The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Rohit Chawla, India, self-represented.
The disputed domain name <fanofi.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2019, 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 October 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Response was filed with the Center on November 16, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on November 27, 2019. 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.
The Complainant, which trades under the name “Sanofi”, is a French multinational pharmaceutical company employing some 100,000 people in more than 100 countries. In 2018, its sales were approximately EUR 34 billion.
The Complainant owns many trade marks for SANOFI including French trade mark No. 1482708, registered on August 11, 1988, in classes 1, 3, 4, 5, 10, 16, 25, 28 and 31.
The disputed domain name was registered on July 2, 2019.
As of October 9, 2019, the disputed domain name resolved to a GoDaddy parking page.
The Complainant sent a legal letter by email to the Respondent on July 15, 2019. There was no response.
The following is a summary of the Complainant’s contentions.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The only difference between the disputed domain name and the Complainant’s highly distinctive trade mark is the deliberate misspelling of the Complainant’s trade mark by substituting “s” for “f”. These letters are in close proximity on a computer keyboard.
The disputed domain name is almost identical to the Complainant’s trade mark phonetically. This cannot be a coincidence.
It is also relevant that many UDRP panels have found that the Complainant’s trade marks are well-known in many jurisdictions.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has never authorised the Respondent to use its trade marks.
The disputed domain name does not correspond to the Respondent’s name.
The Respondent is not making legitimate noncommercial or fair use of the domain name. Nor is he using it in connection with a bona fide offering of goods or services.
The disputed domain name was registered and is being used in bad faith.
UDRP panels have regularly found that domain names similar to the Complainant’s trade marks constitute opportunistic bad faith.
Given its worldwide fame, and the distinctive nature of the Complainant’s mark, the Respondent is likely to have had constructive, if not actual, notice of the Complainant’s mark at the time of registration of the disputed domain name. Therefore, the Respondent acted with opportunistic bad faith in registering the disputed domain name.
The disputed domain name has been registered to attract Internet users by creating a likelihood of confusion with the Complainant’s trade marks.
The Complainant’s trade marks are frequently the subject of cybersquatting.
The disputed domain name constitutes a passive holding in bad faith.
The Respondent’s failure to deny bad faith or to explain its purpose in registering the disputed domain name in response to the Complainant’s letter is further evidence of bad faith.
The Respondent’s lack of active use of the disputed domain name, which is similar to the Complainant’s own domain names, is likely to damage the Complainant’s goodwill because it may lead Internet users to believe that the Complainant does not have an Internet presence or has gone out of business.
The following is a summary of the Respondent’s contentions.
The disputed domain name is not confusingly similar to the Complainant’s trade mark.
The Respondent did not select the disputed domain name as a deliberate misspelling of the Complainant’s name.
The words “Fanofi” and “Sanofi” are phonetically very different as they start with a “ph” sound and a “se” sound respectively.
The words are visually different also – as they start with the letters “f” and “s” respectively.
The Respondent possesses rights or legitimate interests in the disputed domain name, which was not registered and used in bad faith.
The Respondent registered the disputed domain name to launch a portal to connect fans with “much loved Celebrities (like movie stars, sports persons etc)”.
The project is in a conceptual stage and no more details can be divulged as of now. “It is none of the complainant’s business to when, how and in what manner our domain will function.”
The name comprised in the disputed domain name was chosen after much thinking and deliberation. The Respondent had in mind that it should be catchy, distinctiveness and relevant to the main purpose of the portal. The term “fan” in the disputed domain name comes from the word “fans”, i.e. of celebrities.
To protect its intellectual property, the Respondent registered the similar domain name <fanofy.com> on the same date as the disputed domain name.
The Respondent has no intention of hurting the Complainant’s business interests in India or anywhere else in the word.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the mark SANOFI by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive and worldwide use of that name.
The Respondent disputes that the disputed domain name is confusingly similar to the Complainant’s trade mark on the grounds that the terms “Sanofi” and “Fanofi” are phonetically and visually distinct.
However, in the Panel’s view, while the terms are not phonetically identical, they are indeed phonetically similar. Only the first consonants differ. The Panel also considers that the terms are visually similar.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name.
Bearing these factors in mind, and in particular that the first element is a relatively low threshold test, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
The Respondent’s mere assertion that he registered the disputed domain name for the purpose of a future fan-related portal does not constitute “demonstrable preparations” – in the absence of any credible, pre-complaint supporting evidence. See section 2.2 of WIPO Overview 3.0.
In the Panel’s view, the fact that the Respondent registered the similar domain name <fanofy.com> on the same date as the disputed domain name does not of itself constitute evidence of preparations to use the disputed domain name for the purpose claimed. What is lacking here is any credible dated evidence – for example correspondence with a web developer, professional adviser or other relevant third party – which specifically supports the Respondent’s claim that he registered the disputed domain name for a proposed fan portal.
Furthermore, there is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith:
1. The Complainant’s trademark is distinctive and famous.
2. The Respondent does not deny that he was aware of the Complainant at the time of registration of the disputed domain name, although the Respondent claims to have registered it for a reason not connected with the Complainant.
3. The Respondent does not explain why he failed to respond to the Complainant’s pre-action communication, which he does not dispute receiving, and thereby take the opportunity to explain his alleged purpose in registering the disputed domain name. If the Respondent genuinely intended to use the disputed domain name for a legitimate project unrelated to the Complainant, one might have expected him to have wanted to alert the Complainant immediately after being confronted with the Complainant’s letter accusing him of infringing its rights.
4. As mentioned in section 6B, the Respondent has produced no evidence of demonstrable preparations to use the disputed domain name for the Respondent’s claimed purpose, namely to connect fans with celebrities such as movie stars and sports personalities
5. Indeed, the Respondent has specifically declined to provide any details about how his proposed portal would work, stating that this was none of the Complainant’s business. If the Respondent wished to convince the Panel that the disputed domain name was registered for a genuine venture, albeit one at a “conceptual stage”, the Respondent ought at the very least to have provided more detailed information about how his proposed portal would operate.
Accordingly, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <fanofi.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: December 11, 2019