WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Privacy Protect, LLC (PrivacyProtect.org) / Alper Tunka, SteroidTr

Case No. D2019-1869

1. The Parties

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

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United Stated of America / Alper Tunka, SteroidTrTurkey.

2. The Domain Name and Registrar

The disputed domain name <sanovisph.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2019, 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 August 5, 2019, 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 August 6, 2019. On the same day, the Center received an informal email from the Respondent.

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 August 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2019. On August 8, 2019, the Center received an informal email from the Respondent and the Center sent an email informing the Parties of a possible settlement. On August 9, 2019, following the request from the Complainant to suspend the proceeding for settlement purpose, the Center suspended the proceeding until September 8, 2019. The proceeding was reinstituted on September 9, 2019 and the Center confirmed that the Response due date was September 28, 2019. The Respondent did not submit any further response.

The Center appointed Antony Gold as the sole panelist in this matter on October 2, 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.

4. Factual Background

The Complainant is a multinational pharmaceutical company with its headquarters in Paris, France. It is operational in more than 100 countries and has in the region of 100,000 employees. It is ranked as the world’s fourth largest multinational pharmaceutical company by prescription sales. In 2018, consolidated net sales amounted to EUR 34.46 billion.

The Complainant was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi- Synthélabo. Since 2011 the Complainant has traded as Sanofi. It has numerous trade mark registrations protecting this trading style including, by way of example only, the following;

- French trade mark, registration No. 1482708, for SANOFI, registered on August 11, 1988 in classes, 1, 3, 4, 5, 10, 16, 25, 28 and 31;
- European Union trade mark, registration No, 004182325, for SANOFI, registered on February 9, 2006 in classes, 1, 9, 10, 16, 38, 41, 42 and 44.

The Complainant is also the owner of numerous domain names which incorporate its SANOFI trade mark, including <sanofi.com> and <sanofi.fr>.

The disputed domain name was registered on April 11, 2019. It resolves to a website, the home page of which features the heading “Sanovis”, beneath which is a menu bar. Underneath the menu bar is a large photograph of a microscope and, superimposed over part of the photograph, are the words “Laboratory Services with a Professional Team and latest technology”. In smaller type are the words “We provide laboratory & analyses services with almost zero margin with a professional team and well equipped laboratory with latest technology”. Towards the bottom of the page a contact address for the Respondent is given in Telangana, India. There is also a copyright notice which reads “©2017 Sanovis Pharmaceuticals. All rights reserved”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar to a trade mark in which it has rights. Its registered SANOFI trade marks are highly distinctive and have been in use for over 40 years. Having regard to the fact that the generic Top-Level Domain (“gTLD”) extension “.com” is ignored for the purpose of the comparison, the disputed domain name differs from the registered mark, SANOFI only in the following respects;

- the letter “f” in SANOFI has been replaced by the letter “v”. These letters are phonetically very similar;
- a second letter “s” has been added after the “i”. This is simply a pluralization of the Complainant’s mark;
- the letters “ph” have been added after the second “s”. This acronym is commonly understood to stand for either “pharmaceutical” or “public health”. These letters will serve to suggest to Internet users that the disputed domain name is related to the Complainant’s pharmaceutical activities, whether in relation to public health or the wider pharmaceutical industry, and can increase the confusing similarity; see, for example, Rockefeller & Co., Inc. v. All Value Network a/k/a AVN, WIPO Case No. D2011-1957.

The disputed domain name comprises an imitation of the Complainant’s distinctive trade mark combined with a descriptive acronym. Accordingly, it is confusingly similar to the Complainant’s trade mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. His name does not bear any resemblance to the Complainant’s trade mark. The Complainant has never licensed or otherwise authorized the Respondent to use its trade mark or to register any domain name which includes its trade mark. There is no relationship between the Parties and the Respondent has clearly modified the Complainant’s trade mark for his own use and incorporated it into the disputed domain name without the Complainant’s authorization.

