The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Alessandro Stefani of Barga, Lucca, Italy, self-represented.
The disputed domain names <sanofi.blog> and <sanofi.cloud> are registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2017. On August 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 18, 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 August 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2017. The Response was filed with the Center on August 29, 2017. The Center sent an email regarding possible settlement to the Parties on August 30, 2017. The Complainant’s representative on the same day inquired whether the Respondent would transfer the disputed domain name to the Complainant at no cost. On August 31, 2017, the Respondent by email advised the Center the Complainant’s request was not acceptable. Thereafter, on September 1, 2017, the Complainant submitted a supplemental filing regarding the website to which disputed domain name <sanofi.blog> resolved. The Center informed the Parties of the commencement of panel appointment process on September 15, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on September 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 a pharmaceutical company headquartered in Paris, France. The Complainant has a strong international presence and employees in numerous countries around the world. The Complainant is the owner of a number of trademark registrations for SANOFI in France, the earliest being registration No. 1482708, registered on August 11, 1988. The Complainant also owns trademark registrations for SANOFI in the European Union and the United States of America (“United States”), together with International trademarks designated in numerous jurisdictions, including Australia, Switzerland, Romania, Russian Federation, Ukraine, Japan, Republic of Korea, China, and Cuba. The Complainant also has registered numerous domain names incorporating the SANOFI mark, most of which are used in connection with the Complainant’s business.
The Respondent registered the disputed domain names <sanofi.blog> and <sanofi.cloud> on June 27, 2017, according to the concerned Registrar’s WhoIs records. On July 2, 2017, the Complainant sent a cease and desist notice by email to the Respondent, requesting the transfer of the disputed domain names, but received no reply. Subsequently, the Complainant’s representative on August 30, 2017, contacted the Respondent to inquire whether the Respondent would agree to transfer the disputed domain names to Sanofi “at no cost.” The Respondent on August 31, 2017 replied: “What do you mean ‘at no cost?’ Do you pretend that I give you all for free? I payed [sic] and if you want them you have in case to Buy.”
As of August 25, 2017, the date upon which the Respondent received notification of the Complaint, the disputed domain names resolved to a parking page. At some point after that, the Respondent linked the disputed domain name <sanofi.blog> to a web page at “www.sanofi.blog”, and redirected the disputed domain name <sanofi.cloud> to the “www.sanofi.blog” page.
The Complainant explains it was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. The Complainant notes that it is the fourth largest multinational pharmaceutical company in the world by prescription sales, with consolidated sales of EUR 33.82 billion in 2016, EUR 34.06 billion in 2015, and EUR 31.38 billion in 2014, and with a presence in more than 100 countries, employing 100,000 people. According to the Complainant, prior UDRP panels in more than 30 cases have considered the Complainant’s SANOFI mark to be a well-known mark.
The Complainant submits that the disputed domain names are identical and confusingly similar to its SANOFI mark. The Complainant maintains that the SANOFI mark is highly distinctive, and that when the Top-Level Domains (“TLD”) “.blog” and “.cloud” are excluded the disputed domain names are virtually identical to the Complainant’s mark. The Complainant asserts that the TLD typically is ignored when assessing confusing similarity, and does not serve to distinguish the disputed domain names from the Complainant’s mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s SANOFI mark, and that the Respondent has not been commonly known by the disputed domain names. The Complaint further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, nor using the disputed domain names in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith. Given the famous and distinctive nature of the SANOFI mark, the Complainant maintains that the Respondent had actual knowledge of the Complainant’s mark when registering the disputed domain names, and acted with opportunistic bad faith intent to exploit and profit from the Complainant’s trademark. The Complainant asserts in the circumstances of this case that the Respondent’s initial passive holding of the disputed domain names constitutes bad faith, and that the Respondent’s subsequent redirecting of the disputed domain names to the “www.sanofi.blog” website following the submission of the Complainant constitutes bad faith use of the disputed domain names.
The Respondent states that he acquired the disputed domain names because they were available and suitable for an Internet project he intended to develop. According to the Respondent, “SANOFI” is an acronym and nothing more. The Respondent disputes that the Complainant was not known to him when he registered the disputed domain names, and submits that the Complainant is not generally known to the public. The Respondent contends that if the Complainant did not see a need to register SANOFI in the TLDs “.blog” and “.cloud”, then the Complainant should have no right to prevent others from doing so.
The Respondent submits that he is willing to relinquish the disputed domain names if the “.blog” and “.cloud” domains are so important to the Complainant, but it should be understood that if a brand owner has total rights over all domain names that reflect its brand, even those the brand owner does not find useful to have, the “castle on which democracy on the Web is founded is demolished.” According to the Respondent, the Complainant’s decision regarding the disputed domain names will be of little importance to him, but is extremely important for the future, and the Respondent believes that the resulting media exposure will be just as significant.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain names <sanofi.blog> and <sanofi.cloud> are identical to the SANOFI mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the SANOFI mark is clearly recognizable in each of the disputed domain names.2
The TLDs “.blog” and “.cloud” do not serve to dispel the confusing similarity of the disputed domain names with the Complainant’s mark. TLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.3 In this instance the disputed domain names are identical to the Complainant’s mark when disregarding the TLDs “.blog” and “.cloud”. See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465 (<debeers.feedback> is identical to complainant’s DE BEERS mark).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s SANOFI mark. Regardless, the Respondent registered the disputed domain names, both of which incorporate the SANOFI mark and are virtually identical to the Complainant’s mark. The Respondent did not reply to the Complainant’s cease and desist notice, and made no active use of the disputed domain names until well after the Respondent had received notice of this dispute. At one point the Respondent told the Complainant it would have to buy the disputed domain names.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark”. However, the respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698. See WIPO Overview 3.0, section 2.5 and cases cited therein.
After thorough review of the attendant facts and circumstances, the Panel finds the Respondent’s claim to have registered the disputed domains for an unspecified project to be pretextual. The Respondent appears to assert he was not aware of the Complainant’s SANOFI mark, insisting that “SANOFI is an acronym and nothing more.” Yet the Respondent has offered no evidence of any acronym comprised of the letters S-A-N-O-F-I, and in the overall circumstances of this case the Panel does not consider the Respondent’s claim to have been unaware of the Complainant and the Complainant’s SANOFI mark credible. There is nothing in the record even remotely suggesting a connection between “SANOFI” and the content on the Respondent’s website, which ostensibly is about tourism in Tuscany.
The Respondent had made no active use of the disputed domain names prior to the filing of the Complainant. After the filing of the Complaint the Respondent stated would not transfer the disputed domain names unless the Complainant paid for them. The Respondent’s did not link the disputed domain names to the “www.sanofi.blog” website until well after the Respondent had received notice of the dispute.
Having regard to the foregoing, the Panel concludes that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy. Nor has the Respondent come forward with evidence of use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain names. In short, the Respondent has not brought forward any credible evidence to support a claim of rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant’s well-known SANOFI mark when registering the disputed domain names. The Panel finds that the Respondent’s purported use of the disputed domain names with a blog site is pretextual, and the record further suggests that the Respondent registered the disputed domain names in order to sell them to the Complainant. In the final analysis, the Respondent by his actions has clearly demonstrated that his primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise profit from the Complainant’s trademark rights.
Accordingly, the Panel finds the Complainant has satisfied the requirements of 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 names <sanofi.blog> and <sanofi.cloud> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 11, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
3 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.