WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Contact Privacy Inc. Customer 1246084445 / Thu Ha Bui

Case No. D2020-0441

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1246084445, Canada / Thu Ha Bui, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <sanofigroup.page> (“Disputed Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 25, 2020, 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 March 9, 2020 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 March 10, 2020.

The Center sent an email communication to the parties on March 9, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Disputed Domain Name is Vietnamese. The Complainant submitted a request for English to be the language of the proceeding on March 10, 2020. The Respondent did not submit any communication regarding the language of the proceeding.

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 March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2020.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 20, 2020. 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, Sanofi, is a French multinational pharmaceutical company, which engages in research, development, manufacturing and marketing of pharmaceutical products for sale and over-the-counter medication.

The Complainant is the owner of numerous trademark registrations for the trademark SANOFI in various jurisdictions throughout the world, including, but not limited to, French Trademark Registration No. 1482708 registered on August 11, 1988, European Union Trademark Registration No. 000596023 registered on February 1, 1999, United States of America Trademark Registration No. 4178199 registered on July 24, 2012, and International Registration No. 591490 registered on September 25, 1992. The SANOFI trademark has also been protected in Viet Nam, where the Respondent resides.

The Complainant’s SANOFI trademark has been recognized as well-known in many earlier decisions (e.g. Sanofi v. Registration Private, Domains By Proxy, LLC / Yujuan Ma, WIPO Case No. D2019-1493; Sanofi v. Marius Graur, WIPO Case No. D2019-0965; Sanofi v. Francisco Sánchez Fernández, inserious, WIPO Case No. D2019-0169).

The Complainant also owns a number of domain names featuring the trademark SANOFI, among which the notable one is <sanofi.com> registered on October 13, 1995.

The Disputed Domain Name <sanofigroup.page> was registered on December 16, 2019. As of the date of this Decision, and as provided in the Complaint, the Disputed Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.

First, the Complainant contends that the Complainant is the registered owner of trademark registrations for SANOFI in numerous countries all around the world. The Complainant further asserts that the SANOFI trademark is well-known in many jurisdictions. In addition, the Complainant has used its trade name “Sanofi” for over 40 years and owned a number of domain names featuring SANOFI trademark. Most of these trademark registrations and domain names were registered and put into use by the Complainant prior to the registration of the Disputed Domain Name.

Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to SANOFI trademark owned by the Complainant since the Disputed Domain Name reproduces entirely the registered and highly distinctive SANOFI trademark, and the addition of the descriptive term “group”, which simply refers to the Complainant’s structure as an entity, could not dispel any likelihood of confusion.

Third, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.page” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the Complainant submits that since the Respondent’s name has no resemblance with the term “sanofi”, the Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide SANOFI trademarks and domain names of the Complainant.

Furthermore, the Complainant submits that the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. Consequently, there is no relationship between the Respondent and the Complainant and the Respondent has clearly modified the Complainant’s trademarks for its own use and incorporated SANOFI Trademarks into the Disputed Domain Name without the Complainant’s authorization.

Finally, the Complainant submits that the Respondent is neither making a legitimate noncommercial or fair use of the Disputed Domain Name nor using the Disputed Domain Name in connection with a bona fide offering of goods or services since the Disputed Domain Name has not been put in use.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

First, the Complainant asserts that Panel decisions regularly recognize opportunistic bad faith in cases when the Disputed Domain Name appears confusingly similar to a Complainant’s well-known trademarks. Therefore, in the present case, the Disputed Domain Name, which is similar to the well-known SANOFI trademarks, was registered and is used in bad faith.

Secondly, the Complainant submits that the Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide SANOFI trademarks and domain names containing element “sanofi” of the Complainant. The absence of legitimate interest somewhat induces the absence of good faith.

Also, the Complainant contends that 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 SANOFI trademarks and the Disputed Domain Name. Thus, the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the Disputed Domain Name. The Respondent acted with opportunistic bad faith in registering the Disputed Domain Name in order to make an illegitimate use of it.

Furthermore, the Complainant contends that since the Disputed Domain Name resolves to an inactive website, the passive holding behavior falls within the concept of the domain name being used in bad faith, as it has been established in many UDRP cases.

