The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Name Redacted.1
The disputed domain name <san0fi.com> is registered with 1&1 Internet SE (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2017. On February 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2017. A communication from the named Respondent was received by the Center on February 20, 2017. No formal Response has been submitted. The Center notified the Parties the commencement of the Panel Appointment process on March 6, 2017.
The Center appointed J. Nelson Landry as the sole panelist in this matter on March 14, 2017. 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.
Sanofi is a French multinational pharmaceutical company ranking fourth world’s largest pharmaceutical company by research, development and prescription of pharmaceutical products. The Complainant is settled in more than 100 countries on all continents employing 110,000 people. In 2015, it invested over EUR 5 billion in research and development and its net sales were of EUR 39 billion in that year. It is a leading pharmaceutical company in seven major therapeutic areas namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines.
The Complainant is the owner of numerous SANOFI trademarks under four groups, SANOFI (+device), SANOFI, sanofi and sanofi (+device). First, each are registered in France, the earliest one being French Trademark No.1482708, SANOFI (registered on August 11, 1998 in international classes 1, 3, 4, 5, 10, 16, 25, 28 and 31); second, SANOFI, three are registered in European Union, the first since 1997; third, each of the four are registered as an International trademark, the first one on September 25, 1992; then SANOFI was registered on July 24, 2012, in the United States of America, the country of residence of the Respondent (herein the “SANOFI Trademarks”).
Furthermore, the Complainant has registered and is the owner of 11 different domain names, all comprised of the term “sanofi” and a Top-Level Domain (“TLD”), including <sanofi.com> being the first registered on October 13, 1995, <sanofi.us>, registered on May 16, 2002, and <sanofi.tel> the most recent in March 2011.
The disputed domain name was registered on February 7, 2017. The disputed domain name resolves to a parking page showing various sponsored links.
On February 20, 2017, the individual listed in the WhoIs as the registrant of the disputed domain name sent an email communication to the Center wherein he mentioned that he had received written notice of the administrative proceeding by courier, and stated that the name, address and telephone number of the registrant were his but that he did not work for the registrant organization listed in the WhoIs, nor did he have any knowledge of that company. The sender stated that the email address therein was not his and that he never received by email a copy of the Complaint.
In an elaborate and detailed Complaint, in addition to factual information comprising numerous references and citations of previous UDRP decisions, the Complainant has indicated its experience in respect of at least 30 domain name disputes in respect of domain names identical or confusingly similar to its SANOFI Trademarks during the period from 2010 to 2016, with 10 cases in the last year.
The Complainant states that it has several SANOFI Trademarks registered in various jurisdictions. It furthermore represents that the disputed domain name, wherein the term SANOFI is present except in respect of the substitution of the number “0” for the letter “o” to become <san0fi.com>, is confusingly similar to its SANOFI Trademark, citing Sanofi v. Ojet Ohbrain, WIPO Case No. D2016-1053. This kind of alteration and purposeful misspelling without altering its pronunciation reading as the letter “o” in upper case in the Complainant’s Trademarks has been considered before and the Complainant submits that in the present case the disputed domain name involves an obvious misspelling of the Complainant’s well-known SANOFI Trademarks.
The Complainant represents that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Complainant further contends the absence of any rights or legitimate interests in the disputed domain name as the registrant name does not bear any resemblance with the term “sanofi” in the SANOFI Trademarks of the Complainant, said term being inventive and not having a particular meaning is therefore highly distinctive of the Complainant’s company and pharmaceutical activities.
The Complainant states that it has never licensed or otherwise authorized the Respondent to use any of its SANOFI Trademarks or domain names to register the disputed domain name or any domain names including any of its SANOFI Trademarks. The Complainant further represents that there is no relationship between the Complainant and the Respondent and that the later has clearly modified the Complainant’s SANOFI Trademark without the authorization of the Complainant.
The Complainant submits that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services and cannot claim rights or legitimate interests therein since the website at the address of the disputed domain name is leading the visitor to a parking website and was registered only for the purposes of attracting Internet users into clicking to the sponsored links involving potential commercial transaction.
The Complainant submits that the disputed domain name was registered and is being used in bad faith in particular on the basis of previous UDRP decisions which recognized opportunistic bad faith where the disputed domain name appears confusingly similar to the Complainant’s well-known SANOFI Trademarks.
The Complainant quotes from the decision of MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412, wherein the panel stated: “There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that trademark is itself sufficient evidence of bad faith registration and use.” The Complainant, as the panel quoted, represents that its Trademarks are well-known trademarks and that the Respondent had both constructive and actual knowledge of Complainant’s Trademarks and nevertheless chose to exploit them and the goodwill associated with them.
The Complainant further contends that there is absence of any prior rights or legitimate interests to justify the use of its well-known SANOFI Trademarks and similar domain names, said absence of legitimate interests induces the absence of good faith upon registration of the disputed domain name by the Respondent. Furthermore, the Respondent acted with opportunistic bad faith in having registered the disputed domain name in order to make an illegitimate use of it and finally, that the disputed domain name was registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion or at least an impression of association between the Complainant’s SANOFI Trademarks and its domain names, on the one hand, and the disputed domain name on the other.
Finally, the Complainant submits that the disputed domain name is being used in bad faith since by reason of its well-known SANOFI Trademarks, the Respondent had constructive notice if not actual awareness of the said SANOFI Trademarks when it registered the disputed domain name, thereby acting with opportunistic bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has clearly shown that it is the owner of the registered SANOFI Trademarks.
The disputed domain name is nearly identical to the SANOFI Trademarks, with a minor difference in the substitution of the number “0” for the letter “o”. As mentioned by the Complainant citing the panel in Microsoft Corporation v. X-Obx Designs, WIPO Case No. D2003-0093, “typographical error variations and misspellings of trademarked terms have long been found to be confusingly similar.” The Panel observes that visually the disputed domain name is so close to the Complainant’s SANOFI Trademarks that confusion is inevitable between them.
The Panel therefore concludes that the disputed domain name is confusingly similar to the SANOFI Trademarks of the Complainant.
The first criterion has been met.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by producing evidence of its rights or legitimate interests.
The Complainant has presented its prima facie case that the Respondent is not known under the term “san0fi”, that the Complainant has no other business relationship with the Respondent, and finally, that the Complainant has not authorized or licensed the Respondent to use any of its SANOFI Trademarks or domain names, nor to register the disputed domain name.
In this regard, the Panel notes that the Respondent appears to have provided incorrect WhoIs information and falsely identified itself, in using another person’s name, address and telephone number when registering the disputed domain name.
The Panel determines that the Complainant has discharged its burden of a prima facie case, and the Respondent has failed to rebut it.
In view of the above the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The second criterion has been met
The Panel finds that the registration of the disputed domain name was made in bad faith, confirmed by the absence of any response by the Respondent and any attempt at justifying good faith in its course of conduct and thus engaged in a pattern of cybersquatting, which also supports a finding of registration in bad faith.
Although it was not known by the Complainant when the Complainant submitted its Complaint to the Center, the evidence indicates that the registration of the disputed domain name was made in using the identity, address and telephone number of a person without any authorization to do so. Such circumstances lead the Panel to conclude that the disputed domain name was registered in bad faith.
The Panel finds that the unauthorized use of the disputed domain name in association with a parking website and promotion of commercial activities for profit is further evidence of bad faith behavior by the Respondent within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the disputed domain name was registered and is being used in bad faith.
The third criterion has been met.
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 <san0fi.com> be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Date: March 24, 2017
1 The Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.