WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Ojet Ohbrain
Case No. D2016-1053
1. The Parties
Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Ojet Ohbrain of California, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <sanoif.com> is registered with Cronon AG Berlin, Niederlassung Regensburg (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2016. On May 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details, and confirming that German is the language of the Registration Agreement for the disputed domain name. In response to an email communication from the Center to the Parties of May 30, 2016, Complainant requested that English be the language of the administrative proceeding. Respondent did not make any submission in this regard.
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 and 4, the Center formally notified Respondent of the Complaint in English and German, and the proceedings commenced on June 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 27, 2016.
The Center appointed Peter Wild as the sole panelist in this matter on July 4, 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.
The Panel notes that Respondent was notified of the proceeding in both English and German. Respondent has not filed any response, and the Panel accepts Complainant's request for English to be the language of the proceeding, and has rendered its decision in English accordingly.
4. Factual Background
Complainant is a leading producer and seller in the prescription pharmaceutical products market.
It is present worldwide, including in the United States.
Complainant and its trademark SANOFI enjoy a worldwide reputation. Complainant owns numerous trademark registrations around the world, for example:
- French trademark registration 1482708 SANOFI, registered on August 11, 1988;
- United States trademark registration 4178199 SANOFI, registered on July 24, 2012.
In addition, Complainant owns the following domain names reflecting its trademark:
- <sanofi.com> created on October 13, 1995;
- <sanofi.eu> created on March 12, 2006;
- <sanofi.us> created on May 16, 2006.
The disputed domain name was registered on May 4, 2016. The disputed domain name resolves to a place holding website without real content.
5. Parties' Contentions
According to Complainant, the disputed domain name <sanoif.com> is identical or at least confusingly similar to its trademark SANOFI, the switch of the last two letters being only a sign of typosquatting and having no influence on the overall appearance of the disputed domain name. Complainant also maintains that the trademark SANOFI is well known and furthermore alleges that Respondent has no rights nor legitimate interests in the disputed domain name and that registration and use of the disputed domain name are in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it is a well-established and well-known manufacturer of prescription and other pharmaceutical products in France with worldwide presence. It has used the SANOFI mark ("Complainant's Trademark") in connection with pharmaceuticals for many years.
Complainant further shows that it is the owner of numerous trademark registrations for the mark SANOFI including in France, as International Registrations, and in the United States, the earliest one going back to at least 1988 which clearly predates creation of the disputed domain name. Respondent disputes none of this.
Complainant has registered rights in the SANOFI trademark in connection with pharmceutical products. Complainant argues that the disputed domain name is almost identical to its well-known, registered trademark SANOFI, with the switch of the last two letters from "fi" to "if" and that this is a clear indication of typosquatting. The Panel finds that Internet users are likely to read the disputed domain name as "sanofi" and not "sanoif", as the dominating beginning of the disputed domain name is identical to Complainant's trademark and the reversed sequence of the letter "f" and "i" alone, at the end of the disputed domain name, in this context has no influence on the overall impression created by the disputed domain name. Furthermore, the Panel refers to numerous earlier UDRP decisions in which panels decided that SANOFI was a well-known trademark of Complainant (see, e.g., Sanofi v. Whois Agent, Whois Privacy Protection, Inc. / Jim Moretta, WIPO Case No. D2016-0096).
For these reasons the Panel finds:
a) Complainant has rights in the trademark SANOFI.
b) The disputed domain name is confusingly similar to Complainant's Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The website to which the disputed domain name resolves gives no indication of Respondent's possible rights or legitimate interests nor of any possible bona fide offerings of goods or services. Neither does Respondent's name reveal any such indication.
The burden of proof is on Complainant to demonstrate a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. After that, the burden of production shifts to Respondent to demonstrate rights or legitimate interests in the disputed domain name.
In light of the evidence, and in the absence of a response by Respondent, the Panel accepts Complainant's allegations as true that Respondent has no authorization to use the SANOFI trademark in the disputed domain name.
The Panel accepts that Respondent is not commonly known by the disputed domain name, Respondent has acquired no trademark or service mark rights, and Respondent is not authorized or licensed by Complainant.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and the second element of the policy is met.
C. Registered and Used in Bad Faith
As discussed in 6.A. above, numerous UDRP panels found Complainant's trademark SANOFI to be well known and the Panel in the present case concurs. The registration of a domain name which is identical or confusingly similar to a widely known trademark has repeatedly been found to establish a respondent's bad faith in registration and use (see Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384). The Panel comes to the conclusion that Respondent likely knew Complainant's trademark; there is no evidence to the contrary and therefore the Panel accepts Complainant's contentions in this regard that the disputed domain name was registered in bad faith.
In Telstra Corporative Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel found that it was not necessary for the respondent to actively use the disputed domain name, but that passive holding could establish use in bad faith as well. In the present case, the conditions for such finding are present: Complainant's trademark is widely known, Respondent did not participate in the proceeding and gave no plausible explanation for selecting the disputed domain name and the address given by Respondent in the WhoIs appears to be incomplete or wrong (see also Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875).
On this basis, the Panel finds that Respondent has registered and used the disputed domain name in bad faith and the third element of the policy is met.
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 <sanoif.com> be transferred to Complainant.
Date: July 6, 2016