WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Contact Privacy Inc. Customer 0161263426 / Mike Willis, Sanofi Pasteur
Case No. D2021-1320
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Contact Privacy Inc. Customer 0161263426, Canada / Mike Willis, Sanofi Pasteur, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <sanofipasteur.online> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2021, 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 May 3, 2021, 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 May 3, 2021.
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 May 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 8, 2021. 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 and the fourth largest in the world. In 2018, it had net sales of EUR 34.46 billion. It was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo. It changed its name to Sanofi in 2011.
It engages in the research and development (R&D), manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also develops over-the-counter medication.
It has a presence in over 100 countries and employs 100,000 people. It has a large portfolio of high-growth drugs. It made a R&D investment of EUR 5.9 billion in 2018. It offers a wide range of patented prescription drugs to treat patients with serious diseases and is a leader in seven major therapeutic areas: cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines.
Its vaccines division is Sanofi Pasteur, which produces more than one billion doses of vaccines every year protecting against 20 infectious diseases. Sanofi Pasteur employs 15,000 people worldwide and generated EUR 5,118 million in revenue in 2018. It has 12 production and/or R&D sites located in France, USA, Canada, Argentina, China, India, Mexico, and Thailand. It has approximately one quarter of the world’s vaccine market.
The Complainant is licensed to use the name “Pasteur” worldwide by the French company Institut Pasteur, which is the owner of trade mark registrations for PASTEUR and containing the term “Pasteur” in combination with another term. Details of the licence are set out in Annex 12 to the Complaint.
Evidence of the Complainant’s trade mark rights is set out in Annex 8 to the Complaint and include, inter alia, the following registrations:
French trade mark 3831592 registered May 16, 2011, for SANOFI and device;
French trade mark 96655339 registered December 11, 1996 for SANOFI;
French trade mark 92412574 registered March 26, 1992, for SANOFI and device;
French trade mark 1482708 registered August 11,1988, for SANOFI;
European Union trade mark 010167351 registered January 7, 2012, for SANOFI;
European Union trade mark 004182325 registered February 9, 2006, for SANOFI;
European Union trade mark 000596023 registered February 1, 1999, for SANOFI;
International trade mark 1091805 registered August 18, 2011, for SANOFI and device;
International trade mark 1092811 registered August 11, 2011, for SANOFI;
International trade mark 1094854 registered August 11, 2011, for SANOFI;
International trade mark 674936 registered June 11, 1997, for SANOFI;
International trade mark 591490 registered September 25, 1992, for SANOFI and device; and
USA trade mark 85396658 registered July 24, 2012, for SANOFI.
The Complainant is also the owner of a large number of domain names incorporating “sanofi” and “sanofipasteur” including <sanofipasteur.ca> registered on February 2, 1998, <sanofipasteur.fr> registered on December 23, 2004, and <sanofipasteur.com> registered on May 19, 2004. Details are set out in Annex 9 to the Complaint. Most of the domain names are registered and used in connection with its activity.
The above trade marks and domain names were registered prior to the registration of the disputed domain name <sanofipasteur.online> on March 29, 2021.
The Respondent, Mike Willis, according to the Registrar, resides in the USA.
The evidence adduced by the Complainant at Annex 11 to the Complaint shows that the disputed domain name resolves to an inactive website.
In the absence of a Response, the Panel finds the Complainant’s evidence set out above to be true and determines the Complaint on that basis.
5. Parties’ Contentions
A. Complainant
The Complainant submits that:
i. it is the owner of the registered trade marks for or incorporating “sanofi” and is licensed to use the mark PASTEUR. The disputed domain name is confusingly similar to these marks;
ii. on the evidence the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. on the evidence the disputed domain name was registered and is used by the Respondent in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has registered trade marks for SANOFI throughout the world which predate the registration of the disputed domain name. The Complainant has also established that it is licensed to use the name “Pasteur” worldwide by Institut Pasteur, which is the owner of trade mark registrations for PASTEUR.
The Complainant submits that the disputed domain name <sanofipasteur.online> reproduces its mark SANOFI, which is a distinctive mark, as well as the Complainant’s domain names including <sanofipasteur.com>.
