The Complainant is Sanofi, of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Contact Privacy Inc. Customer 124968375 of Toronto, Ontario, Canada / Tanya Severson of Omaha, Nebraska, United States of America (“United States”).
The disputed domain name <sanofipharm.com> is registered with Google Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2016. On December 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2016, 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 December 19, 2016 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 amendment to the Complaint on December 20, 2016.
The Center verified that the Complaint together with the amendment to 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 January 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2017.
The Center appointed Andrea Dawson as the sole panelist in this matter on January 27, 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.
The Complainant is one of the world’s largest pharmaceutical companies. It has branches in over 100 countries on all five continents.
The Complainant offers a wide range of patented pharmaceutical drugs all over the world and has investments of over EUR 5 billion in research and development portfolio.
The Complainant is a multinational company in the pharmaceutical field, which develops, manufactures, distributes and sells a wide range of pharmaceutical products under the trademark and trade name SANOFI.
The Complainant is the owner of numerous trademark registrations for the trademark SANOFI around the world; among others one can mention France (SANOFI trademark registration no. 3831592, dated on May 16, 2011); European Union, and the United States (SANOFI trademark registration no. 4178199, registered on July 24, 2012) (Annexure 8 of the Complaint).
The Complainant controls numerous domain names containing the trademark SANOFI, including <sanofi.com>, <sanofi.net>, <sanofi.info>, <sanofi.org>, <sanofi.mobi> and <sanofi.biz>.
The disputed domain name was registered on December 9, 2016. According to the evidence provided by the Complainant the disputed domain name does not resolve to an active website.
The Complainant asserts that it owns very extensive rights in the SANOFI trademark and that the SANOFI trademark has over the years become one of the world’s most well-known brands in the pharmaceutical field.
The Complainant further asserts that consumers, upon viewing the disputed domain name, are highly likely to expect an association with SANOFI, in particular in light of the similarity of the disputed domain name with the SANOFI trademark, notwithstanding the non-distinctive addition of the term “pharm”.
The Complainant states that the Respondent is not providing a legitimate service through the disputed domain name, that the Respondent has no rights in relation to the disputed domain name, and that the Respondent is not commonly known by the disputed domain name.
Furthermore, SANOFI is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name.
The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate business, nor has it made demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods or services.
The Complainant adds that it may be inferred from the Respondent’s registration of a domain name that is confusingly similar to its well-known SANOFI trademark that the disputed domain name was registered in bad faith. The Complainant adds that it is crystal clear that, given the famous and distinctive nature of the trademark SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s marks at the time of the registration of the disputed domain name, which clearly suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it.
The Complainant inter alia asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established rights to the SANOFI trademarks. The disputed domain name, which combines the Complainant’s trademark with the term “pharm” is confusingly similar to the registered trademarks of the Complainant.
This Panel agrees with the Complainant’s opinion that the addition of the element “pharm”, is not sufficient to avoid the confusing similarity between the disputed domain name and the Complainant’s trademark, but, on the contrary, it may add to the confusion considering that the expression “pharm” is commonly used as a shortened term for pharmaceutical or pharmacy, precisely the field of activities of the Complainant. In addition to the simple fact that the Complainant is the owner of many thousands of domain names and trademarks that are very well-known internationally.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark SANOFI in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard.
The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark.
The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below.
Finally, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.
Furthermore the Panel finds that it is reasonable to conclude that the Respondent had knowledge of the Complainant’s existence and the services it provided, since it cannot be a mere coincidence that not only does the disputed domain name coincide with a registered trademark of the Complainant, but it also includes a term which can easily be confused as the Complainant’s scope of activity.
Consequently, it is fair to conclude that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain name, especially taking into consideration that the Complainant is a worldwide pharmaceutical corporate holding that manufactures and distributes pharmaceutical products among other activities.
Moreover, noting the assertions and documents provided by the Complainant, this Panel considers on the balance of probabilities that the Respondent’s real intention was to hopefully give the impression of being a SANOFI group business and to take advantage of the reputation and goodwill associated with the Complainant’s SANOFI trademark.
Finally, the Panel notes that the disputed domain name does not resolve to an active website. In view of the circumstances of this case, the Panel finds that the Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith use.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <sanofipharm.com> be transferred to the Complainant.
Andrea Dawson
Sole Panelist
Date: January 31, 2017