The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
The disputed domain name <sanoficampus.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2018. On November 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2018 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 November 23, 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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 24, 2019. 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 multinational pharmaceutical group based in Paris, the fourth largest pharmaceutical company in the world based on prescription sales. The Complainant group employs over 100,000 people in more than 100 countries and made net sales of more than EUR 35 billion in 2017.
The Complainant operates a website at “www.sanofi.com” and has held that domain name since 1995. The Complainant also holds many other domain names using its SANOFI mark in other generic or country code Top-Level-Domains, such as <sanofi.net>, <sanofi.biz>, <sanofi.fr>, and <sanofi.us>.
The Complainant owns numerous trademark registrations, including the following:
|
Mark |
Jurisdiction |
Registration Number |
Registration Date |
|
SANOFI (word) |
France |
1482708 |
August 11, 1988 |
|
SANOFI (word) |
France |
96655339 |
December 11, 1996 |
|
SANOFI (word) |
International Trademark |
674936 |
June 11, 1997 |
|
SANOFI (word) |
European Union |
000596023 |
February 1, 1999 |
|
SANOFI (standard characters) |
United States |
85396658 |
July 24, 2012 |
|
SANOFI (word) |
European Union |
010167351 |
January 7, 2012 |
The record establishes that the SANOFI mark is well known and widely advertised. Indeed, it was mentioned in a 2012 WIPO report as one of the most frequently cybersquatted global trademarks, and the Complaint includes citations to more than 60 WIPO UDRP decisions ordering the transfer of domain names incorporating or closely approximating the SANOFI mark.
The Domain Name was registered in the name of a domain privacy service on September 6, 2018, and does not resolve to any active webpage. After being notified of this dispute, the Registrar identified the registrant as Ms. Rodriques of Fundacion Comercio Electronico in Panama City, Panama. The Respondent did not reply to a cease-and-desist letter emailed by a representative of the Complainant or, subsequently, to communications from the Center.
The Panel notes that this Respondent appears to be in the business of registering domain names based on well-known trademarks and has been named as the respondent in a number of other recent UDRP proceedings ordering the transfer of domain names, in which the Respondent similarly failed to reply. See, e.g., Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2882; International Business Machines Corporation v. Domains By Proxy, LCC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2657; John Middleton Co. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2600; The Commissioners for HM Revenue and Customs v. Domains By Proxy, LLC DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2348; The Terminix International Company Limited Partnership v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2112; ZB, N.A. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1959; The British United Provident Association Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1755; Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1616; The British United Provident Association Limited (“Bupa”) v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1117; SAP SE v. Domains by Proxy LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1090.
The Complainant asserts that the Domain Name is confusingly similar to its registered SANOFI trademark, which the Respondent has no permission to use and in which it otherwise has no evident rights or legitimate interests.
The Complainant observes that numerous WIPO UDRP panels have found that the SANOFI mark is well known globally and have concluded that respondents lack legitimate interests in using the mark in domain names and have registered those domain names in opportunistic bad faith. The Complainant argues that this is the case here as well, where the Respondent registered the Domain Name through a domain proxy service, hiding its identity, and has made no use of the Domain Name to date for an active website. The Complainant cites the “passive holding” doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”).
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed 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 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant indisputably holds registered SANOFI trademarks. The Domain Name incorporates this mark in its entirety and adds the generic term “campus”, a dictionary word in English, which has been borrowed in contemporary Spanish usage as well. As such, this term does not avoid confusion. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded under the first element confusing similarity test.
Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s SANOFI trademark for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use, a corresponding business or brand name, or other evident legitimate interests. This shifts the burden to the Respondent. “Sanofi” is a coined word, not a dictionary word. The Respondent has not come forward to assert any claims to fair use or other legitimate interests.
The Panel accordingly concludes that the Complainant has established the second element of the Policy.
The Policy, paragraph 4(b), furnishes a list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, but these expressly do not exclude other possible instances of bad faith.
The Respondent has offered no explanation for the appropriation of the Complainant’s well-known and distinctive mark without permission. The Respondent obscured its identity and failed to reply to communications from the Complainant and the Center, and the Respondent has not submitted a Response offering legitimate reasons for registering and holding the Domain Name based on the Complainant’s globally known trademark. Moreover, the Respondent has a pattern of registering domain names patently based on well-known trademarks, in the classic model of cybersquatting.
As in Telstra and other “passive holding” cases, the Panel here is persuaded of the Respondent’s bad faith after examining “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” WIPO Overview 3.0, section 3.3.
The Panel concludes on this record that the Complainant has established the third element of the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sanoficampus.com> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: February 7, 2019