WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. VistaPrint Technologies Ltd

Case No. D2014-0842

1. The Parties

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

Respondent is VistaPrint Technologies Ltd of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <sanofii.com>, <sanofipaasteur.com>, <sanofiusservicesinc.com> (the “Domain Names”) are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2014. On May 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On May 23, 2014, the Center requested Complainant to confirm its mutual jurisdiction election. On the same day, Complainant confirmed the mutual jurisdiction by submitting an amendment to the Complaint to the Center by email.

The Center verified that the Complaint and 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 18, 2014.

The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on July 11, 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

Complainant is a very large French international pharmaceutical company with sales in more than 100 countries. The vaccines division of Complainant does business under the name “Sanofi Pasteur” and uses the name “Pasteur” under a worldwide license provided by the well-known Institut Pasteur of Paris, France. According to the evidence submitted by Complainant, in the United States of America, Complainant does business under the name “Sanofi US Services Inc”, previously known as Sanofi-Aventis US Inc., which was founded in 1950.

According to the evidence submitted by Complainant, Complainant has a large number of French and international trademark registrations for SANOFI.

Complainant is the owner of the following trademarks:

- French trademark SANOFI number 1482708, registered on August 11, 1988;

- Community trademark SANOFI number 000596023, registered on July 15, 1997;

- International trademark SANOFI number 591490, registered on September 25, 1992.

Complainant also owns the US trademark SANOFI registered with the United States Patent and Trademark Office under number 4178199 with a registration date of July 24, 2012.

In addition Complainant has multiple domain names and websites containing the SANOFI name and mark, in particular websites under “www.sanofi.com”, “www.sanofi.eu”, “www.sanofi.us”, and “www.sanofipasteur.com”.

The Domain Name <sanofii.com> was registered on October 14, 2013, and the Domain Name <sanofipaasteur.com> and <sanofiusserviecsinc.com> were registered on January 3, 2014.

The trademark registrations of Complainant were issued prior to the registration of the Domain Names.

5. Parties’ Contentions

A. Complainant

Complainant submits that the Domain Names are confusingly similar to its SANOFI trademark as the Domain Names contain the SANOFI trademark in its entirety. The addition of letters or generic and descriptive words to the SANOFI trademark is not sufficient to distinguish the Domain Names from the SANOFI trademark.

According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Names as Respondent is not affiliated or related to SANOFI in any way, nor is Respondent licensed or authorized to use the SANOFI trademark. Respondent is also not commonly known by the Domain Names and has not acquired any trademark or service mark rights in the SANOFI name or trademark.

All three Domain Names resolve to identical parking websites where users are redirected to its website “www.vistaprint.com/websites”. Respondent did not demonstrate use of the Domain Names in connection with a bona fide offering of goods or services. Respondent is also not commonly known by the Domain Names.

Complainant submits that Respondent has registered and is using the Domain Names in bad faith as Respondent no doubt had knowledge of the well-known trademarks of Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred or cancelled:

(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant has established that it is the owner of numerous trademark registrations for SANOFI. The Panel notes that Complainant’s registrations predate the creation date of the Domain Names.

The Domain Names <sanofii.com>, <sanofipaasteur.com> and <sanofiusserviecsinc.com> incorporate the entirety of the well-known SANOFI trademarks as its distinctive element. Many UDRP decisions have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s trademark in its entirety. The Panel notes that Complainant has produced evidence that it has a valid license for using the “Pasteur” name. The obvious misspellings in <sanofii.com> and <sanofipaasteur.com> are insufficient to avoid a finding of confusing similarity as the SANOFI trademark remains the dominant component of the Domain Names. The addition of the common, descriptive and non-distinctive elements “US”, “services” and “inc” in the Domain Name <sanofiusserviecsinc.com> is also insufficient to avoid a finding of confusing similarity.

The Panel finds that Complainant has proven that the Domain Names are confusingly similar to Complainant’s trademarks and paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Names incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, Respondent only uses the Domain Names in order to direct Internet users to a parking website containing the VistaPrint logo and other information on which Internet users are redirected to the website “www.vistaprint.com/websites” offering various website design and other Internet services provided by the parent company and affiliated companies of Respondent; such (re)direction cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names. In addition, the website does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the famous SANOFI trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Names nor has it acquired any trademark rights.

No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.

Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names and paragraph 4(a)(ii) of the Policy has been satisfied

C. Registered and Used in Bad Faith

The Panel finds that the Domain Names have been registered and are being used in bad faith. Complainant has longstanding rights in the SANOFI trademarks. Respondent knew or should have known that the Domain Names included Complainant’s famous mark.

The Panel notes that the Domain Names currently redirect Internet users to the website “www.vistaprint.com” which website is operated by the parent company and associated companies of Respondent; the VistaPrint companies provide various printing and website services. The Panel further notes that the Domain Names incorporate Complainant’s well-known trademarks in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Names with the intention to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Panel finally notes that Respondent has been found to have registered and used domain names in bad faith in other cases under the Policy, which suggests a pattern of such conduct on the part of Respondent (see Statoil ASA v. VistaPrint Technologies Ltd., WIPO Case No. D2014-0511; Maxim Healthcare Services, Inc. v. VistaPrint Technologies Ltd., WIPO Case No. D2009-1168).

The Panel finds that Complainant has proven that the Domain Names have been registered and are being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.

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 Domain Names <sanofii.com>, <sanofipaasteur.com> and <sanofiusservicesinc.com> be cancelled.

Dinant T. L. Oosterbaan
Sole Panelist
Date: July 21, 2014