WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta
Case No. D2016-0096
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Jim Moretta of Cape Town, South Africa.
2. The Domain Name and Registrar
The disputed domain name <sanofi-uk.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2016. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2016, 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 January 19, 2016 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 January 20, 2016.
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 proceeding commenced on January 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2016.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on February 29, 2016. 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
4.1. With consolidated net sales of EUR 33 billion in 2014 and EUR 32.95 billion in 2013, the Complainant is a French multinational pharmaceutical company headquartered in Paris (France), ranking as the world’s fourth largest multinational pharmaceutical company by prescription sales. The Complainant engages in research and development, as well as the manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also in the over-the-counter medication market.
4.2. 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.
4.3. The Complainant is a multinational company present in more than 100 countries on 5 continents employing 110,000 people. With an investment of EUR 4,824 million in 2014, the Complainant’s Research and Development portfolio includes 36 projects, with 111 in clinical development, 12 of which are at advanced stages.
4.4. The Complainant’s SANOFI brand was founded in 2004 and today is recognized worldwide. The disputed domain name was registered on September 8, 2015. The disputed domain name is inactive.
5. Parties’ Contentions
5.1. The Complainant states that the Respondent registered, without authorization from the Complainant, the disputed domain name <sanofi-uk.com> on September 8, 2015.
5.2. Furthermore, the Complainant contends that the disputed domain name contains the SANOFI mark in its entirety, plus the geographic identifier “uk” which is purely descriptive as it commonly stands for the “United Kingdom of Great Britain and Northern Ireland”.
5.3. The Complainant states that the Respondent lacks rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
5.4. The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) proves each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.
A. Identical or Confusingly Similar
6.4. The Complainant’s SANOFI brand was founded in 2004 and today is recognized worldwide. Furthermore, the Complainant is the rightful owner of several SANOFI trademarks and domain names including that mark around the world.
6.5. The disputed domain name <sanofi-uk.com> reproduces the SANOFI trademarks, which, as themselves, do not have any particular descriptive meaning and are therefore highly distinctive.
6.6. The Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trademark and trade name SANOFI. It has invested substantial financial resources over the years to advertise and promote the company and its SANOFI trademarks in countries all over the world.
6.7. The disputed domain name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) combined with a geographic location; and (c) followed by the Top-Level Domain suffix “.com”. It is well established that the generic Top Level Domain (gTLD) used as a part of a domain name should generally be disregarded under the first UDRP element as gTLDs do not serve to distinguish domain names. The relevant comparison to be made is with the second level portion of the disputed domain name.
6.8. Thus, the addition of the geographical location “uk” to a trademark does not prevent the disputed domain name from being confusingly similar to the trademark. See Koninklijke Philips Electronics v. Gopan, WIPO Case No. D2001-0171.
6.9. Finally, it must be taken into account that the likelihood of confusion is increased by the reputation of the Complainant’s trade name, trademarks, domain names and, more generally speaking, goodwill. ln this regard, previous UDRP panels have already considered that the Complainant’s trademarks are “well-known” in many jurisdictions. See, e.g.: Sanofi v. Xiamen eNameNetwork Co., Ltda, WIPO Case No. D2015-1598; and Sanofi v. Domain King, WIPO Case No. D2015-1799.
6.10. Accordingly, the disputed domain name is confusingly similar to the SANOFI trademark.
The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.11. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
6.12. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the SANOFI trademark in any manner, including in a domain name.
6.13. The Respondent has neither prior right nor legitimate interest to justify the use of the well-known trademarks of the Complainant in the disputed domain name.
6.14. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is he 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 given that the website at the disputed domain name is not used at all by the Respondent.
6.15. Under these circumstances, including the Respondent’s default, the absence of any permission by the Complainant and the lack of any plausible legitimate reason for the Respondent to use the disputed domain name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Accordingly, the second element of the Policy has been established.
C. Registered and Used in Bad Faith
6.16. 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 the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
6.17. The Respondent has neither right nor legitimate interest to justify the inclusion of the Complainant’s well-known SANOFI trademark in a domain name. This absence of legitimate interests indicates a lack of good faith.
6.18. Moreover, 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 notice, if not actual notice, as to the existence of the Complainant’s marks at the time he 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 illegitimate use of it.
6.19. Indeed, it must be recalled that SANOFI is today one of the leaders among pharmaceutical companies, ranking first in Europe and ranked fourth in the world in the pharmaceutical industry. For instance, it is ranked top in many worldwide surveys, including in the L2 Digital IQ Index “Pharm & Healthcare Providers” released by Scott Galloway, NYU Stern dated April 18, 2011.
6.20. Furthermore, it must be recalled that the Complainant is the owner of SANOFI trademarks which are well-known worldwide and of domain names reproducing the distinctive terms “Sanofi” as well as a corporate business name. In cases in which the well-known status of a complainant’s trademark is well-established, numerous UDRP panel decisions have acknowledged that this consideration is, in itself, indicative of bad faith. See NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077; and ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287.
6.21. Therefore, it can only be found that the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name since it could lead Internet users searching for official Sanofi websites to the litigious pages. This knowledge characterizes the Respondent’s bad faith in registering the disputed domain name.
6.22. Under these circumstances, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the disputed domain name in bad faith. In these circumstances the passive holding of the disputed domain name does not prevent this finding.
6.23. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7.1. 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, <sanofi-uk.com>, be cancelled.
José Pio Tamassia Santos
Date: March 14, 2016