WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Francisco Sánchez Fernández, inserious
Case No. D2019-0169
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Francisco Sánchez Fernández, inserious of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <sanofi.fun> is registered with Soluciones Corporativas IP, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, 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 January 29, 2019 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 January 30, 2019.
On January 29, 2019, the Center sent an email in English and Spanish regarding the language of the proceeding. The Complainant requested that English be the language of proceeding on January 31, 2019. The Respondent did not respond regarding the language of proceeding.
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 February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2019.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 6, 2019. 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 one of the world’s largest pharmaceutical companies, developing, manufacturing, distributing and selling a wide variety of pharmaceutical products under the trademark and trade name SANOFI.
The Complainant registered the SANOFI trademark in multiple jurisdictions throughout the world, since at least 1988, such as SANOFI French trademark, number 1482708, registered on August 11, 1988.
The Complainant also owns and operates several domain names incorporating its SANOFI mark, such as <sanofi.com> (registered in 1995) and <sanofi.eu> (registered in 2006).
The disputed domain name was registered by the Respondent on January 8, 2019.
The Panel accessed the disputed domain name on March 14, 2019, which resolved to a registrar-parking page.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Firstly, the disputed domain name reproduces SANOFI trademarks and domain names, which, as themselves, do not have any particular meaning and are therefore highly distinctive. Secondly, the Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trademark and trade name SANOFI. It has used its SANOFI trademark and trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI trademarks and domain names in countries all over the world, including in Spain. Thirdly, the reproduction of the Complainant’s trademarks and domain names as the unique and dominant part of the disputed domain name <sanofi.fun> is identical or at least confusingly similar to prior above cited trademarks, regardless of the generic Top-Level Domain (“gTLD”) extension “.fun”. The new gTLD extension “.fun” is made up of a word that been universally understood in many languages which generally refers to recreation or entertainment. The new general domain extension “.fun” provides an alternative to traditional extensions and can be used for marketing specific purposes, plus potentially attract and reach new customer groups internationally as well as Internet users searching for information/products/services in the related field. Therefore, this extension remains, as such, insufficient to avoid confusing similarity. Fourthly, there exists an inevitable risk that the disputed domain name will cause confusion, as it could lead average consumers to mistakenly believe that the disputed domain name <sanofi.fun> is related to the official SANOFI websites. Finally, it must be taken into account that the likelihood of confusion is strengthened by the reputation of the Complainant’s trade name, trademarks, domain names and goodwill.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. Firstly, it is obvious that the Respondent does not have any legitimate interest in using the disputed domain name since the Respondent did not even indicate his/her/its true identity. Indeed, the details provided on the identity of the Registrant are only “inserious” and the country. Such incomplete details should serve as an indicator of an absence of legitimate interest. Secondly, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. The Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant. Consequently, there is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainant’s trademarks and domain names for its own use and incorporated them into his domain name without the Complainant’s authorization. Thirdly, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name nor is he 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. UDRP panels have already held that the use of a third party’s trademarks and domain names to lead the Internet users to a parking website does not correspond to a bona fide non-commercial use.
- The disputed domain name was registered and is being used in bad faith. UDRP panel decisions regularly recognize opportunistic bad faith in cases in which the domain name is confusingly similar to the Complainant’s well-known trademark. Firstly, the Respondent does not have any legitimate interest in using the disputed domain name since the Respondent did not even indicate his/her/its identity. Such incomplete details serve as an indicator of bad faith registration and use. The Respondent has neither prior right nor legitimate interest to justify the registration or use of the already well-known and worldwide trademarks and domain names of the Complainant. The absence of legitimate interest somewhat induces the absence of good faith. Secondly, it should be considered that, given the famous and distinctive nature of the mark SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s marks at the time he registered the disputed domain name. Thirdly, the disputed domain name has been 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 – between SANOFI trademarks and the disputed domain name. In cases in which the well-known status of a complainant’s trademarks is well-established, numerous UDRP panel decisions constantly acknowledge that this consideration is indicative of bad faith registration and use. The disputed domain name is also being used in bad faith. Firstly, the registration of the disputed domain name is sufficient to characterize a bad faith use under paragraph 4 (b)(i) of the ICANN Policy. Secondly, the disputed domain name resolves to the registrar-parking website. Consequently, the disputed domain name <sanofi.fun> has been both registered and used intentionally in bad faith without any rights or legitimate interest by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Language of the Proceeding
Pursuant the paragraph 11 of the Rules, and unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceedings is the language of the Registration Agreement, which is Spanish in the present case.
However, also pursuant to paragraph 11 of the Rules, the Panel is granted power to determine the language of the proceedings having regard to the circumstances of the case. Probably the most important consideration in this issue is the fairness to both Parties in their abilities to prepare the necessary documents and protect their own interests.
In light of the Complainant’s submission regarding the language of the proceedings and the Respondent’s lack of objection or reply thereto, the Center appointed a Panel familiar with both languages and thereafter proceeded to issue its case-related communications to the parties in both English and Spanish.
Both Parties have been given a fair opportunity to present their case – in their native language.
Furthermore, the Respondent’s registration of the disputed domain name on a gTLD extension comprised of a term in English (“.fun”) indicate that he is inevitably acquainted with the English language at some level. The Panel notes that the disputed domain name resolves to a website in the English language.
Therefore, the Panel adopts English as the language of the present decision.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Panel has no doubt that “SANOFI” is a term directly connected with the Complainant’s well-known brand used to identify pharmaceutical products.
Annex 8 to the Complaint shows registrations of SANOFI trademarks obtained by the Complainant in multiple jurisdictions, including in France, as early as 1988.
The trademark SANOFI is wholly encompassed within the disputed domain name.
It is also well established that the addition of a gTLD such as “.fun” is normally irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its famous trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2019), the trademark SANOFI was already well-known worldwide and directly connected to the Complainant’s pharmaceutical products.
The disputed domain name encompasses the trademark SANOFI, which is a coined term, with no dictionary meaning.
Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the expression “sanofi.fun” was a mere coincidence.
Furthermore, using the disputed domain name to host a parking page the Respondent creates a likelihood of confusion with the Complainant’s trademark and potentially obtains revenue from this practice. These circumstances are enough to characterize bad faith use of the disputed domain name.
Finally, the absence of a reply from the Respondent and of any justification for the use of a well-known trademark are further evidences of bad faith in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third 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, <sanofi.fun> be transferred to the Complainant.
Date: March 20, 2019