Finally, the Complainant submits that the lack of use of the Disputed Domain Name particularly close to those used by the Complainant is likely to cause irreparable prejudice to their general goodwill because Internet users could be led to believe that the Complainant is not on the Internet or worse, that the Complainant is out of business.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issues

(i) Respondent’s Identity

The Panel notes that at the time the Complaint was filed February 25, 2020, the Respondent was identified as “Contact Privacy Inc. Customer 1246084445”, a privacy service. On February 25, 2020, 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 March 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On March 10, 2020, the Complainant filed an amendment to the Complaint, replacing the Respondent named in the initial Complaint with the underlying registrant “Thu Ha Bui”.

(ii) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.

As the Complaint was filed in English, the Center, in its communication dated March 9, 2020, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.

On March 10, 2020, the Complainant submitted a request that English be the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, an French business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the Disputed Domain Name itself contains the English words “group” and “page”, as well as the fact that the Respondent registered the Disputed Domain Name through Google LLC - a Registrar located in the United States of America; these suggest that the Respondent has knowledge of the English language and will be able to communicate in English;

(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in either English or Vietnamese.

Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

(iii) The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SANOFI, well before the Disputed Domain Name was registered.

Second, the Disputed Domain Name comprises the Complainant's SANOFI trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “group”. The Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.page” to the Disputed Domain Name does not prevent a finding of confusing similarity with the Complainant’s trademark for the purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Monster Energy Company v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2018-2817).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's SANOFI trademarks, and the first element of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark SANOFI.

In addition, given that the trademark SANOFI is well-known, the addition of the descriptive term “group”, which describes the legal nature of the Complainant, to such a mark by the Respondent is seen as tending to suggest sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)).

The Disputed Domain Name is resolving to an inactive website as of the date of this decision. However, no evidence is available on the Respondent’s preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Hence, in absence of this evidence, the Panel is of the view that paragraph 4(c)(i) is not met.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Name, the Respondent had full knowledge of the SANOFI trademarks and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element, paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(i) circumstances indicating that you have registered or you have acquired the 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel further finds that the Complainant’s SANOFI trademarks have been registered in numerous countries, including in Viet Nam, where the Respondent resides. According to what the Complainant established and similar to previous UDRP panels’ decisions, the Panel finds that the mark SANOFI is well-known throughout the world, including in Viet Nam (see e.g., Sanofi v. Registration Private, Domains By Proxy, LLC / Yujuan Ma, WIPO Case No. D2019-1493; Sanofi v. Marius Graur, WIPO Case No. D2019-0965; Sanofi v. Francisco Sánchez Fernández, inserious, WIPO Case No. D2019-0169).

Given the famous nature and wide use of the SANOFI trademark by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, and well predated the registration date of the Disputed Domain Name, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, the Panel is of the view that the nature of Disputed Domain Name, incorporating the Complaint well-known trademark plus the descriptive term “group”, indicates itself that the Registrant deliberately selected the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent to take advantage of the Complainant’s goodwill. See the section 3.2.1 of the WIPO Overview 3.0.

It is further noted that as of the date of this Decision, the Disputed Domain Name has not been used. From the inception of the UDRP, panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of WIPO Overview 3.0).

In light of this doctrine, the Panel finds that at the time of registration of the Disputed Domain Name, the Complainant had an established international reputation in the SANOFI trademarks and had established a worldwide presence for its pharmaceutical products. Hence, the Panel is of the view that the Respondent intentionally chose to register Disputed Domain Name, which is comprised of the descriptive element “group” combined with the Complainant’s SANOFI trademark, in order to somehow confuse Internet users that the Disputed Domain Name may have a connection with the Complainant. Further, the Respondent failed to submit a response and/or to provide any evidence of actual or contemplated good faith use of the Disputed Domain Name, and the Respondent has concealed its identity through a privacy service. Therefore, the Panel considers it implausible for the Respondent to engage in any good faith use of the Disputed Domain Name.

Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.

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 <sanofigroup.page> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: May 4, 2020