WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Dustin Hofer

Case No. D2017-1733

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Dustin Hofer of Victoria, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <sanofipasteurca.com> is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2017, 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 September 25, 2017 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 September 25, 2017.

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 September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 18, 2017.

The Center appointed Christophe Imhoos as the sole panelist in this matter on November 9, 2017. 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 introduces itself as French multinational pharmaceutical company, ranking amongst the 4th world's largest multinational pharmaceutical companies by prescription sales, also engaged in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also developing over-the-counter medication (Annex 5 to the Complaint). It is also a multinational company settled in more than 100 countries on all continents employing 100,000 people (Annex 6.1 to the Complaint).

In addition, the Complainant submits that it offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines (Annex 6.4 to the Complaint).

Moreover, the Complainant submits that SANOFI PASTEUR, the vaccines division of SANOFI, produces more than 1 billion doses of vaccines every year, making it possible to immunize more than 500 million people in the world; as such, it is a world leader in the vaccine industry and offers the broadest range of vaccines, protecting against 20 infectious diseases, being thereby a worldwide famous pharmaceutical company, with approximately a quarter of the world's vaccine market (Annex 6.5 to the Complaint).

The Complainant finally submits that there is a worldwide consent of use of the name "Pasteur" (Annex 12 to the Complaint) from the French company Institut Pasteur, owner of registrations containing the highly distinctive term "Pasteur" alone or in combination with another term.

In sum, the Complainant presents itself as a major player on the worldwide pharmaceutical market, including in the United States of America ("United States").

The Complainant is, in particular, the owner of the following trademark registrations, among others (Annex 8 to the Complaint):

French trademark SANOFI (+device) No. 3831592, registered on May 16, 2011, in classes 1 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44, notably concerning pharmaceutical products;

French trademark SANOFI No. 96655339, registered on December 11, 1996, in classes 1, 3, 5, 9, 10, 35, 40 and 42, notably concerning pharmaceutical products;

French trademark SANOFI (+device) No. 92412574, registered on March 26, 1992, in class 5 concerning pharmaceutical products;

French trademark SANOFI No. 1482708, registered on August 11, 1988, in classes 1, 3, 4, 5, 10, 16, 25, 28 and 31, notably concerning pharmaceutical products;

European Union trade mark SANOFI No. 010167351, filed on August 2, 2011, and registered on January 7, 2012, in classes 3 and 5, notably concerning pharmaceutical products;

European Union trade mark SANOFI No. 004182325, filed on December 8, 2004, and registered on February 9, 2006, in classes 1, 9, 10, 16, 38, 41, 42 and 44, notably concerning products in pharmaceutical and medical spheres;

European Union trade mark SANOFI No. 000596023, filed on July 15, 1997, and registered on February 1, 1999, in classes 3 and 5, notably concerning pharmaceutical products;

International trademark SANOFI (+device) No. 1091805, registered on August 18, 2011, in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41 and 42 and 44, notably concerning pharmaceutical products, and designating among others Georgia, the Russian Federation, and Ukraine;

International trademark SANOFI No. 1092811, registered on August 11, 2011, in classes 1, 9, 10, 16, 38, 41, 42 and 44, notably concerning products in pharmaceutical and medical spheres, and designating among others Australia, Georgia, Japan, the Republic of Korea, Cuba, the Russian Federation, and Ukraine;

International trademark SANOFI No. 1094854, registered on August 11, 2011, in classes 3 and 5, notably concerning pharmaceutical products, and designating among others Australia, Georgia, Japan, the Republic of Korea, Cuba, the Russian Federation, and Ukraine;

International trademark SANOFI No. 674936, registered on June 11, 1997, in classes 3 and 5, notably concerning pharmaceutical products and designating among others Switzerland, Cuba, Romania, the Russian Federation, and Ukraine;

International trademark SANOFI (+device) No. 591490, registered on September 25, 1992, in class 5 concerning pharmaceutical products, and designating among others Switzerland, China, Cuba, Romania, the Russian Federation;

United States trademark SANOFI No. 4178199, filed on August 12, 2011, and registered on July 24, 2012, in classes 3, 5, 9, 10, 16, 35, 41, 42, 44 notably concerning pharmaceutical products.

In addition, the Complainant owns the following domain names, among others (Annex 9 to the Complaint):

<sanofi.com> registered on October 13, 1995;
<sanofi.eu> registered on March 12, 2006;
<sanofi.fr> registered on October 10, 2006;
<sanofi.us> registered on May 16, 2002;
<sanofi.net> registered on May 16, 2003;
<sanofi.ca> registered on January 5, 2004;
<sanofi.biz> registered on November 17, 2001;
<sanofi.info> registered on August 24, 2001;
<sanofi.org> registered on July 12, 2001;
<sanofi.mobi> registered on June 20, 2006;
<sanofi.tel> registered on March 17, 2011;
<sanofipasteur.com> registered on May 19, 2004;
<sanofipasteur.fr> registered on December 23, 2004;
<sanofipasteur.ca> registered on December 22, 2004.

