WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / I S, ICS INC

Case No. D2017-2218

1. The Parties

The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.

The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America (“United States”) / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <webmailsanofi.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2017. On November 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 November 13, 2017, 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 November 14, 2017.

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 proceedings commenced on November 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2017.

The Center appointed Andrew Mansfield as the sole panelist in this matter on January 5, 2018. 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 a French multinational pharmaceutical company headquartered in Paris, France. The Complainant provides data that indicates it had consolidated net sales of EUR 33.82 billion in 2016, EUR 34.06 billion in 2015, and EUR 31.38 billion in 2014. It is one of the world’s largest multinational pharmaceutical company by prescription sales. 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 has rights in, inter alia, French trademark registration number 1482708 for SANOFI, registered on August 11, 1988.

The Complainant is a multinational company settled in more than 100 countries. It offers a wide range of patented prescription drugs and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.

The disputed domain name resolves to a website that displays pay-per-click links (including those that reference the Complainant) and a notice indicating that the disputed domain name is for sale.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence that it is a significant and leading international corporation in the field of pharmaceutical research, development, production, and distribution. It has been known by the name Sanofi since 2011, and Sanofi is a well-recognized brand in numerous countries.

The Complainant asserts that the disputed domain name <webmailsanofi.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In support of this proposition, the Complainant introduces evidence of many French, European Union, International, and United States trademarks. These are illustrative and not exhaustive. The Complainant also has registered and is using a large number of domain names that begin with “Sanofi”.

The disputed domain name <webmailsanofi.com> incorporates the Complainant’s well-known and distinctive trademark SANOFI in its entirety. The Complainant references earlier UDRP panel decisions that find that such incorporation should result in a finding that the domain name is confusingly similar to that mark despite the addition of the word “webmail”.

The Complainant argues that the Respondent has no rights or legitimate interests in respect to the disputed domain name. The Complainant states that this is supported by the use to which the disputed domain name has been committed. The disputed domain name leads to a parked website with sponsored links, the use of which by those searching for Sanofi information results in some compensation to the Respondent.

Finally, the Complainant avers that the disputed domain name was registered and is being used in bad faith. To support this argument, the Complainant cites an earlier UDRP panel decision that indicated that a UDRP panel might conclude, based on the famous and distinctive nature of the mark SANOFI, that a party, such as the Respondent, that registers a domain name containing the mark SANOFI 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 it registered the disputed domain name. The Complainant indicates that this supports its contention that the Respondent acted with opportunistic bad faith in registering the disputed domain name.

The use of the disputed domain name, according to the Complainant, is commercial and supports a finding that the continued use also demonstrates bad faith. Certain links on the webpage to which the disputed domain name resolves appear to be sponsored links that might result in compensation to the Respondent. The Respondent further lists the domain as “for sale”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (i.e., 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.

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.

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

The disputed domain name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) combined with the term “webmail”; and (c) is followed by the generic Top-Level Domain (“gTLD”) suffix “.com”. It is well established that the gTLD used as a part of a domain name should 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.

The addition of the term “webmail” to the trademark SANOFI does not prevent the disputed domain name from being confusingly similar to the trademark. It also must be taken into account that the likelihood of confusion is increased by the well-known mark of the Complainant. Illustrating this fact, previous UDRP panels have already found that the Complainant’s trademarks are “well-known” in many jurisdictions. See, e.g., Sanofi v. marylee / Xiamen eNameNetwork Co., Ltd., WIPO Case No. D2015-1985; and Sanofi v. Domain King, WIPO Case No. D2015-1799.

Accordingly, the disputed domain name is confusingly similar to the SANOFI trademark. The first element of the Policy has been established.

B. Rights or Legitimate Interests

The Complainant provided evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Among other arguments presented, the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the SANOFI trademark. The Respondent further does not appear to have any prior right nor legitimate interest to justify the use of the well-known trademark of the Complainant in the disputed domain name. It is clear to the Panel that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is it 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.

These facts, coupled with 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, lead the Panel to find 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

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) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

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 under the circumstances. Given the famous and distinctive nature of the mark SANOFI, the Panel finds that the Respondent is likely to have had constructive notice or, more likely, actual notice as to the existence of the Complainant’s marks at the time it registered the disputed domain name. This suggests that the Respondent acted in bad faith in registering the disputed domain name in order to make illegitimate use of it.

The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof that the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 <webmailsanofi.com> be cancelled.

Andrew Mansfield
Sole Panelist
Date: January 28, 2018