WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Constantin Routing, Rocket Consult Ltd.
Case No. D2018-1678
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Constantin Routing, Rocket Consult Ltd. of Sofia, Bulgaria, self-represented.
2. The Domain Name and Registrar
The disputed domain name <sanofi.press> 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 July 25, 2018. On July 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2018, the Registrar transmitted by email to the Center its verification response providing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on July 26, 2018 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 July 27, 2018.
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 July 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2018. On July 31, 2018, the Respondent submitted an email offering to transfer the disputed domain name to the Complainant. Accordingly, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by August 8, 2018. On August 1, 2018, the Complainant refused to settle with the Respondent, noting that the Respondent asked for EUR 7,500 for the transfer of the disputed domain name. The Response was filed with the Center on August 2, 2018.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 20, 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 leading French multinational pharmaceutical company, which is present in more than 100 countries worldwide, including Bulgaria. It is known for research and development, manufacture and commercialization under various trademarks of prescription drugs, as well as over-the-counter medication, having a leading position in major therapeutic areas including cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
The Complainant uses the mark SANOFI to identify its company, services and activities, as well as its relationships with the media through its corporate website, holding several trademark registrations throughout the world for this mark, alone or in combination with a design, of which the following are sufficiently representative for the present proceeding:
European Union Trade Mark No. 010167351 SANOFI, registered January 7, 2012, in classes 3 and 5;
European Union Trade Mark No. 004182325 SANOFI, registered February 9, 2006, in classes 1, 9, 10, 16, 38, 41, 42 and 44;
European Union Trade Mark No. 00596023 SANOFI, figurative, registered February 1, 1999, in classes 3 and 5;
International Trademark No. 1091805 SANOFI, figurative, registered August 18, 2011, in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44, which is based on a French Trademark and covers among other jurisdictions the European Union.
International Trademark No. 674936 SANOFI, registered June 11, 1997, in classes 3 and 5, which is based on a French Trademark and covers among other jurisdictions Bulgaria.
International Trademark No. 591490 SANOFI, figurative, registered September 25, 1992, in class 5, which is based on a French Trademark and covers among other jurisdictions Bulgaria.
The Complainant also owns several domain names comprising or incorporating its trademark SANOFI, which are used in connection to its services, activities, and in relations with the media; of which are sufficiently representative for the present proceeding <sanofi.com> (registered on October 13, 1995), <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 5, 2004), <sanofi.biz> (registered on November 17, 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) and <sanofi.bg> (registered on March 17, 2011).
The Respondent is a Bulgarian company, which operates in the IT development business, particularly doing websites projects.
The disputed domain name was registered on June 13, 2018, and resolves to a "Website coming soon" page.
5. Parties' Contentions
Key contentions of the Complaint may be summarized as follows:
The Complainant says the disputed domain name reproduces its trademarks and domain names, which do not have a particular meaning and, therefore, are highly distinctive, and are prior to the registration of the disputed domain name.
The Complainant further asserts the disputed domain name is identical or at least confusingly similar to the SANOFI trademarks, regardless of the extension ".press", which is of no importance in assessing confusing similarity for purposes of the Policy, and will merely suggests to Internet users a relationship to the Complainant's marks. The generic Top-Level Domain ("gTLD") ".press" refers to press dedicated or related websites and platforms for social media, the reference to its trademark remaining the dominant component of the disputed domain name. Therefore, this extension increases the inherent risk of confusion, leading Internet users to perceive the disputed domain name as one of the Complainant's special websites for press releases, or an official channel to its company news.
The Complainant says that due to continued use and investment in promotion for over 40 years, the Complainant's trade name, trademarks, domain names are well-known in many jurisdictions including Bulgaria, where SANOFI trademarks have a significant presence.
The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name, which has no resemblance to its company name by which it is commonly known. There is no relationship between the Parties, so the Respondent has no license or authorization to use the Complainant's reputed and highly distinctive mark. Further, the disputed domain name is neither used in connection to any bona fide offering of goods or services, nor for a legitimate non-commercial or fair use. It leads to an under-construction website. Furthermore, the incomplete details of the Respondent in the disputed domain name registration should serve as an indicator of an absence of legitimate interest and bad faith.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. Given the famous and distinctive nature of its trademarks, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of its trademarks, acting with opportunistic bad faith in registering the disputed domain name in order to make illegitimate use of it. There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. The disputed domain name was registered for the purpose of attracting Internet users to the Respondent's website by creating a likelihood of confusion – or at least an impression of association – with its reputed trademarks. Further, the disputed domain name is currently inactive, redirecting to an under construction page, which should be considered bad faith use disrupting the Complainant's business and preventing the reflection of the Complainant's mark in the corresponding domain name under the gTLD ".press".
The Complainant has cited an extensive number of previous decisions under the Policy that it considers to be supportive of its position and the reputation of its trademarks.
