Complainants are Sanofi and Sanofi Biotechnology of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Shi Lei of Hangzhou, Zhejiang, China.
The disputed domain name <dupixenthc.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2018. On February 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, 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 Complainants on February 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on February 7, 2018.
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 Respondent of the Complaint, and the proceedings commenced on February 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 6, 2018.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 13, 2018. 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.
Complainant Sanofi is a multinational pharmaceutical company, based in Paris, France. Sanofi is one of the largest pharmaceutical companies in the world, with EUR 33,82 billion in net sales in 2016, and 100,000 employees in over 100 countries. Complainant Sanofi Biotechnology is a subsidiary of Sanofi (together, “Complainants”). Complainants hold numerous trademarks for pharmaceutical preparations and products under the mark DUPIXENT, including, among others, International Trademark No. 1278059 (registered October 28, 2015); European Union Trade Mark No. 014683916 (registered January 28, 2016); Hong Kong, China, Trademark No. 303569996 (registered October 19, 2015); and United States Trademark No. 4978127 (registered June 14, 2016).
Complainants own the registration for the domain names <dupixent.com> (registered May 29, 2015); <dupixent.ca> (registered July 21, 2016); and <dupixenthcp.com> (registered October 13, 2016). Complainants use the domain names and associated websites to inform customers about their DUPIXENT mark and pharmaceutical preparations and products.
The disputed domain name <dupixenthc.com> was registered on January 30, 2018. Respondent has no affiliation with Complainants. Respondent is using the website associated with the disputed domain name to provide sponsored links to websites that describe or advertise goods or services that are unaffiliated with Complainants or Complainants’ services. Complainants have not authorized any activities by Respondent, nor any use of their trademarks thereby.
Complainants contend that (i) <dupixenthc.com> is identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. In particular, Complainants contend that they have registrations for DUPIXENT as well as other well-known marks. Complainants contend that Respondent has merely used the disputed domain name to set up a website meant to lure in customers looking for Complainants and their well-known pharmaceutical preparations and products, but that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainants contend that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainants’ rights.
Respondent did not file a reply to Complainants’ contentions in this proceeding.
This Panel must first determine whether <dupixenthc.com> is identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainants’ registered trademark DUPIXENT, and merely adds the letters “hc” which are descriptive in this context of “health care.”
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
This Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent is using the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainants or Complainants’ services. Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.
The Panel finds that Complainants have satisfied paragraph 4(a)(ii) of the Policy.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent is offering sponsored links to other websites. Hence, Respondent is trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondent’s own commercial gain. The Panel finds that the added letters would be perceived by Internet users as descriptive of a website where they could find information about Complainant’s DUPIXENT pharmaceutical preparations and products, as they relate to “health care.” In this regard, the Panel notes that Complainants own the registration for a similar, previously registered, domain name, <dupixenthcp.com>. Accordingly, consumers would likely expect to find information offered by Complainants on such a website.
Given the nature of the website content and the disputed domain name which incorporates Complainants’ mark, the Panel finds that Respondent registered and used the disputed domain name with knowledge of Complainants’ prior rights, thereby evidencing bad faith.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <dupixenthc.com> be transferred to Complainants.
Lorelei Ritchie
Sole Panelist
Dated: March 22, 2018