WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Farris Nawas
Case No. D2014-0705
1. The Parties
The Complainant is Sanofi of Antony, France, represented by Selarl Marchais & Associés, France.
The Respondent is Farris Nawas of Austin, Texas, United States of America (“USA”).
2. The Domain Name And Registrar
The disputed domain name <sanofi.careers> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2014. On April 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 30, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2014.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 5, 2014. 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 is a French-based multinational pharmaceutical company with an established worldwide reputation. In 2012 its worldwide sales totalled in excess of Euro 30,000 million.
The Complainant is the proprietor of numerous trade mark registrations covering its name. For present purposes it is only necessary to identify one of them, namely Community Trade Mark registration no. 10167351 for SANOFI (word) dated August 2, 2011 in classes 3 and 5 for, inter alia,pharmaceutical products.
The Domain Name was registered on March 6 2014 and has been connected to a pay-per-click parking page of the Registrar featuring advertising links to various websites. The nature of the links seem to vary depending upon the geo-location of the visitor, but subject to a few exceptions, the links as a generality do not concern either the Complainant’s area of business or careers. The parking page indicates that the Domain Name may be for sale.
On March 17, 2014 the Complainant wrote to the Respondent drawing the Respondent’s attention to the Complainant’s trade mark rights and the potential for confusion among the Complainant’s customers resulting from the Respondent’s registration of the Domain Name and seeking transfer of the Domain Name.
The Respondent replied the same day. He does not explain why he registered the Domain Name, but states that it will never be used in any objectionable fashion and will only connect to the Registrar’s default landing page. He states “I have the right to the Domain Name as I have no intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” The email goes on to spell out to the Complainant the cost to the Complainant in both time and money of filing a complaint under the Policy and suggests that payment to the Respondent of USD 850 for the Domain Name would be a suitable compromise.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its SANOFI registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(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.
B. Identical or Confusingly Similar
The Domain Name comprises two levels, “sanofi” at the second level and “careers” at the top level. In light of the distinctiveness of the name “Sanofi”, which has no obvious dictionary meaning, read together (“sanofi careers”) the two levels of the Domain Name are likely to suggest to most Internet users a site of or associated with the Complainant and devoted to career opportunities at the Complainant.
The Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s SANOFI registered trade mark.
C. Rights or Legitimate Interests
The Complainant’s case under this element of the Policy is simple. The Respondent has adopted for the Domain Name the Complainant’s well-known trade mark, a trade mark with which he has no connection and in respect of which he holds no licence from the Complainant. Moreover, it is being used to connect to a pay-per-click parking page deriving revenue and which indicates that the Domain Name is for sale.
The Panel is satisfied that the Complainant has made out a prima facie case calling for an answer from the Respondent. The Respondent has not responded to the Complaint. There is therefore no formal answer. However, on March 17, 2014 prior to the filing of the Complaint the Respondent did email the Complainant in response to a letter from the Complainant (see section 4 above). For the purposes of this proceeding the Panel accepts the email as the Respondent’s answer.
In that email the Respondent acknowledges the Complainant’s trade mark rights in respect of the name “Sanofi” and claims no rights for himself in respect of that name as such. He does, however, claim a right to the Domain Name. “I have the right to the Domain Name as I have no intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” This wording is taken from paragraph 4(c) of the Policy, which reads in relevant part: “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 [this element of the Policy] …. (c) you are making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
If it were in fact the case that the Respondent could clearly demonstrate that he has no commercial aspirations for the Domain Name, he might in very specific circumstances have an arguable case either under this element of the Policy or the next one, as it is certainly true that many take the view that the Policy was never intended to and does not cover domain names registered and used for non-commercial purposes.
However, insofar as this element of the Policy is concerned, the Panel is not satisfied with the Respondent’s answer. As a general proposition people do not go to the trouble and expense of registering domain names for no purpose. What was the Respondent’s purpose? Respondent did not reply to the Complainant’s contentions. Nor did he offer an explanation when corresponding with the Complainant in March 2014 (see section 4 above). Why select the Complainant’s trade mark with which he has no connection? If his purpose is truly non-commercial, why register in the “.careers” gTLD, a gTLD which may seem more apt for commercial use rather than non-commercial use? Why permit the Registrar to connect the Domain Name to a default parking page, if there is no intent for any commercial advantage? Why permit the Registrar to indicate on the default parking page that the Domain Name is for sale?