Moreover, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, nor is he using it in connection with a bona fide offering of goods and services. Whilst, at first, the disputed domain name seems to lead to a pharmaceutical website which competes with that of the Complainant, the website constitutes a fake and misleading presentation of the Respondent’s true activities. Internet searches have revealed that there is no such company at the displayed contact address and this is corroborated by the fact that, on June 28, 2019, the Complainant sent a cease and desist letter to “Sanovis Pharmaceuticals” to the Respondent’s alleged address in India, by registered mail and email, but has never received a response or confirmation that the letter has reached the Respondent. The sole purpose of the Respondent’s website is to attempt to justify the Respondent’s registration of the disputed domain name, falsely suggesting that the Respondent is somehow affiliated or otherwise connected with the Complainant or acting in a field competing with the Complainant’s activities when in fact it is not. The purpose of the disputed domain name is to lead Internet users who are searching for information on the Complainant to the Respondent’s website. This is neither legitimate nor fair use as it seeks to take unfair advantage of the Complainant’s trade mark and exploit its goodwill for the Respondent’s financial gain. Accordingly, the Respondent is not making legitimate, noncommercial or fair use of the disputed domain name.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Dealing first, with bad faith registration, numerous previous UDRP panels have recognized the worldwide reputation of the Complainant. Given the famous and distinctive nature of the Complainant’s mark, the Respondent is likely to have had at least constructive notice, if not actual notice, of the existence of this mark as at the time he registered the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in his registration of it. Furthermore, the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion – or, at least, an impression of association – between the Complainant’s SANOFI trade mark and the disputed domain name.

There are many decisions of UDRP panels which have found that, if a complainant’s trade mark is well established, then this consideration, in itself, is indicative of bad faith registration and use; see, for example, NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077. Given the fame of the Complainant, the Respondent must have been aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name.

In addition, the Respondent has used the disputed domain name in bad faith. The disputed domain name directs Internet users to a website which is intended to disrupt the Complainant’s business through the attraction of Internet users to the Respondent’s website by creating a likelihood of confusion between the Complainant’s SANOFI trade mark and the disputed domain name. The Respondent is also trying to obtain an unfair benefit from the Complainant’s goodwill and reputation. Accordingly, the Respondent is intending to create a likelihood of confusion between the Complainant’s trade marks and the disputed domain name as to the source, sponsorship, affiliation, connection or endorsement of the Respondent’s website and the products displayed or advertised for sale on it. Moreover, in a decision on very similar facts under the Policy, the panel found bad faith registration and use; see Sanofi v. Zihao Zhu, WIPO Case No. D2019-0369.

B. Respondent

The Respondent did not file a formal response to the Complaint. However, on August 7, 2019, following receipt of the amendment to the Complaint, the Respondent emailed the Center saying “I am sorry that I could not understand what the problem is with my domain name. Could you please explain me?”. On August 8, 2019, the Respondent sent further emails to the Center stating “Please start the domain transfer process. We will approve the transfer as soon as possible”.

6. Discussion and Findings

Whilst the Respondent has not entirely ignored the Complaint, the emails he has sent to the Center, as set out above, provide no information as to what, if any, assertions made by the Complainant might be in dispute and are therefore of no assistance to the Panel.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its many registered trade marks for SANOFI, including the two marks in respect of which full details are provided above. It therefore has rights in those marks.

In considering whether the disputed domain name is confusing similar to the Complainant’s mark, the gTLD (in this case “.com”) is disregarded as it is a technical requirement of registration. The other differences between the Complainant’s trade mark and the disputed domain name are as set out by the Complainant, namely;

- the letter “f” in SANOFI has been replaced by the letter “v”. These letters are phonetically very similar;.

- a second “s” has been added after the final letter of the Complainant’s SANOFI trade mark. This will often be perceived as creating a pluralization of the preceding word;

- the letters “ph” have been added at the end of the word. These letters may be perceived by Internet users to be an acronym for either “pharmaceutical” or “public health”. However, whether or not that is the case and for reasons explained below, this does not impact on the Panel’s finding.

The first element of the Policy is a standing requirement and the test usually applied is whether the Complainant’s mark is recognizable within the disputed domain name. In this respect, see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and in particular the comment that: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The differences between the Complainant’s mark and the disputed domain name, as set out above, do not serve to distinguish the disputed domain name from the Complainant’s mark. The Panel finds that the Complainant’s SANOFI mark is recognizable within the disputed domain name and that it is accordingly confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised very briefly:

(i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.

