WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Emily Colin

Case No. D2020-1851

1. The Parties

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

Respondent is Emily Colin, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <san0fi.net> 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 July 16, 2020. On July 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2020.

The Center appointed Scott R. Austin as the sole panelist in this matter on August 25, 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

Complainant states in its Complaint and provides evidence in the respective Annexes sufficient to support that Complainant is a multinational pharmaceutical company headquartered in Paris, France, that operates in more than 100 countries and employs 100,000 people, Ranked as the world’s fourth largest multinational pharmaceutical company based on prescription drug sales, Complainant engages in research and development, manufacturing, and marketing of both prescription and over-the-counter pharmaceutical products sold under the trademark SANOFI (the “SANOFI Mark”). Complainant’s products include patented prescription drugs for serious diseases that lead the field for therapies in internal medicine and vaccines

Complainant has used the SANOFI Mark as a source identifier for its pharmaceutical products and a range of related goods for over 40 years and owns numerous trademark registrations around the world, including French Trademark Registration No.1482708, registered on August 11, 1988, European Union Trade Mark Registration No. 000596023, registered on February 1, 1999, and International trademark number 674936, registered on June 11, 1997, designating among others, Cuba, Romania, Russian Federation, Switzerland, and Ukraine.

The disputed domain name was registered on July 8, 2020 and resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the SANOFI Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Furthermore, prior UDRP panels have considered a domain name, which consists of a common, obvious, or intentional misspelling of a trademark to be confusingly similar to the relevant mark for purposes of the first element. See WIPO Overview 3.0, section 1.9. See, Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC, WIPO Case No. D2014-1018 (letter “o” in mark COMERICA replaced with the numeral zero in the disputed domain name).

The Panel finds here that the disputed domain name wholly incorporates Complainant’s registered SANOFI Mark and is essentially identical to the SANOFI Mark. As in the Comerica Bank case, Respondent’s only change, replacing the letter “o” in the trademark with the numeral zero (“0”) in the disputed domain name <san0fi.net>, confirms the fact that the disputed domain name is confusingly similar to the SANOFI Mark.

Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has not licensed, or otherwise authorized Respondent to use the SANOFI Mark in any manner, nor is Complainant in any way or manner associated with or related to Respondent. Complainant has also claimed with persuasive evidence submitted that Respondent, identified as the name “Emily Colin” is not commonly known by the disputed domain name because it clearly bears no resemblance to the term “sanofi”.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Most importantly, Complainant’s evidence shows the disputed domain name resolves to an inactive website, Respondent, therefore, is not making a legitimate noncommercial or fair use of the disputed domain name nor using it in connection with a bona fide offering of goods or services to confer a right or legitimate interest because there is no evidence the disputed domain name is being used at all. See, Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075.

These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. In addition, the Panel notes that the composition of the disputed domain name being essentially identical to Complainant’s mark carries a risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1.

Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant’s SANOFI Mark has been recognized by prior UDRP panels as an internationally well-known brand. See, e.g. Sanofi v. HUANG GUANGJIN aka HUANGGUANGJIN, WIPO Case No. D2020-0814; Sanofi v. Svetlana Guseva, WIPO Case No. D2019-2815. Complaint references more than 20 UDRP cases alone involving findings by prior UDRP panels that the SANOFI Mark is well known.

Based on the evidence submitted, Complainant also shows that since at least as early as 2012 the SANOFI Mark has also been one of the most cyber-squatted trademarks among well-known marks in the biotechnology and pharmaceutical business sectors. The Panel notes that a brief search of the Center’s database of cases and panel decisions returns hundreds of cases involving Complainant’s SANOFI Mark.

Based on this evidence, the Panel finds that it is implausible to believe that Respondent was not aware of the SANOFI Mark when it registered its confusingly similar disputed domain name. Such registration of a domain name confusingly similar to Complainant’s widely-known trademark suggest opportunistic bad faith. See Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Min Zhi, WIPO Case No. D2013-0020.

The circumstances of this case, where Respondent has registered a typo of a widely known mark as the disputed domain name, has also been taken into account by prior UDRP panels in finding that a domain name has been registered in bad faith. See, WIPO Overview 3.0, section 3.2.1. The Panel finds Respondent registered the disputed domain name in bad faith.

Although the disputed domain name resolves to an inactive website, inaction or “passive holding” of a disputed domain name falls within the concept of the domain name “being used in bad faith”. See Telstra Corporative Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Prior UDRP panels have held that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412. Given the worldwide fame of Complainant’s SONOFI Mark and Respondent’s lack of any relationship to the mark, the Panel finds the disputed domain name has been registered and used in bad faith.

For these reasons, the Panel finds that Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <san0fi.net> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: September 8, 2020