The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Ronald S. Magno, Bitworx Solutions, Philippines.
The disputed domain name <sanofi2020.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 name. On October 13, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2020.
The Center appointed Jane Lambert as the sole panelist in this matter on November 26, 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.
Based in Paris, the Complainant is the fourth largest pharmaceutical business in the world. Its turnover over the last five years has been above EUR 30 billion each year.
Its activities include research and development, manufacturing, marketing and distribution of medicines both for prescription and over the counter use. It carries on business in over a 100 countries on five continents.
The Complainant is the registered proprietor of the word mark SANOFI which is registered with the French Intellectual Property Office for goods and services in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42, and 44 with effect from May 16, 2011 under trade mark number 3831592. It has also registered SANOFI as a trade mark with the European Union Intellectual Property Office and many other trade mark registries around the world.
The disputed domain name is not currently in use. According to the evidence submitted, the disputed domain name resolved to a page headed “Apache 2 Ubuntu Default Page”. At the time of writing this Decision, the disputed domain name does not resolve to an active site.
The Complainant has requested the cancellation of the disputed domain name on the grounds that:
- The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
In support of the first ground, the Complainant points to its above-mentioned French registered trade mark SANOFI as a trade mark in which the Complainant has rights. The only differences between the disputed domain name and the trade mark are the date “2020” and the generic Top Level Domain (“gTLD”) “.com”.
As to the second ground, the Complainant says that it has never licensed or authorized the Respondent to use its trade marks. Nor has it licensed or authorized him to register a domain name that incorporates such trade marks. The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. Nor is he using the disputed domain name in connection with a bona fide offering of goods or services.
Relying on Christian Louboutin v. no, WIPO Case No. D2013-0538, where it was held that if a Respondent has no rights or legitimate interests in a disputed domain name, it may be found in appropriate circumstances that the disputed domain name was registered in bad faith, the Complainant has submitted that this is just such a case.
Citing the view of the Panel in MasterCard International Incorporated v. North Tustin Dental Associates WIPO Case No. D2007-1412 that:
“There is substantial authority 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.”
the Complainant argues that the Respondent had both constructive and actual knowledge of its mark and chose nevertheless to exploit it and the goodwill developed in it.
The Complainant concludes that the Respondent must have been aware of the risk of deception and confusion that would inevitably arise from its registration of the disputed domain name since the disputed domain name would mislead Internet users who were searching for official information or SANOFI pharmaceutical products. It therefore followed that the disputed domain name must have been registered and used in bad faith.
Further, the failure to make any use of the disputed domain name was an example of passive holding which had been held to evidence registration and use in bad faith in Telstra Corporative Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant’s contentions.
The agreement by which the Respondent registered the disputed domain name incorporated by reference paragraph 4(a) of the Policy:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel finds the first element to be present.
French trade mark number 3831592 is a trade mark in which the Complainant obviously has rights. The mark that is registered under that number is the word SANOFI. The disputed domain name combines the mark with the year “2020” to form the second level domain name. The combination of the trade mark SANOFI with “2020” is likely to mislead Internet users into thinking that the disputed domain name is the URL for a website with up to date news of the Complainant’s business and/or products. Thus, the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
The Panel finds the second element to be present.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides the following guidance:
“While 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 ‘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.”
Paragraph 4 (c) of the Policy provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.”
Subparagraphs (i) and (iii) of the paragraph 4 (c) cannot apply because the Respondent has made no use of the disputed domain name up to now. Subparagraph (ii) is unlikely to apply because the word SANOFI is not a common name or nickname. The registration of the word SANOFI as a trade mark across the world would preclude use of the word as a corporate name or mark without the Complainant’s license. The Complainant has expressly denied that it has ever granted such a license or authorization.
The Panel holds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In accordance with the WIPO Overview 3.0, the evidential burden has passed from the Complainant to the Respondent. The Respondent has had ample opportunity to state whether he has rights or legitimate interests in the disputed domain name but has failed to do so. Consequently, the Respondent has failed to discharge the burden.
The Panel finds the third element to be present.
As a domain name can be used an instrument of fraud an accusation of bad faith in registration and use of a domain name is not to be levelled lightly. Although it is tempting to conclude that there is bad faith whenever a respondent appears not to use a disputed domain name, the Panel in Telstra made clear that every case had to be decided in accordance with its own circumstances. Since none of the scenarios in paragraph 4(b) apply to this case, it is necessary to look at the Respondent’s conduct as a whole to determine whether it is consistent with honest or dishonest behavior.
The Respondent, who has been found to have no rights or legitimate interests in the disputed domain name, has registered a domain name that is confusingly similar to the trade mark of a well-known pharmaceutical multinational. The usual reasons for registering a domain name in which the registrant has no interest are holding it to ransom or disrupting the business of the trade mark owner. If there is a legitimate reason for such a registration it would have to be explained in a reply. The Respondent has been offered an opportunity to reply and he has failed to take advantage of it.
Unlike many of those who park domain names that are identical or confusingly similar to the corporate names or trade marks of well-known businesses on sites where there are sponsored links and searches, the Respondent has parked the disputed domain name on the “Apache 2 Ubuntu Default Page”. There are all sorts of reasons why he should have done that but the one which is consistent with his other behavior would be an attempt to throw the Complainant and the Panelist who would hear the complaint off the trail. Parking the disputed domain name on the “Apache 2 Ubuntu Default Page” would be just as effective a means of exhibiting it to potential buyers on a page with sponsored links and searches.
In the absence of any contrary evidence from the Respondent it is likely that the Respondent intended to use the disputed domain name for ransom or disruption. Such use would be eiusdem generis the circumstances in paragraph 4(b) of the Policy. It would therefore constitute evidence of registration and use 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 <sanofi2020.com> be cancelled.
Jane Lambert
Sole Panelist
Date: December 12, 2020