The disputed domain name <sanofipasteurca.com> was registered on September 1, 2017, by the Respondent. The disputed domain name resolves to a parking page displaying pay-per-click links to various pharmaceutical products, some of which compete with those of the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant's submissions are mainly the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Firstly, the disputed domain name reproduces – or at least imitates – SANOFI trademarks, which, as themselves, do not have any particular meaning and are therefore highly distinctive.

Secondly, it can be said that the disputed domain name reproduces the Complainant's SANOFI trademarks and domain names, and particularly the domain names <sanofipasteur.com> and <sanofipasteur.ca>, what is sufficient to create a likelihood of confusion between the disputed domain name and the Complainant's trademarks and domain names.

Thirdly, the reproduction of the Complainant's trademarks as the attack and dominant part of the disputed domain name <sanofipasteurca.com> is confusingly similar to prior above cited trademarks, regardless of the adjunction of the geographical indication "ca", which remains highly descriptive of a location, namely "Canada" and the generic Top-Level Domain ("gTLD") extension ".com".

The disputed domain name comprises: (a) an exact reproduction of the Complainant's trademark; (b) combined with a descriptive geographical acronym and (c) followed by the gTLD ".com".

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Firstly, it is obvious that the Respondent does not have any legitimate interest in using the disputed domain name since the names "WhoisGuard Protected" or "WhoisGuard, Inc" do not bear any resemblance with the word SANOFI, which has no particular meaning and is therefore highly distinctive.

Secondly, "WhoisGuard Protected" or "WhoisGuard, Inc." indicated on the WhoIs records (Annex 1 to the Complaint) as registrant of the disputed domain name, is not the real registrant. WhoisGuard, Inc. is a company which offers its clients to register domain names in its name and on behalf of third party in order to keep secret the true identity of the registrant. It is a service offered by a number of domain name registrars. A user buys privacy from the company, who in turn replaces the user's contact information in the WhoIs with the contact information of a forwarding service.

Thirdly, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks.

Finally, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. Indeed, the disputed domain names leads to a parking website and has been registered only for the purpose of attracting Internet users into clicking on the sponsored links (Annex 11 to the Complaint).

(iii) The disputed domain name was registered and is being used in bad faith.

As regards bad faith registration, it should be considered that, 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 time it registered the disputed domain name. Indeed, the Complainant's websites are among the very first results for the search term "sanofipasteurca" in the Google search engine. There exists no tangible explanation for choosing this domain name other than to deliberately ride-off the Complainant's reputation.

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 association – between the Complainant's SANOFI trademarks and domain names and the disputed domain name.

As regards bad faith use, given the famous and distinctive nature of the marks SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant's marks at the time it registered the disputed domain name; this suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it.

In addition, the Respondent is using the disputed domain name to divert Internet users to a typical parking website with links to commercial websites, in order to take benefit of the Complainant's reputation for commercial profit (Annex 11 to the Complaint).

It is to be underlined that the Complainant is often the victim of such commercial unfair behavior as UDRP panels have already stated in various previous decisions (e.g., Sanofi v. Michael Tycoon (c/o Rebel.com Privacy Service), WIPO Case No. D2012-0497; Sanofi v. Vitalik Tkachok, WIPO Case No. D2011-1818; Sanofi v. Malevitch Viatcheslav, WIPO Case No. D2011-1815; Sanofi-aventis v. Treasure Entreprise Ltd., WIPO Case No. D2010-0964; Sanofi-aventis v. Transure Entreprise Ltd., Host Master, WIPO Case No. D2008-1636; Sanofi-aventis and Aventis Inc v. Andrew Miller, WIPO Case No. D2008-1061; see also Sanofi v. Contact Privacy Inc. Customer 0132380420 / ICS inc., WIPO Case No. D2013-0367).

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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 Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark SANOFI.

The Panel follows the UDRP cases (cited by the Complaint in its Complaint) which refer to the fact that a disputed domain name including terms referred to above does not affect the confusing similarity where the trademark is incorporated into the domain name in its entirety. Here, the Complainant's trademark SANOFI is clearly recognizable in the disputed domain name.

The Panel finds therefore that the disputed domain name is confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or 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.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).

The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Complainant has not granted any license or otherwise permitted the Respondent to use the Complainant's trademarks or to apply for any domain name incorporating the Complainant's trademarks. Moreover, the Respondent is not known by the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name without it being necessary to examine the other grounds set out in the Complaint and referred to above.

The Panel finds therefore that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are to be established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

In the instant matter, the Panel finds that the Respondent knew or should have known, at the time of the registration of the disputed domain name <sanofipasteurca.com>, of the existence of the Complainant's trademark rights over SANOFI, which were at least well known, if not famous.

The Respondent registered the disputed domain name, incorporating the Complainant's trademark, without authorization, and has made no use of the disputed domain name other than to display sponsored pay-per-click links to pharmaceutical products, some of which compete with those of the Complainant.

The Panel concludes therefore that bad faith registration and use within the meaning of paragraph 4(a)(iii) and, in particular paragraph 4(b)(iv), of the Policy is established.

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 <sanofipasteurca.com> be transferred to the Complainant, Sanofi.

Christophe Imhoos
Sole Panelist
Dated: November 23, 2017