If the Respondent had satisfactory answers to any of these questions, he could readily have provided them, but elected not to do so. It is noteworthy that his selective quote from paragraph 4(c)(iii) of the Policy omits the references to legitimacy of use and fairness of use.
As amplified in section D below, the Panel is left with the strong suspicion that the Respondent’s intention in respect of the Domain Name has always been to monetise it whether by sale or otherwise.
In the absence of a satisfactory answer to the Complainant’s contentions and in the absence of any obvious reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondent has no such rights or legitimate interests.
D. Registered and Used in Bad Faith
To succeed under this element of the Policy the Complainant must prove to the satisfaction of the Panel that the Respondent both registered the Domain Name in bad faith and is using it in bad faith.
The Respondent contends that he registered the Domain Name having “no intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” However, as the Panel has found at B above, most Internet users are likely to assume that any site connected to the Domain Name is a site of or associated with the Complainant and devoted to career opportunities at the Complainant. Visitors visiting the site on the basis of that assumption will have been deceived. The Panel agrees with the Complainant that the Respondent’s choice of domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s SANOFI trade mark. Thus, in the view of the Panel, the Respondent must have been aware of the significant risk of confusion when registering the Domain Name.
Registering a domain name which so directly targets a particular trade mark and which is likely to lead to significant Internet user confusion is, in the view of this Panel, abusive. The fact that the domain name is registered in the “.careers” gTLD sits uncomfortably alongside the Respondent’s assertion that his intention was not with a view to commercial gain.
Even if it is the case that the Respondent is currently receiving no revenue from the pay-per-click links on the parking page (the page in question seems to be a “Free” parking page of the Registrar, which indicates to the Panel that any revenue derived from the pay-per-click links on the page will inure to the benefit of the Registrar rather than the Respondent) the Panel finds it very difficult to believe that a domain name of this nature would not have been registered for some commercial purpose of benefit to the Respondent. Indeed, for some panels the fact that the Registrar is deriving a commercial gain is enough for a finding of bad faith under paragraph 4(b)(iv) of the Policy (see Villeroy & Boch AG v. Mario Pingerna WIPO Case No. D2007-1912). Moreover, the Respondent’s commercial arrangement with the Registrar is not set in stone. He could readily change it to his advantage in the future.
However, the Panel prefers to deal with the case on another basis. Paragraph 4(b)(i) of the Policy, provides that if the following circumstances are found by the Panel to be present that shall be evidence of the registration and use of a domain name in bad faith, namely “circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
The Panel discounts the indication on the Registrar’s default parking page that the Domain Name may be for sale as that is commonly a standard legend on registrar default parking pages and may not reflect the view of the domain name registrant. However, the Respondent’s email to the Complainant of March 17, 2014 is, in the view of the Panel, a reliable indicator as to his intentions and particularly when taken with the Respondent’s election not to respond to the Complainant’s contentions as set out in the Complaint.
One might expect the Respondent, seeking to demonstrate his “innocence” when responding to the Complainant’s opening letter, to come up with an explanation for the choice of the Domain Name, a domain name which so obviously targets the complainant’s trade mark. The Respondent did not attempt to do so. Instead, he asserted and based his “right” to the Domain Name on his having no commercial objective and notwithstanding that on its face the Domain Name has an overtly commercial flavour and is in commercial use, albeit by the Registrar’s parking page. He then goes on in that email to spell out the expense in both time and money if the Complainant is to seek relief via the Policy and suggests a sensible compromise, namely a price of USD 850 for the Domain Name.
The Panel finds on the balance of probabilities on the preponderance of the evidence in the case file that the Respondent registered the Domain Name with a view to exploiting it commercially on the back of the fame of the Complainant’s trade mark and probably in the hope that the Complainant would pay him a sum of money substantially in excess of his documented out-of-pocket costs directly related to the Domain Name, that being a cheaper way out for the Complainant than pursuing this administrative proceeding.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sanofi.careers> be transferred to the Complainant.
Date: June 10, 2014