WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. World Host, Site Host Co., Ltd
Case No. D2018-0915
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is World Host, Site Host Co., Ltd, of Turin, Italy.
2. The Domain Name and Registrar
The disputed domain name <sanoffi.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 April 24, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2018, 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 May 7, 2018. The Center attempted contact by email, only to find that all email contact details maintained were invalid, and delivered the Written Notice in hard copy to the Respondent’s address in Turin, personally, but the person given the Written Notice handed it back to the deliverer. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2018.
The Center appointed William P. Knight as the sole panelist in this matter on June 7, 2018. The Panel finds that the Complaint was properly served in accordance with the Rules and 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 with its headquarters in Paris. Its predecessor in title, Sanofi-Synthélabo, was founded in 1973 and it and its related corporations are very well-known throughout the world under the name Sanofi. It is the registered proprietor, inter alia, of numerous SANOFI registered trademarks including the following:
- French trademark SANOFI (+device) number 3831592, registered on May 16, 2011 in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42, 44 in respect of pharmaceutical and related goods and services;
- French trademark SANOFI number 96655339, registered on December 11, 1996 in classes 1, 3, 5, 9, 10, 35, 40 and 42 in respect of pharmaceutical and related goods and services;
- French trademark SANOFI (+device) number 92412574, registered on March 26, 1992 in class 5 in respect of pharmaceutical products;
- French trademark SANOFI number 1482708, registered on August 11, 1988 in classes 1, 3, 4, 5, 10, 16, 25, 28 and 31 in respect of pharmaceutical products;
- European Union trademark SANOFI number 010167351, filed on August 2, 2011 and registered on January 7, 2012 in classes 3 and 5 in respect of pharmaceutical products;
- European Union trademark SANOFI number 004182325, filed on December 8, 2004 and registered on February 9, 2006 in classes 1, 9, 10, 16, 38, 41, 42 and 44 in respect of products and services in pharmaceutical and medical spheres;
- European Union trademark SANOFI number 000596023, filed on July 15, 1997 and registered on February 1, 1999 in classes 3 and 5 in respect of pharmaceutical products.
The Complainant also owns and operates a website at “www.sanofi.com”, registered on October 13, 1995, as well as other pertinent domain name registrations, including:
- <sanofi.eu> registered on March 12, 2006;
- <sanofi.fr> registered on October 10, 2006;
- <sanofi.us> registered on May 16, 2002;
- <sanofi.net> registered on May 16, 2003;
- <sanofi.ca> registered on January 05, 2004;
- <sanofi.biz> registered on November 19, 2001;
- <sanofi.info> registered on August 24, 2001;
- <sanofi.org> registered on July 12, 2001;
- <sanofi.mobi> registered on June 20, 2006;
- <sanofi.tel> registered on March 17, 2011;
- <sanofi.it> registered on March 1, 2007.
The disputed domain name <sanoffi.com> was registered on November 3, 2017 and is not in use.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the disputed domain name is confusingly similar to the Complainant’s trademark SANOFI;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) that the disputed domain name has been registered and is being used in bad faith.
In respect of paragraph 4(a)(i), the Complainant provides substantial supporting evidence to establish that the SANOFI mark has become distinctive and well-known globally and has enjoyed such distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name. The Complainant further asserts that the disputed domain name is confusingly similar to the Complainant’s SANOFI mark in that it differs only in the addition of an extra letter “f” in such a way that is insufficient to distinguish the disputed domain name materially from the Complainant’s trademark. The Complainant says this is just “typosquatting”, the use of a common mis-spelling of a trademark by those using the Internet in search of the Complainant in order to divert such Internet users to competing services; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.
In support of paragraph 4(a)(ii), the Complainant contends that:
(a) the disputed domain name is not being used for any purpose;
(b) there is nothing in the name or other details of the Respondent to indicate that it is known by or uses “sanoffi” as a trademark or otherwise for any purpose; and
(c) the Respondent has no, and has never had any, connection with the Complainant is not licensed or authorized by the Complainant to use the disputed domain name.
In support of paragraph 4(a)(iii), the Complainant asserts that bad faith is evidenced by the Respondent’s use of the disputed domain name with the intention of attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s globally well-known trademark, of which there could be no doubt that the Respondent was aware, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product on the Respondent’s website or location (see paragraph 4(b)(iv) of the Policy).
The Complainant cites Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel, WIPO Case No. D2015-1034 in support of the contention that blatant “typosquatting” may act as strong evidence of bad faith and says that this is such a case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if it had chosen to take advantage of the opportunities afforded to it, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established its trademark rights in its mark SANOFI.
The determination of confusing similarity is a factual one which must be satisfied by the Panel making a side-by-side comparison of the Complainant’s trademark and the disputed domain name to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7. The Policy does not call for proof of actual confusion.
Placed side-by-side, the confusing similarity between the Complainant’s trademark and the disputed domain name is self-evident. Moreover, the common experience of mistyping an entry using a keyboard, especially when trying to type from memory a word which is invented, leads the Panel inexorably to the conclusion that it would be an easy and very likely mistake for users of browser software to type in a similar but incorrect address, such as the disputed domain name, if seeking <sanofi.com>, which is the Complainant’s principal domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent clearly has no rights or legitimate interests in the disputed domain name. The Respondent has made no attempt to clarify its selection of the disputed domain name, notwithstanding ample opportunity to do so.
C. Registered and Used in Bad Faith
There can be no doubt that the Respondent registered the disputed domain name for the purpose of taking illegitimate advantage of the Complainant’s trademark rights. The evidence also establishes the Respondent must have been aware of the Complainant’s rights at the time of registration; indeed, those rights are the reason for having chosen the disputed domain name for typosquatting purposes.
The Panel further notes that the disputed domain name is not in active use. As the learned panel in Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel observed, there is a consensus view among UDRP panels that non-use of a domain name does not prevent a finding of use in bad faith if an examination of all the circumstances of a case indicates that the respondent is acting in bad faith; see WIPO Overview 3.0, section 3.3. In this case, the Respondent has given as its name an entity that is impossible to identify, maintained incorrect contact details and, when served with the Written Notice in hard copy, personally, at its given address in Turin, handed the Complaint back to the deliverer, giving rise to a conclusion that the address given in its registration is not that of the Respondent at all or that the Respondent had no intention to participate in these proceedings. These circumstances in conjunction with the “typosquatting” nature of the registration of the disputed domain name, justify a finding of use of the disputed domain in bad faith.
The Panel therefore finds, in the absence of any reasonable explanation as to why the Respondent should rely on the disputed domain name, that the Respondent has registered and uses the disputed domain name in bad faith within the meaning of the Policy.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, the Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
In the light of the findings in Section 6 above, the Panel concludes that:
- the disputed domain name <sanoffi.com> is confusingly similar to the trademark SANOFI of the Complainant;
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel determines in accordance with paragraph 15 of the Rules that the disputed domain name <sanoffi.com> be transferred to the Complainant in accordance with paragraph 4(i) of the Policy.
William P. Knight
Date: June 8, 2018