WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Giovanni Laporta

Case No. D2014-1145

1. The Parties

Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.

Respondent is Giovanni Laporta of Dunsatble, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name And Registrar

The disputed domain name <sanofi.email> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 Respondent of the Complaint, and the proceeding commenced on July 8, 2014. On July 21, 2014, Respondent requested an extension of time in which to file a response. The extended due date for response was August 4, 2014. The Response was filed with the Center on August 4, 2014.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on August 22, 2014. 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.

On September 5, 2014, Respondent submitted an unsolicited supplemental filing to the Center. The Panel finds this filing untimely (particularly in light of the extended response due date) and will not consider it in rendering this decision.

4. Factual Background

Complainant is the fourth largest pharmaceutical company in the world, with sales of EUR 34.94 billion in 2012 and EUR 32.95 billion in 2013. It is located in more than 100 countries and employs over 110,000 people. Its prescription drugs treat patients with serious diseases in several therapeutic areas, such as cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.

Complainant is the owner of numerous worldwide trademarks that include the distinctive word SANOFI, and has used the SANOFI trademark for over forty years. It also owns various domain names that contain SANOFI with various generic Top-Level Domain (“gTLD”) extensions. Complainant’s trademarks and domain names were all registered before Respondent’s registration of the disputed domain name.

The disputed domain name was registered on April 25, 2014.

Respondent states that he has registered over 4,000 domain names with the intention of developing a delivery and receipt email verification service. The technical aspects of the service are still being developed.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the SANOFI trademark. Complainant contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of the SANOFI mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the gTLD “.email.” Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that he registered and uses the disputed domain name in bad faith.

B. Respondent

Respondent alleges that he intends to develop a verified sending/receipt email service, and for that purpose has registered brand names on the “.email” gTLD, and that the “brand.email” would be invisible to any consumer using the service. Because the brand.email would be invisible to consumers, he alleges that there is no confusion with Complainant’s marks. He further alleges that he registered the brands in good faith in the “.email” gTLD solely for “a legitimate business purpose”, the development of his email service. He also alleges that because he is still developing the business model and back-end technology, he is not using Complainant’s mark at all, let alone in bad faith, and that this Complaint is based on supposition and is premature. He also seems to assert that because he is “not using the domain name in any trademark way” that he cannot be in violation of the Policy.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

As set forth above, Complainant is the fourth largest pharmaceutical company in the world, with sales in billions of euros, and sales in over 100 countries. Complainant is the owner of numerous worldwide trademarks that include the distinctive word SANOFI, and has used the SANOFI trademark for over forty years. It also owns numerous domain names that contain SANOFI with various gTLD extensions. Complainant therefore has shown that it has rights in the SANOFI mark. Moreover, Respondent admits that “the Complainant appears to have trademark rights”.

The disputed domain name is identical to Complainant’s SANOFI mark. It contains Complainant’s distinctive SANOFI mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of gTLD “.email”. Previous UDRP panels have held that the addition of a gTLD extension typically does not distinguish a domain name from a complainant’s mark.

Respondent alleges that because the disputed domain name would be invisible to consumers, there is no confusion with Complainant’s marks. He also states that he “did not intend and has not to date used any branded domain as a trademark”. Respondent’s arguments are specious. As the first element serves as a low threshold standing requirement under the Policy, it is enough to show that the disputed domain name is identical to Complainant’s mark.

Complainant therefore has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has exclusive rights in the SANOFI mark and has not authorized Respondent to register and use the disputed domain name. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the SANOFI mark. Respondent is not known under the mark.

Respondent seems to base his claim that he has a legitimate interest in the disputed domain name because he has a “legitimate business purpose” – namely, to develop an email delivery/receipt verification service – and because he has spent approximately USD170,000 on buying 4,000 domain names and starting up his venture. This Panel need not make a finding as to whether Respondent’s overall business purpose – to develop an email delivery/receipt verification service – would be legitimate or not. Nevertheless, Respondent must come forward with evidence to rebut Complainant’s prima facie claim that it lacks rights or legitimate interests in the domain name. However, as several other panels have recently held, this Respondent has not “explain[ed] or justify[ed] why the Respondent actually has to register and own the disputed domain names for this purpose”. The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. DomainManager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825, citing Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, WIPO Case No. D2014-0730.

The Panel therefore finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

It is difficult to conceive that Respondent did not know of Complainant’s mark and various other brand owner’s marks when Respondent registered the disputed domain name; indeed, his proposed business plans undeniably presume awareness of each domain name he has registered and the brand to which it corresponds. As set forth above, Complainant’s SANOFI mark is protected by various international trademark registrations. This Panel concludes that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.

Paragraph 4(b) of the Policy enumerates various circumstances that shall be evidence of the registration and use of a domain name in bad faith. In this case, paragraph 4(b)(ii) applies:

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.

By registering the disputed domain name, Respondent has prevented Complainant from registering a domain name containing its SANOFI mark in the “.email” gTLD. Respondent alleges that it is premature and speculative to bring this UDRP Complaint because he has not yet begun his business and is not yet using the disputed domain name, let alone using it in bad faith. However, in this and previous UDRP decisions concerning this Respondent, he indicated once the business is up and running, it necessarily will utilize the disputed domain name to further his business venture without authorization from Complainant This prevents Complainant’s ability to use its mark in a domain name in the “.email” gTLD, in violation of paragraph 4(b).

Respondent clearly has engaged in a pattern of such conduct. By his own admission, he has registered approximately 4,000 domain names, which he intends to use to operate his email verification service. He also admits that he “registered a number of brand names on the ‘.email’ gTLD”. Indeed, there already have been several UDRP decisions against Respondent for using other brands as part of an “.email” domain name. See Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686; Arla Foods amba v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0724; Mejeriforeningen Danish Dairy Board v. Domain Manager, Yoyo.email, supra; NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd, WIPO Case No. D2014-0770; The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, supra. The Panel in Royal Bank of Scotland also found that Respondent has engaged in a pattern of such conduct.

Furthermore, circumstances demonstrating registration and use in bad faith are not limited to those specifically set forth in paragraph 4(b).

Respondent argues that he is not using the disputed domain name in bad faith because he is establishing a legitimate business venture whose purpose is to certify delivery and receipt of emails. He criticizes previous panels that allegedly concluded that Respondent acted in bad faith. As set forth above, this Panel need not make a determination as to whether Respondent’s business purpose is bona fide. However, Respondent fails to recognize that though his concept for a business may be legitimate, he cannot build his business on the back of another’s rights. Such registration and use of this domain name and thousands of others which include other brands indicate bad faith as intended under the Policy. The way he explains his business, he would not have a business [with respect to confirming email to Sanofi] if he did not utilize the disputed domain name containing Complainant’s trademark. Whether or not his customers see the back-room features, he is exploiting Complainant’s mark for a commercial purpose. This also violates paragraph 4(b) of the Policy.

7. Decision

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 <sanofi.email> be transferred to Complainant.

Sandra A. Sellers
Sole Panelist
Date: September 5, 2014