So far as the first circumstance is concerned, the Respondent’s website, the home page of which has been described above, at first glance, appears to be a website of a bona fide business, albeit one which is operating with a similar name (“Sanovis”) to the Complainant. One of the fields in which it purportedly operates, namely laboratory testing services, is at least partially different from the Complainant’s field of activity which is predominantly the research and development, manufacture and marketing of prescription drugs. That said, the full name of the Respondent’s company is stated to be “Sanovis Pharmaceuticals” and the “Support” section of the website says that the company will “[…] give support to your projects in pharmaceutical industry” and so there is a connection with the pharmaceuticals sector.

There are, however, a number of indications that the website is not that of a bona fide business. First, the Complainant has conducted a search using Google’s Street View facility that suggests that there is no business named “Sanovis” at the contact address shown on the Respondent’s website. Moreover, a letter sent by registered mail to the Respondent at that address does not appear to have been delivered. Furthermore now that the details of the underlying registrant are known, it is inherently unlikely that a registrant allegedly based in Ankara, Turkey would be operating a laboratory testing services business in Telangana, India. Second the use of a privacy service by the Respondent, whilst not determinative, would not generally be considered necessary or usual for a company operating a bona fide business of this type. Third (and, in the view of the Panel, perhaps most important) the Respondent has not served a response to the Complaint or challenged the Complainant’s assertions in any substantive way. Accordingly, there is at least a prima facie case that the Respondent is not using his website in connection with a bona fide offering of goods and services.

The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character.

How section 4(c) of the Policy is applied in practice is set out at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of UDRP panels is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

The factors outlined above do not conclusively establish that the Respondent is operating a sham business. But they establish a prima facie case and the questions raised by the Complainant’s submissions are of sufficient weight, to put the onus on the Respondent to answer them. The Respondent has chosen not to do so. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

Dealing, first, with bad faith registration, the scale of the Complainant’s operations are such that the Respondent is likely, on a balance of probabilities, to have been aware of the Complainant’s business and the repute of its SANOFI mark as at the time of the registration of the disputed domain name, particularly as the website related to the disputed domain name purports to be operating in the same sector as the Complainant.

The approach of previous UDRP panels where a respondent has registered the well-known mark of the complainant is reflected in, by way of example the finding of the panel in ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287; “[t]he Complainant’s trademark ALSTOM as appropriated by the Respondent has a strong reputation and is recognised internationally. The Panel finds it implausible that Respondent was unaware of Complainant’s trademark. Neither the Complainant nor its trademark has any conceivable connection with Respondent’s name or activities. The registration of a well-known trademark of which the Respondent must reasonably have been aware constitutes bad faith”. Similarly, as the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.

The Panel, for the same reasons, finds that the registration by the Respondent of the disputed domain name was with actual or constructive knowledge of the Complainant’s SANOFI mark, as well as in the knowledge that the disputed domain name was confusingly similar to it, and was accordingly in bad faith.

So far as bad faith use is concerned, paragraph 4(b) of the Policy sets out, without limitation, four circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The two which might approximate most closely to the Respondent’s use of the disputed domain name are, in summary:

- paragraph 4(b)(i), the registration by respondent of a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark for valuable consideration in excess of the respondent’s out of pocket costs;

- paragraph 4(b)(iv) the use by a respondent of a domain name with the intention of attempting to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on it.

The Respondent’s precise motives in establishing its fake website are unclear. The most likely explanation is, perhaps, that the Respondent did so in the hope that the Complainant might be prompted to purchase the disputed domain name from it and at a higher price than if the disputed domain name did not resolve to an active, seemingly genuine, website. But it is not necessary to be sure of the Respondent’s exact motive; the registration of the disputed domain name in order to resolve to a fake website which purports to offer services in the same industry sector as that in which the Complainant operates and using a trading style confusingly similar to that of the Complainant’s SANOFI mark is sufficient to be able to ascribe bad faith to him.

Moreover, bad faith is not confined to the specific circumstances of bad faith and use set out at paragraph 4(b) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”.

The Panel accordingly finds that the disputed domain name was both registered and used in bad faith.

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 <sanovisph.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: October 16, 2019