Respondent’s own name. The same is true of all but one of over another 100 domain names that he owns.
The Respondent states that he owns domain names as a part-time hobby and that it has taken him many years to develop a number of them. The fact that he had not yet developed the Domain Name within five months of registering it is not an indication of bad faith on his part.
Finally, the Respondent dismisses as “delusional” the Complainant’s suggestion that Internet users may believe the Complainant to be out of business because of the Respondent’s use of the Domain Name. This is no more than a ploy on behalf of the Complainant to acquire the Domain Name. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of trademark registrations for the mark SANOFI in numerous jurisdictions worldwide in connection with pharmaceutical products in particular. The Domain Name is identical to the Complainant’s mark SANOFI but for the suffix “.co”, which the Panel accepts is to be disregarded for the purposes of the present test. Accordingly, the Complainant has established that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the evidence of the Complainant, based not least on the nature and scale of its operations worldwide under the name and mark SANOFI, that its trademark is well-known throughout the world in connection with pharmaceutical products.
The Panel also has regard to the fact the Domain Name comprises the Complainant’s mark SANOFI with no adornment other than the ccTLD “.co”. The Panel accepts that this ccTLD is itself liable to be confused with (or mistyped as) the generic Top-Level Domain (gTLD) “.com” or to be suggestive of a “company” second-level domain, e.g., “.”.
The Panel accepts that the Complainant has no relationship with the Respondent and did not license or authorize him to register or use the Domain Name or otherwise to make use of the Complainant’s SANOFI trademark.
The matters referred to above give rise to a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. It is open to the Respondent to rebut that prima facie case by reference to any of the matters set out in paragraph 4(c) of the Policy or otherwise.
The fact that the Complainant could have, but did not, register the Domain Name before the Respondent did so is not a relevant consideration in this regard. Nor does the mere fact of registration of the Domain Name of itself confer rights or legitimate interests in it.
The Respondent submits that the Domain Name is “generic”. However, he provides no evidence in support of this assertion, e.g., a dictionary definition of the term “sanofi” or any evidence of any use of the term by any party other than the Complainant. The Panel therefore rejects this submission and finds, on the contrary, that the term “sanofi” has no meaning in the perception of the general public other than to refer to the Complainant and its products.
The Respondent states that he has a portfolio of domain names which are developed at different times and that he intends to develop the Domain Name, for a use otherwise than in connection with pharmaceuticals, at some point in the future. The Panel considers these assertions to be far too vague to establish any use, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services for the purposes of paragraph 4(c) of the Policy.
Furthermore, in view of the fact that the Domain Name consists of the Complainant’s well-known trademark without any adornment other than the ccTLD “.co”, and the fact that term “sanofi” has no meaning other than to refer to the Complainant and its products, the Panel is not persuaded that there is any use to which the Respondent could legitimately put the Domain Name.
In the circumstances, the Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
A number of the considerations that relate to “rights or legitimate interests” are also relevant to the issue of bad faith.
In particular, the Panel has found that the Domain Name comprises, in an unadorned form, the Complainant’s well-known trademark SANOFI, which has no meaning other than to refer to the Complainant and its products.
While the Respondent has had an opportunity to explain its choice of the Domain Name, it has provided no explanation for this choice other than the flawed assertion that the name is “generic”. Furthermore, while the Respondent denies that the Complainant’s mark is as well-known as the Complainant contends, he does not claim that he was personally unaware of the Complainant’s trademark at the date of registration of the Domain Name (and indeed the Panel would find that any such assertion lacked credibility). In the circumstances, the Panel infers that the Respondent chose and registered the Domain Name in the knowledge of the Complainant’s rights in the trademark SANOFI.
While the Domain Name has not been used for the purpose of an active website, this does not of itself prevent a finding of use in bad faith: see paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Panel must assess the issue of bad faith from the circumstances of the case overall. The Panel accepts the Respondent’s submission that anyone reaching his “undeveloped” website would be unlikely to be confused into thinking it was owned by or associated with the Complainant. The Panel also agrees with the Respondent that it is fanciful to think that anyone reaching the Respondent’s website would think the Complainant had no Internet presence or had gone out of business. However, in the view of the Panel the use of the Complainant’s unadorned trademark for the purposes of the Domain Name gives rise to, at least “initial interest confusion”, such that any Internet user would be highly likely to assume that the Domain Name is owned by or associated with the Complainant. The effect of this is to take unfair advantage of the Complainant’s goodwill in its trademark.
In addition, the Panel has found no evidence of any use to which the Domain Name could legitimately be put by the Respondent.
In the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4.a of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: June 25, 2013
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