WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Domain King
Case No. D2015-1799
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain King of Hyderabad, India.
2. The Domain Names and Registrar
The disputed domain names <mysanofigroup.com> and <sanofigroup.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2015. On October 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. The Complainant filed an amended Complaint on October 14, 2015.
The Center verified that the Complaint together with the amended 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, paragraph 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 6, 2015.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on November 16, 2015. 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 following facts and circumstances are to be found in the Complaint and its Annexures and, in the absence of challenge, may be accepted as background.
The Complainant is a French multinational pharmaceutical company with headquarters in Paris, France, and is ranked the world's fourth largest multinational pharmaceutical company in respect of prescription sales. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but it also develops and trades in over-the-counter medication.
The Complainant is a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA). Historically, the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011.
The Complainant is a multinational company settled in more than 100 countries on all five continents employing 110,000 people.
The Complainant benefits from a large portfolio of high-growth drugs.
With consolidated net sales of EUR 33.77 billion in 2014 and EUR 32.95 billion in 2013, an investment of EUR 4,824 million in 2014, its Research and Development portfolio includes 36 projects in clinical development, 12 of which are at advanced stages.
The Complainant 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.
Furthermore, the Complainant's worldwide recognition has been once more enshrined in the annual "L2 Digital IQ Index: Pharmabrand & Healthcare Providers" worldwide brand survey issued April 18, 2011, in which the multinational appeared in the "Flash of Genius" in reference to its promoting patient resources.
Of particular relevance, the Complainant is the owner of, inter alia, the following registered trademarks:
(a) French trademark SANOFI, number 1482708, registered on August 11, 1988, in classes 1; 3; 4; 5; 10; 16; 25; 28; 31, notably concerning pharmaceutical products.
(b) Community Trade Mark SANOFI number 000596023, filed on July 15, 1997, and registered on February 1, 1999, in classes 3; 5, notably concerning products in pharmaceutical and medical spheres.
(c) International trademark SANOFI (+device) number 591490, registered on September 25, 1992, in class 5 concerning pharmaceutical products, and designating among others Switzerland, China, Cuba, Romania, the Russian Federation.
(d) Indian trademark SANOFI number 423615, registered on June 25, 1984, in class 5 concerning pharmaceutical products.
In addition, the Complainant is also the owner of the domain name <sanofi.com> registered on October 13, 1995, and others reflecting its SANOFI trademark.
All of the abovementioned trademarks and domain names, registered all over the world and containing the distinctive word "sanofi" are prior to the registration of the disputed domain names.
The disputed domain names were both created on February 22, 2015 and are connected to a parking website, with sponsored links to other websites.
5. Parties' Contentions
The Complainant draws attention to the fact that not only do the disputed domain names reproduce its trademark in its entirety but also asserts that that factor is sufficient to establish that the disputed domain names are identical or confusingly similar to that of the Complainant's various registrations. It points out that the mere addition of the words "my" and "group" do not affect the similarity between the Complainant's trademark and the disputed domain names.
The further allegation advanced is that there is no affiliation of the Respondent and the Complainant in any way or that the former has been granted any rights to use and register its trademark or seek registration of any domain name incorporating the trademark. In addition, it is contended that the disputed domain names are not used bona fide or any other legitimate use. Moreover, the Complainant contends that the use of the disputed domain names on a parking site is not a bona fide noncommercial use.
The Complainant also asserts that the Respondent must have been aware or constructively aware of the existence of the Complainant's trademark, being a well-known mark, and therefore by reason of its registration and subsequent use, this constitutes bad faith, particularly by reason of the incorporation of the whole of the trademark in the disputed domain names.
The Complainant contends that the Respondent intentionally and opportunistically attempted to attract, for commercial gain, Internet users to its websites thereby creating a likelihood of confusion with the Complainant's trademark as to the source and/or affiliation of its websites and products.
The Complainant seeks cancellation of the disputed domain names.
B. The Respondent
The Respondent did not reply to the Complainant's contentions.
The only communication from the Respondent was in response to the Complainant's cease-and-desist letter. This will be addressed hereafter.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a 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."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
"(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith."
Paragraph 4(b) of the Policy sets out four illustrative circumstances which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle a complainant to finding in its favour by reason thereof, as failure by a complainant to discharge the burden of proof will still result in the complaint being denied (M. Corerntin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovative Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The panel is nevertheless not bound to accept all that has been put up by a complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (see Allianz Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
From this the Panel considers that it may be accepted that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovative Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000 Inc., supra; RX America LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/S v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., supra; Group Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).
C. Domain Name is Identical or Confusingly Similar
The Complainant put up details of its registered trademarks, which it owns as well as the domain names referenced above.