The Complainant submits that the dominant part of the disputed domain name consists of its SANOFI trade mark. The Panel accepts this submission. It takes into account that the Complainant trades using the name “Sanofi Pasteur” and is licensed to use the mark PASTEUR. It also uses domain names incorporating the word “sanofipasteur”.
The Panel also takes into consideration previous UDRP panel decisions cited by the Complainant in which those panels have found domain names incorporating SANOFI with a descriptive term to be confusingly similar to the mark SANOFI. Generally, previous UDRP panels have found that 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. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant also submits that the use of the generic Top-Level Domain (“gTLD”) suffix “.online” does not alleviate the confusing similarity in respect of the dominant part of the disputed domain name. In the Panel’s view, it is well-established that gTLD suffixes should generally be disregarded in deciding confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the mark SANOFI in which the Complainant has registered trade mark rights. It considers that it is supported in finding confusing similarity by the fact that the Complainant also trades using and is licensed to use the mark PASTEUR, which is the other element within the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights within Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that there is no evidence of legitimate rights or interests by the Respondent in respect of the disputed domain name.
The Complainant confirms that it has never licensed or otherwise authorized the Respondent to use its trade marks or register any domain name incorporating SANOFI. There is no relationship between the Parties, and the Respondent has clearly adopted the Complainant’s well-known trade mark, in addition to another mark, which carries a risk of implied affiliation and thus cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name nor is he using it in connection with a bona fide offering of goods or services, so as to confer rights or legitimate interests in it in accordance with paragraph 4(c) of the Policy. The evidence shows that the website to which the disputed domain name resolves is not actively used by the Respondent.
The Respondent is reflected in the WhoIs as “Mike Willis” and the Respondent’s organization is identified as “Sanofi Pasteur”. However, there is no evidence to support that the Respondent is commonly known by the disputed domain name or the name “Sanofi Pasteur”.
The evidence set out at Annex 11 to the Complaint shows that the website simply refers to an inactive webpage. A print of the website reproduced in the Complaint states that,“Ce site est inaccessible” or as translated by the Complainant:
“This website is inaccessible
Check if the address sanofipasteur.online is correct
If there is no error, try to diagnose the Windows network.”
In summary, the Complainant submits that on the basis of this evidence, the absence of any authorization by the Complainant, and the lack of evidence of any legitimate reason in the use of the disputed domain name, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In the absence of a Response, the Panel agrees with this submission and finds on the evidence adduced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that the disputed domain name was registered in bad faith for, inter alia, the following reasons:
i. the absence of any legitimate reason to register or use the disputed domain name (as is shown by the Panel’s finding in section 6B above);
ii. given the famous and distinctive nature of the mark SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s marks at the date of registration. This suggests opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it; and
iii. 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 confusion between the SANOFI trade mark and the disputed domain name.
The Complainant points out that the Complainant trading under the name SANOFI is one of the world leaders in pharmaceutical companies and that the mark SANOFI has acquired a high reputation. The Complainant expressly refers to numerous previous UDRP panel decisions in which the reputation of the mark SANOFI has been recognized as well as the Complainant’s worldwide trading reputation.
In particular, the Complainant refers to the previous decision in Sanofi v. Bo Li, WIPO Case No. D2013-1971, also involving the Complainant, in which the Panel recognized, “the worldwide reputation of the Complainant and its SANOFI trade mark” and found that “it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain name.” In this Panel’s view that is the position in this Complaint.
In showing bad faith use, the Complainant relies upon the evidence to show that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make illegitimate use of it within paragraph 4(b)(i) of the Policy.
It also submits that the inactive use of the website to which the disputed domain name resolves constitutes a passive holding of the disputed domain name which, on established authority including Telstra Corporative Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, does not prevent a finding of bad faith. This is particularly so when the Complainant’s mark has, as here, an international reputation.
Having considered the Complainant’s submissions and on the evidence and in the absence of a Response the Panel finds that disputed domain name <sanofipasteur.online> was registered and is being used in bad faith within 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 <sanofipasteur.online> be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Date: June 21, 2021