The Complainant requests the transfer of the disputed domain name.
Key contentions of the Response may be summarized as follows:
The Respondent denies the Complaint.
In a first communication, the Respondent says the disputed domain name was registered in good faith, considering the Complaint as a means for expropriation and offering its transfer for an expense contribution amounting to EUR 7,500, which it considers, after some research about the Complainant, a settlement option at a fair price.
The Respondent contents it is an IT development company doing website projects and has legitimate interest in using the disputed domain name for a non-profit newspaper startup called "Sa Nofi". The disputed domain name has been registered for only two months and the project is still developing.
The Respondent further contents it is not true that its contact details were deliberately omitted in the disputed domain name registration. They must have been kept confidential due to data protection regulations.
The Respondent says domain names are not automatically belonging to holders of trademarks with the same denomination, but offered for registration at a "first come first serve" basis. The Complainant does not have rights over every domain name incorporating the words "Sanofi", "sano fi" or "sa nofi". The gTLD ".press" domain names are generally available since their so-called "sunrise period", which ended September 17, 2014. The Complainant missed the said "sunrise period" and did not register the disputed domain name for almost four years, pretending to acquire it now at no cost.
The Respondent further says the circumstances show that the behavior of the Complainant is traversed by bad faith and negligence.
The Respondent provides as evidence of its allegations extracts from Europe Registry and Domains.press Registry referring to the gTLD ".press" domain names availability for registration and to whom they are addressed.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel of a sole Panelist has jurisdiction to decide the dispute.
Paragraph 15(a) of the Rules provides that "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties.
A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the Policy. See section 1.7 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Further, the applicable Top-Level Domain ("TLD") in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11 WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark SANOFI. The disputed domain name incorporates this mark in its entirety with no additional element, being clearly recognizable, and the TLD ".press" has no distinctive meaning that may avoid the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant's mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has asserted that the Respondent has not been licensed to use the Complainant's trademark SANOFI and there is no evidence that the Respondent has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate non-commercial or fair purpose. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Respondent's position is that in the terms of paragraph 4(c)(i) of the Policy, its use of the disputed domain name is in connection with the bona fide business of a non-profit online newspaper called Sa Nofi, which project is still under development. However, the Respondent has failed to show any evidence at all of the said newspaper or this project preparations and steps of its development.
Claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services should be inherently credible and supported by relevant pre-complaint evidence. See section 2.2 WIPO Overview 3.0.
The Panel considers it is further remarkable that the Respondent does not provide any explanation about the reasons behind choosing the denomination "Sa Nofi", which is incorporated in the disputed domain name without any separation of its words, to identify its newspaper. This circumstance is particularly relevant in light of the well-known character of the trademark SANOFI, its presence in Bulgaria and extensive presence over the Internet. It is unlikely that the Respondent, an IT development company doing website projects, did not know about this trademark at the moment of registering the disputed domain name, choosing, nevertheless, a denomination that, without any separation of its words, it is completely identical to this trademark.
All these circumstances lead the Panel to conclude that the Respondent has not produced sufficient evidence to rebut the Complainant's prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name "has been registered and is being used in bad faith".
At the time of the disputed domain name registration, due to the well-known character of the trademark SANOFI, recognized in an extensive number of decisions under the Policy, as well as its extensive presence over the Internet, and its presence in Bulgaria, where the Respondent has its place, it is unlikely that the Respondent did not know about this trademark and when registering the disputed domain name did not have it in mind.
It is further to be noted that the lack of current active use or passive holding (including a "coming soon" or "under construction" page) does not as such prevent a finding of bad faith. All the circumstances of the case should be examined to determine whether the Respondent is acting in bad faith, and, in particular, cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response or failure of the respondent to provide any evidence of actual or contemplated good faith use, and the registrant's concealment of its identity. See paragraph 3.3 of the WIPO Overview 3.0.
Furthermore, the Policy's non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
"(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
All relevant circumstances of the present case, in particular, the reputation of the Complainant's trademark, its identical reproduction in the disputed domain name, the absence of any evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and the Respondent's offer of selling at a higher than the documented out-of-pocket registration costs price, lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. These cumulative circumstances reveal that the disputed domain name most probably was registered for the purpose of selling or to use it for intentionally attracting users to the Respondent's website by creating a likelihood of confusion with the well-known trademark.
The Panel further considers that the disputed domain name clearly disrupts the Complainant's business, creating confusion concerning its company channels of communication, press releases and media information, which are currently included in its corporate website. A website identified by the disputed domain name would create confusion in the Internet users looking for this information about the Complainant. Furthermore, the disputed domain name prevents the reflection of the Complainant's mark in the corresponding domain name under the TLD ".press". Therefore, paragraphs 4(b)(ii) and (iii) may also be applicable.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of Policy, and filed the Complaint in good faith to protect its legitimate interests.
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 <sanofi.press> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: August 31, 2018