The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private / Domains By Proxy, LLC, United States of America (“United States”) / Arkadi Shaposhnik, indegene, United States.
The disputed domain name <sanoficontentfactory.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 13, 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 October 13, 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 October 16, 2020.
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 October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2020.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 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.
The Complainant is a multinational pharmaceutical company with net sales of 34 billion EUR in 2018. It has operations in more than 100 countries and employs 100,000 people.
The Complainant is the owner of the trademark SANOFI, registered in various jurisdictions, such as in the European Union under number 010167351, registered on January 7, 2012.
The disputed domain name was registered on August 27, 2020.
The disputed domain name includes the Complainant’s trademark SANOFI in its entirety, which is highly distinctive. The addition of the descriptive English terms “content” and “factory” are not sufficient to remove the similarity between the Complainant’s trademark and the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name, and it is not used in connection with any bona fide offering of goods or services. The disputed domain name does not resolve to an active webpage. The Respondent is not commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant’s trademark is inherently distinctive and well-known throughout the world and prior UDRP panels have repeatedly held that the Complainant’s trademark is well-known. The disputed domain name resolves to a passive holding website, which does not prevent a finding of use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has shown that it is the owner of the trademark SANOFI, registered in various jurisdictions all over the world. Hence the Complainant does have rights to the SANOFI trademark. The disputed domain name includes the Complainant’s trademark in its entirety, combined with the terms “content” and “factory”. These are common English words.
See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
As the disputed domain name includes the Complainant’s trademark in its entirety combined with descriptive terms, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled.
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of proof shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the Respondent has] registered or has 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 the Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
Considering that the Complainant is present in more than 100 countries and employs 100,000 people, and that the trademark has been held by previous panels to be well-known, it is evident that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name. As the Complainant’s trademark and the disputed domain name have been found to be confusingly similar, the Panel finds that the disputed domain name was registered in bad faith.
The disputed domain name does notresolve to an active website. Accordingly, the disputed domain name is not in active use, see Accenture Global Services Limited v. Domain eRegistration, WIPO Case No. D2018-1994.
This, however, does not prevent the finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0. Considering that the Panel has found a likelihood of confusion between the Complainant’s trademark and the disputed domain name, the Respondent has used a privacy protection service for the registration of the disputed domain name to hide its true identity, there are no obvious good faith or legitimate interests for the Respondent to register the disputed domain name, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith.
Therefore, the Panel finds that the third element of the Policy is fulfilled.
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, <sanoficontentfactory.com> be cancelled.
Tuukka Airaksinen
Sole Panelist
Date: December 15, 2020