WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Sm Goo
Case No. D2017-0402
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Sm Goo of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <sanofiempoweringlife.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2017. On February 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2017, 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 March 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 27, 2017.
The Center appointed Leticia Caminero as the sole panelist in this matter on April 10, 2017. 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 headquartered in Paris. The Complainant is ranked among the world's largest multinational pharmaceutical companies by prescription sales. Sanofi is involved in research and development, manufacturing and marketing of pharmaceutical products for sale, mainly in the prescription market, while also having over-the-counter medication. Sanofi offers a wide range of patented prescription drugs to treat patients with serious diseases and is a leading pharmaceutical company in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. The Complainant is settled in more than 100 countries on all continents, including Japan.
The Complainant owns numerous SANOFI and EMPOWERING LIFE registered trademarks, notably concerning pharmaceutical products, in Japan, France, the European Union, Georgia, the Russian Federation, Ukraine, Australia, the Republic of Korea, Cuba, Switzerland and the United States of America, among others. For instance, the Complainant is the owner of the European Union Trade mark Registration Number 4182325 SANOFI, registered on February 9, 2006, as well of the International Trade mark Registration Number 1301055 EMPOWERING LIFE, registered on March 23, 2016. In addition, the Panel notes that the Complainant filed the European Union Trade mark Application No. 016123581 "SANOFI EMPOWERING LIFE" on February 1, 2016.
The Complainant holds several domain names, such as <sanofi.com> registered in 1995, which are used in connection with its business activities.
The Respondent registered the disputed domain name <sanofiempoweringlife.com> on February 4, 2017. The disputed domain name resolves to a website displaying the message: "sanofiempoweringlife.com is coming soon".
On February 17, 2017, the Complainant's counsel sent to the Respondent a cease and desist letter, by email, in which it explained that the registration of the disputed domain name <sanofiempoweringlife.com> constituted a breach of the Complainant's prior rights over the trademarks SANOFI and EMPOWERING LIFE and requested the immediate transfer of the disputed domain name. As a reply, on February 18, 2017, the Respondent sent the following message to the Complainant:
We did not know it is related to your TM. Sorry about it
But also we can not just give it to you due to the our company policy.
we can transfer it to you at EUR 1300.
Please let us know ASAP since our office will be closed from 2/24 because of vacation.
5. Parties' Contentions
As a first argument, the Complainant declares that the disputed domain name <sanofiempoweringlife.com> is an exact reproduction of the Complainant's trademarks SANOFI and EMPOWERING LIFE, regardless of the generic Top-Level Domain ("gTLD") extension ".com".
Moreover, the Complainant's trademarks have been regarded as well-known by previous UDRP panels, e.g., Sanofi v. Contact Privacy Inc. Customer 124968375 / Tanya Severson, WIPO Case No. D2016-2544, which enhances the likelihood of confusion between the disputed domain name and the Complainant's trademarks.
Secondly, the Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the name "Sm Goo" does not bear any resemblance with the trademark SANOFI and there is no indication that the Respondent has been commonly known by the disputed domain name. Likewise, given that the disputed domain name results in an inactive page, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Thirdly, the Complainant contends that the disputed domain name has been registered and is being used in bad faith by the Respondent. Provided the famous and distinctive nature of the mark SANOFI, the Respondent was likely to have had knowledge of the well-known trademark. This suggests that the Respondent acted with opportunistic bad faith. Furthermore, the disputed domain name results in an inactive webpage, and previous UDRP panels have found that this use falls within the concept of use in bad faith, referring to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Additionally, the bad faith is reinforced by the Respondent's proposal to sell the domain names in excess of its out-of-pocket costs.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 has been registered and is being used in bad faith.
The Complainant bears the burden of proof on each of these elements. Since the Respondent did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. Nevertheless, the Complainant must still support its allegations with actual evidence to succeed in this UDRP proceeding.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <sanofiempoweringlife.com> is confusingly similar to the Complainant's trademarks SANOFI and EMPOWERING LIFE. The disputed domain name is a full reproduction of the Complainant's trademarks SANOFI and EMPOWERING LIFE, followed by the gTLD ".com". The Panel notes that the gTLD ".com" does not affect the finding of confusing similarity in the present case.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant.
B. Rights or Legitimate Interests
The Panel finds that there is no evidence in the case file that the Respondent, before any notice of the present dispute, used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Likewise, there is no evidence in the case file that the Respondent has been commonly known by the disputed domain name.
The Panel finds that the Complainant has established a prima facie case, summarised in section 5.A above, that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed any Response to refute the Complainant's prima facie case.
In the absence of any Response to the Complaint, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Panel considers that the Respondent had prior knowledge of Complainant's trademarks and registered the disputed domain name reflecting the Complainant's trademarks without authorization. Moreover, despite the Respondent's communication with the Complainant prior to the filing of the Complaint, the Panel finds that the reproduction of the Complainant's trademark application for "SANOFI EMPOWERING LIFE" cannot be merely a coincidence, and is additional evidence of the Respondent's bad faith registration of the disputed domain name. The disputed domain name resolves to a "coming soon" website, and according to the conditions of this case, this does not prevent a finding of bad faith. Furthermore, the offer presented by the Respondent to sell the disputed domain name to the Complainant for EUR 1,300, which would appear to amount to more than the documented out−of−pocket costs directly related to the disputed domain name,, clearly supports the existence of bad faith within the meaning of paragraph 4(c)(i) of the Policy.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.
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 <sanofiempoweringlife.com> be transferred to the Complainant.
Date: April 23, 2017