WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Kelly, cti
Case No. D2016-1615
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Kelly, cti of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <sanof1.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2016. On August 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on August 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2016.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on September 16, 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
The Complainant is Sanofi, a French multinational pharmaceutical company that plays a major role in this industry globally. Sanofi results from the merger – through the past decades - of other pharmaceutical companies.
The Complainant is well known worldwide: it is present in all five continents, 100 countries, employs about 110,000 people around the world, and it has been increasing its presence in emerging countries.
Sanofi has a significant portfolio of drugs within major research areas such as vaccines, diabetes and cardiovascular, specialty care such as rare diseases, multiple sclerosis, oncology and immunology, general medicines and animal health. It is highly committed in fighting against counterfeit medicines thought strict controlling processes.
The Complainant is the owner of the trademark SANOFI, registered among several classes and in several countries, at least since 1992. For instance, the Complainant holds the French trademark no. 92,412,574 .SANOFI, registered on March 26, 1992 for goods in International class 5. The Complainant also owns several domain names that contain its trademark SANOFI. The domain name <sanofi.com> was registered on October 13, 1995.
The disputed domain name <sanof1.com> was registered on August 2, 2016. The disputed domain name resolves to an inactive website.
5. Parties’ Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
The disputed domain name <sanof1.com> is identical or confusingly similar to the trademark SANOFI
The Complainant argues it is the owner of the trademark SANOFI, registered in several different classes and countries, along with several domain names containing the trademark SANOFI, used by the Complainant in connection with its activity. The Complainant further alleges its trademark is renowned worldwide and was registered prior to the registration of the disputed domain name. The disputed domain name <sanof1.com> differs from the Complainant’s trademark SANOFI only by the substitution of the ending letter ‘i’ by the number ‘1’. Typographically, this replacement will be understood as the genuine trademark SANOFI and domain name, and thus it should be considered insignificant when it comes to depart the disputed domain name from the Complainant’s trademark. The Complainant claims this cannot be a mere coincidence and suggests that the Respondent’s registration of the disputed domain name appears to be indicative of typosquatting.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant alleges that the Respondent does not have any prior rights or legitimate interest to use a pre-existing worldwide recognized trademark as SANOFI and states that it has never given the Respondent any authorization or rights to use and modify the Complainant’s trademark and domain names. Additionally, the Complainant suggests that the Respondent intentionally provided fake and irrelevant contact information on the WhoIs Database and argues that the Respondent is not making a bona fide offering of goods and services once the disputed domain name refers to an inactive website.
The disputed domain name was registered and is being used in bad faith
The Complainant claims that the simple fact of a disputed domain name which appears to be confusingly similar to a complainant well known trademark is a strong indicator of bad faith, and this applies to this case. Given the fame of the trademark SANOFI, the Respondent should have been aware of the Complainant’s rights by the time it registered the disputed domain name; despite this, the Respondent registered the disputed domain name using the Complainant’s trademark and deliberately provided fake information regarding its name and address which strongly suggest bad faith. This suggests the Respondent registered the disputed domain name with the clear purpose of attracting Internet users to its website creating a likelihood of confusion with the Complainant’s domain names and websites. The passive holding of the disputed domain name is likely to cause irreparable prejudice to the Complainant’s general goodwill once it could lead Internet users to believe the Complainant is not on the Internet or it is out of business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element is that a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element is a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The Panel finds that the Complainant provided evidence that it has registered rights in the SANOFI trademark.
The dominant part of the disputed domain name <sanof1.com> comprises the term “sanof” and the number “1”. This results from the replacement of the final letter “i” of the word “sanofi” with the number “1”.
The Panel finds that the disputed domain name only differs from the word “sanofi” by the replacement of the final letter, which is an obvious misspelling of the trademark SANOFI and that typographically “sanof1” will tend to be automatically perceived as “sanofi” which is identical to the Complainants trademark SANOFI.
The generic Top-Level Domain (“gTLD”) “.com” is insufficient to distinguish a disputed domain name from a complainant’s mark, as several previous UDRP decisions have stated. Specifically in this case, this gTLD “.com” is the same as the Complainants well known domain name <sanofi.com>, which contributes to even reinforce the similarity and thus the confusion with the Complainant’s trademark.
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
In order for a complainant to prove that, a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name to the panel.
The Panel accepts that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has any link to the trademark SANOFI or that it had ever been authorized to use and/or modify this trademark by the Complainant. Additionally, the Respondent is not making a bona fide offering of goods and services once the disputed domain name resolves to an inactive page.
In the absence of a response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant’s trademark SANOFI is an international trademark, widely recognized and well known, with an outstanding reputation. Previous UDRP decisions have found that the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of bad faith.
The Panel’s understanding is that it would be unlikely that the Respondent would come up, naturally and by an act of creativity, with the dominant part of the disputed domain name. On the contrary, the Panel agrees with the Complainant that the disputed domain name results from the replacement of the final letter of the word “sanofi”, identical to the Complainant’s trademark SANOFI. Thus, the Panel concludes that the Respondent did intentionally incorporate a well-known trademark into the disputed domain name.
The Complainant’s trademark is registered since at least 1992, and has been widely known prior to that. Besides, the domain name <sanofi.com> was registered in 1995. The disputed domain name was registered recently in August 2016, which leads the Panel to find highly unlikely that the Respondent had not been aware of the Complainant’s trademark and its rights by the time it registered the disputed domain name. If not, a quick Google search would fully enlighten the Respondent. This fact is also a strong indicator of the registration in bad faith.
Finally, with respect to the use of the disputed domain name, it resolves to an inactive website. Along with the previous facts and with the Respondent not having filed any response to the Complaint and the Respondent’s apparent use of false details regarding its name and address and the apparent lack of so-called active use suggests the use of the domain name is in bad faith. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.
The Panel therefore finds that the third element of the Policy has been satisfied.
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 <sanof1.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: September 27, 2016