WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi / Genzyme Corporation v. Cimpress Schweiz GmbH
Case No. D2018-0296
1. The Parties
Complainants are Sanofi of Paris, France / Genzyme Corporation of Cambridge, Massachusetts, United States of America (“United States”), represented by Selarl Marchais & Associés, France.
Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <san0figenzyme.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2018. On February 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 16, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 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
Complainant, Sanofi, is a French multinational pharmaceutical company headquartered in France. Sanofi engages in the research, development, manufacturing and marketing of pharmaceutical products primarily in the prescription market. Complainant has operations in over 100 countries.
Complainant, Genzyme Corporation, is an American biotechnology company founded in 1981. Genzyme Corporation is owned by Complainant Sanofi. Genzyme Corporation has operations in 65 countries and sells its products in 100 countries.
Sanofi and Genzyme Corporation own a number of trademark registrations for the marks SANOFI and GENZYME in connection with their pharmaceutical products and services in numerous countries around the world. In particular, Sanofi owns, inter alia, registrations for the SANOFI mark in France (Registration Nos. 1482708, 92412574, 96655339, and 3831592), the earliest of which issued in 1988; the European Union (Registration Nos. 010167351, 004182325, 000596023), the earliest of which issued in 1999; the United States (Registration No. 85396658), which issued to registration in 2011; and several International Registrations that have been extended to multiple countries, the earliest of which issued in 1992 (Registration No. 591490). Genzyme Corporation owns, inter alia, registrations for the GENZYME mark in the European Union (Registration No. 002348852), which issued in 2003; the United States (Registration No. 1859429), which issued to registration in 1994; and China (Registration Nos. 3160697, 3160699 and 4208493), the earliest of which issued in 2003.
Respondent registered the disputed domain name on January 16, 2018. The disputed domain name does not currently resolve to an active website.
5. Preliminary Issue concerning Consolidation of Multiple Complainants
In assessing whether a complaint filed by multiple complainants can be brought against a single respondent, panels typically consider whether (1) the complainants have a specific common grievance against the respondent, and (ii) it would be equitable and procedurally efficient to permit the consolidation. See section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Here, on the evidence presented, none of which is contested by Respondent, consolidation is proper. Genzyme Corporation is owned by Sanofi and both parties have a common grievance against Respondent’s registration and use of the disputed domain name that, on its face, appears to consist of Complainants’ respective SANOFI and GENZYME marks. Consequently, allowing consolidation in this instance would be procedurally efficient.
Complainants Sanofi and Genzyme Corporation are hereinafter referred to collectively and individually as “Complainant”.
6. Parties’ Contentions
Complainant asserts that it owns rights in the SANOFI and GENZYME marks based on their notoriety and widespread registration and use in numerous countries around the world well before Respondent registered the disputed domain name in January 2018.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s well-known SANOFI and GENZYME marks because it consists of a purposeful misspelling of the SANOFI mark at the head of the disputed domain name, namely “san0fi” in conjunction with the GENZYME mark in its entirety.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent (a) is not commonly known by the disputed domain name, (b) has no relationship with Complainant and is not licensed or otherwise authorized by Complainant to use Complainant’s SANOFI and GENZYME marks in the disputed domain name, (c) is not making a legitimate noncommercial or fair use of the disputed domain name, as Respondent has made no active use of the disputed domain name.
Finally, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent (a) has no rights or legitimate interests in, or connection to, the well-known SANOFI and GENZYME marks, (b) opportunistically registered the disputed domain name, given that Respondent was aware or should have been aware of Complainant’s well-known marks when Respondent registered the disputed domain name, (c) has passively held the disputed domain name since registering it, and (d) did not respond to a demand letter that Complainant had sent Respondent on January 31, 2018 concerning the disputed domain name.
Respondent did not reply to Complainant’s contentions.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns rights in the SANOFI and GENZYME marks in numerous countries around the world in connection with its pharmaceutical products and services, and that such rights arose well before Respondent registered the disputed domain name in January 2018.
With Complainant’s rights in the SANOFI and GENZYME marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s SANOFI and GENZYME marks as it consists of a likely common typo version of Complainant’s SANOFI mark, by changing the letter “o” to the number “0”, in combination with the GENZYME mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s SANOFI and GENZYME marks and in showing that the disputed domain name is identical or confusingly similar to those trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it appears that Respondent was aware of Complainant and its SANOFI and GENZYME marks when Respondent registered the disputed domain name, particularly as Respondent combined the two marks into the same domain name and used a common misspelling of the SANOFI mark. Respondent, who has no connection to and is not known by either the SANOFI or GENZYME names and marks, has not made any bona fide use of the disputed domain name for any product or service and appears to have merely registered the disputed domain name and passively held it since that time.
Given that the disputed domain name solely consists of a typo version of Complainant’s SANOFI mark in combination with the entire GENZYME mark, and given Respondent’s failure to file a response in this matter, it appears more likely than not based on the evidence submitted that Respondent registered the disputed domain to somehow capitalize on its likely association with Complainant and not for a legitimate or bona fide purpose.
As Complainant has established with sufficient evidence that it owns rights in the SANOFI and GENZYME marks, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
In the instant case, the Panel concludes that Respondent registered and has used the disputed domain name in bad faith. The evidence submitted, none of which is countered by Respondent who chose not to participate in this proceeding, shows that Respondent opportunistically registered the disputed domain name that consists of a common typo version of the SANOFI mark with the entire GENZYME mark in January 2018, a date well after Complainant had established its rights in the distinctive marks SANOFI and GENZYME. Moreover, as Respondent ignored a demand sent by Complainant concerning the disputed domain name and has continued to passively hold the disputed domain name with no explanation, it appears to the Panel that, on the balance of the probabilities, Respondent has used Complainant’s SANOFI and GENZYME marks in the disputed domain name opportunistically and in bad faith to benefit Respondent and not for any legitimate purpose.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 <san0figenzyme.com> be transferred to Complainant.
Date: April 18, 2018