The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Brian Opliki, United States of America.
The disputed domain name <sanofí.com> (<xn--sanof-3sa.com>) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 20, 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 amended Complaint on September 22, 2021.
The Center verified that the Complaint together with the amended 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 September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Ganna Prokhorova as the sole panelist in this matter on November 2, 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.
The Complainant is a French pharmaceutical company and holder of, inter alia, the French trademark registration for SANOFI no. 1482708 registered on August 11, 1988, the European Union trademark registration for SANOFI no. 004182325 registered on February 9, 2006, and the European Union trademark registration SANOFI no. 000596023 registered on February 1, 1999, hereafter referred to as the “Complainant’s trademarks”.
The Complainant is also the owner of a number of domain names, including <sanofi.com> registered on October 13, 1995.
The disputed domain name <sanofí.com> redirects to the Complainant’s official website at “www.sanofi.com”. The disputed domain name was registered on August 12, 2021.
The Complainant is a multinational pharmaceutical company, ranked as the fourth largest multinational pharmaceutical company by prescription sales. The Complainant is settled in more than 100 countries on all five continents and has 100,000 employees.
The Complainant is the holder of numerous trademarks and domain names, containing the word “Sanofi”. “Sanofi” has no particular meaning and is therefore highly distinctive.
The disputed domain name reproduces – or at least imitates – the Complainant’s trademarks. The dominant part of the disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks, regardless of the addition of an acute accent above the letter “i” at the end of the term “Sanofi”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has neither prior rights nor legitimate interests to justify the use of the Complainant’s well-known trademarks. The Complainant has never licensed or otherwise authorized the Respondent to use the Complainant’s trademarks or to register any domain name including the said trademarks. There is no relationship whatsoever between the Complainant and the Respondent, and the latter has clearly modified the Complainant’s trademarks for its own use and incorporated them into the disputed domain name without the Complainant’s authorization.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name by having clearly not used the disputed domain name in connection with a bona fide offering of goods or services that confers a right or legitimate interest in connection with paragraph 4(c)(i) of the Policy since the disputed domain name is not used by Respondent and simply redirects to the Complainant’s official website “www.sanofi.com”. Consequently, the Respondent has no rights or legitimate interests to justify the use of the SANOFI trademarks in the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Given the famous and distinctive nature of the Complainant’s trademarks, the Respondent is likely to have had, constructive, if not actual notice, as to the existence of the Complainant’s trademarks at the time of registration of the disputed domain name. The disputed domain name has been 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 trademarks and the disputed domain name.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
To succeed, in a UDRP complaint, a complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
The Complainant has demonstrated ownership of its SANOFI trademarks in multiple jurisdictions. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the SANOFI trademarks. The Panel also holds an opinion that the SANOFI trademarks do not have any particular meaning and are therefore highly distinctive.
The disputed domain name is confusingly similar to the Complainant’s trademarks, as it is an intentional misspelling of “Sanofi” with a high degree of resemblance with “Sanofi” since the difference is limited to the addition of an acute accent above the letter “i” at the end of the term “Sanofi”, and regardless of the generic-Top-Level Domain (“gTLD”) extension “.com”.
Under this Panel’s view, from a phonetic and typographical point of view, the adjunction of the accent above the letter “i” in “Sanofi” must be considered as merely insignificant as the Complainant’s trademarks are recognizable in the disputed domain name. The Panel finds that the disputed domain name is also almost virtually and phonetically identical to the Complainant’s trademarks. The Respondent’s conduct constitutes a clear case of typosquatting, which could not avoid a finding of confusing similarity between the disputed domain name and the SANOFI trademarks. Moreover, the first visual impression caused by the disputed domain name is the same of the Complainant’s official domain name <sanofi.com>.
As decided in previous UDRP decisions, the practice of typosquatting creates domain names that are confusingly similar to a relevant trademark, as has occurred in this case. See section 1.9 of the WIPO Overview 3.0.
As an addition of the suffixes such as “.com” being the gTLD is generally disregarded under the first element, the Panel accordingly holds that the disputed domain name is confusingly similar to the Complainant’s trademark SANOFI.
Therefore, the Panel considers the requirements of the first element of paragraph 4(a)(i) of the Policy to be satisfied.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, noting the facts and contentions listed above, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests, so the burden of production shifts to the Respondent.
As the Respondent has not replied to the Complainant’s contentions, that burden has not been discharged, and the Panel has considered the Complainant’s prima facie case to be sufficient to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, it should be established that the disputed domain name has been registered and is being used in bad faith.
In the present case, the Panel came to the conclusion that, given the famous and distinctive nature of the trademark SANOFI, and particularly the disputed domain name redirects to the Complainant’s official website, the Respondent knew or should have known of the Complainant’s trademarks at the time he registered the disputed domain name. Therefore, it can only be found that the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name. This knowledge characterizes the Respondent’s bad faith in registering the disputed domain name.
Furthermore, the Panel has found that the disputed domain name has been registered for the purpose of attracting Internet users by creating a likelihood of confusion – or at least an impression of association – between the SANOFI trademarks and the disputed domain name.
As it was sufficiently proved by the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name by having clearly not used the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name is not used by the Respondent and simply redirects to the Complainant’s official website at “www.sanofi.com”.
Furthermore, it is regularly held that the use of a domain name as a redirection to the Complainant’s official websites can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See, for example, Groupe Auchan v. Slawomir Cynkar, WIPO Case No. D2009-0314; and section 3.1.4 of the WIPO Overview 3.0.
Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
In light of the above facts and reasons, the Panel therefore determines that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the condition set out in paragraph 4(a)(iii) 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 <sanofí.com> (<xn--sanof-3sa.com>) be transferred to the Complainant.
Ganna Prokhorova
Sole Panelist
Date: November 16, 2021