The fact that the word mark SANOFI has been incorporated entirely into the disputed domain names is sufficient to establish that they are identical or confusingly similar to the Complainant's registered marks (Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios Inc. v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkins/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016). It is moreover, as submitted by the Complainant, an invented word with no meaning and, therefore, highly distinctive.
In Airbus SAS, Airbus Operators GmbH v. Alesini Pablo Hsima, WIPO Case No. D2013-2059, the following was found by the panel regarding the addition of the word "group":-
"Previous UDRP panels have found that where a distinctive trade mark is wholly incorporated in a domain name, adding a descriptive term (i.e. "group") will generally not distinguish the domain name from the trade mark (see, e.g., Guccio Gucci S.p.A. v. Smith Davilv, WIPO Case No. D2012-0052 and O2 Holdings Limited v. Profile Group, DNS Manager, WIPO Case No. D2013-1340). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the Trade Mark. The addition of the descriptive term "group" does nothing to prevent the confusing similarity of the Disputed Domain Name with the Trade Mark."
Similarly the addition of the word "my" does not detract from, but probably (as in the case of the addition of "group") may increase the confusing similarity (Rockefeller & Co., Inc. v. All Value Network a/k/a AVN, WIPO Case No. D2011-1957).
The addition of the generic Top-Level Domain ".com" is generally not an element of distinctiveness that ought to be taken into consideration when evaluating the identity and/or confusing similarity of a complainant's trademark and the domain name (Magnum Piering Inc. v. The Mudjackers and Garwood S Wilson Sr., WIPO Case No. D2000-1525; Rollerblade Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).
In these circumstances the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
"(a) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(b) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(c) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or servicemark at issue."
Although paragraph 4(a)(ii) requires the complainant to prove that the respondent has no rights to or legitimate interests in the domain name, once the complainant establishes a prima facie case that the respondent has no rights or legitimate interests in the domain name, the burden of production of evidence on this factor shifts to the respondent to rebut the showing, despite the overall burden of proof remaining upon the complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios Inc. v. David Burns & Adam – 12 Dot Com, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is evidenced by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trademark SANOFI and that the Respondent has not been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark and that any unauthorised use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S A v. Peikang, WIPO Case No. D2000-0055; Caesar's World Inc. & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorisation on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by licence or otherwise, which also militates against the Respondent having rights or legitimate interests or other entitlements in the disputed domain names which might fall within that purview (Sybase Inc. v. Analytical Systems, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in 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 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 again, 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."
The Complainant contends that the Respondent knew or should have known that its marks were well-known and thus in proceeding to register and use them, the Respondent would be acting in bad faith. For this proposition the Complainant relies upon Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384where it was found:
"Given the fact the Complainant's trademark is famous and known worldwide and in the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of or should have known of the Complainant's trademark and services at the time the Respondent registered the disputed domain name, and did so with a view to illegitimately take advantage thereof. It is well-established that knowledge of the Complainant's intellectual property rights, including trademarks, at the time of registration of the disputed domain name is highly indicative of bad faith registration (NBC Universal Inc. v. Szk. com / Michele Dinoia, WIPO Case No. D2007-0077; and ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287)."
The Panel agrees with the views expressed above.
The disputed domain names are connected to a parking website, with sponsored links to other websites, with the result that the Respondent is using the disputed domain names intentionally to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites (Classmates Online Inc. v. Mary-Lamb, WIPO Case No. D2009-0715). Whether or not the Respondent is personally the beneficiary or whether the revenue accrues elsewhere does not, in the view of the Panel, detract from the notion that any gain so sought to be derived need not be derived by a respondent himself in that it is sufficient if a third party stands to reap the profits of wrongful conduct (Villeroy & Bosch A G v. Mario Pingerna, WIPO Case No. D2007-1912). Moreover, the use of a third party's name is not bona fide use (F. Hoffman-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451).
The implication arising from the disputed domain names, in the mind of a would-be customer, is therefore clearly that they are either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith registration and use (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Finally, the Panel considered the reply of the Respondent to the Complainant's cease-and-desist letter, sent prior to filing of the Complaint. All that it stated was that the Respondent disputed that it had acted in bad faith but said that it had no problem giving back the disputed domain names provided that it could obtain compensation for its investment by way of a negotiated amount which is, prima facie, aimed at obtaining more than "documented out-of-pocket expenses directly related to the domain name" as envisaged by paragraph 4(b) of the Policy referred to above.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain names <mysanofigroup.com> and <sanofigroup.com> be cancelled.
Archibald Findlay SC
Date: November 25, 2015