Complainant is Sanofi, France (“Complainant”), represented by Selarl Marchais & Associés, France.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria (hereinafter referred to jointly and severally as “Respondent”).
The disputed domain name <sanofipatientconnectiom.com> is registered with Sav.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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 Complainant on July 12, 2020 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 13, 2020. The original Complaint and the Amendment thereto are hereinafter referred to as the “Complaint”.
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 Respondent of the Complaint, and the proceedings commenced on July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 6, 2020.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 13, 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.
Complainant is a French pharmaceutical company with a presence in more than 100 countries employing more than 100,000 people. Complaint, Annex 5.1. Complainant has had sales of more than EUR 3.1 billion in each successive year beginning in 2014 and extending through 2018. Complaint, Annex 4. Originally formed in 2004 as Sanofi-Aventis, Complainant changed its name to Sanofi in May 2011.
Complainant has a large portfolio of high growth drugs, with a Research and Development investment of EUR 5.9 billion in 2018. Complainant offers a wide range of patented prescription drugs in 7 major therapeutic areas: cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. Complaint, Annex 5.
Complainant is the owner of numerous registered trademarks for SANOFI in France (the earliest of which is trademark registration No. 1482708 registered on August 11, 1988), In the European Union (the earliest of which is trademark registration No. 010167351 registered on August 2, 2011), and in the United States (trademark registration No. 4178199 registered on July 24, 2012). Complainant is also the registrant of international trademarks for SANOFI. Complaint, Annex 8. As the SANOFI trademark has no linguistic significance, it is “highly distinctive”.
Complainant is the owner of numerous domain names featuring the SANOFI trademark as the Second-Level Domain (‘SLD”) in the following Top-Level Domains (“TLDs”): “.com”, “.cn”, “.fr”, “.us”, “.net”, “.ca”, “.biz”, “.info”, “.org”, “.mobi” and “.tel”. All of thesedomain names were registered between October 13, 1995, and March 17, 2011. Complaint Annex 9.
The disputed domain name was registered on June 1, 2020. Complaint, Annex 1.
Respondent is using the disputed domain name to resolve to a pay-per-click website on which links to Complainant’s competitors are provided. Users who arrive at the website expecting to find information for users of Complainant’s products and services, and who click on links, are being taken to sites belonging to Complainant’s competitors. In such situations, the owner of the dispute domain name, in this case Respondent, receives income for each customer who clicks on a link. This system is called “pay-per-click.”
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s well-known SANOFI trademark. Complainant asserts that Respondent has no rights or legitimate interests in respect to the disputed domain name. Finally, Complainant contends that Respondent has registered and used the disputed domain name in bad faith by using it in a pay-per-click revenue generating scheme.
Respondent did not reply to Complainant’s contentions.
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The disputed domain name consists of Complainant’s well-known and highly distinctive SANOFI trademark, the English word “patient,” which describes a person under the care of a physician, and the letter combination “connectiom”, which on a standard American typewriter suggests a typographical error for the English word “connection”. Taken as a whole, the disputed domain name suggests a connection to a physician for a patient using a SANOFI prescription drug. Complainant’s trademark is clearly recognizable within the disputed domain name and the addition of these terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known mark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
In the present case, a person searching for help with a medication manufactured or provided by Complainant, finding this domain name for example provided by a search engine or typed the information mistakenly hitting the “m” key with its right forefinger, rather than the “n” key adjacent to it, might well believe that it had been taken to a website provided by Complainant. By clicking on any of the links, the user would be providing revenue to the domain name registrant and would arrive at a website to which the user never intended to reach. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
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, <sanofipatientconnectiom.com>, be cancelled.
M. Scott Donahey
Sole Panelist
Date: August 21, 2020