WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Sarthak Kapoor
Case No. D2019-0370
1. The Parties
Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Sarthak Kapoor of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <sanofipharmaceuticals.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 February 18, 2019. On February 18, 2019, 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 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 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 20, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 25, 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
Complainant is Sanofi, a multinational pharmaceutical company headquartered in Paris, France. Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication. 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. Sanofi owns trademark registrations for the SANOFI mark in many jurisdictions around the world, including the European Union and France specifically, as well as the United States of America, and a number of international registrations with effect in a number of jurisdictions around the world including Australia, Japan, the Republic of Korea, and the Russian Federation. Sanofi owns various domain names corresponding to the SANOFI mark, including <sanofi.com>, registered in 1995. Registrations for the SANOFI mark date back to at least as early as 1988. The <sanofi.com> domain name, as well as other domain names owned by Complainant composed of the SANOFI mark at the second-level, resolve to a website operated by Complainant that relates to its pharmaceuticals business.
The disputed domain name, <sanofipharmaceuticals.com>, was registered by Respondent on February 5, 2019. The disputed domain name used to resolve to a parking webpage and is currently displaying “webpage coming soon”.
5. Parties’ Contentions
Complainant asserts that the disputed domain name reflects the SANOFI trademark, which is distinctive as it has no other meaning than as Complainant’s trademark. Complainant asserts that it advertises and promotes the company and its SANOFI trademarks in countries all over the world, including India where Respondent is located. It also cites numerous prior UDRP decisions finding that Complainant’s SANOFI mark is famous or well-known. Complainant states that the disputed domain name is confusingly similar to its SANOFI trademark because it incorporates the SANOFI trademark as the dominant part of the disputed domain name, combined with a descriptive term “pharmaceuticals” and the generic Top-Level Domain (“gTLD”) “.com.” According to Complainant, where a domain name wholly incorporates a Complainant’s distinctive trademarks in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, of a descriptive term. Complainant asserts that the term “pharmaceuticals” in the disputed domain name serves to enhance confusion because it is directly related to Complainant’s pharmaceutical business.
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name, given that: Respondent is not commonly known by the disputed domain name, Complainant has never licensed use of its mark to Respondent, there is no relationship between Complainant and Respondent and Respondent incorporated Complainant’s SANOFI trademark into the disputed domain name without authorization, and Respondent is not making a legitimate noncommercial 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. Complainant asserts that the disputed domain name leads to an inactive parking website.
Complainant asserts that the disputed domain name has been registered and used in bad faith. Complainant asserts that given the famous and distinctive nature of the mark SANOFI, Respondent is likely to have had, at least, constructive notice, if not actual notice, as to the existence of Complainant’s marks at the time he registered the disputed domain name and that this suggests that Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make illegitimate use of it. Complainant asserts that the disputed domain name has been registered for the purpose of attracting Internet users to Respondent’s website by creating a likelihood of confusion – or at least an impression of association – between SANOFI trademarks and the disputed domain name. According to Complainant, the disputed domain name directs Internet users to an inactive parking website, which constitutes passive holding of the disputed domain name. According to Complainant, passive holding under the appropriate circumstances falls within the concept of the disputed domain name being used in bad faith. In addition, Complainant states that it delivered a cease and desist letter to Respondent on February 12, 2019, in response to which Respondent offered to sell the disputed domain name to Complainant. Complainant asserts that respondents’ offer to sell disputed domain names to complainants, without any documentation of respondents’ out-of-pocket costs directly related to the disputed domain names, is additional evidence of bad faith.
Accordingly, Complainant requests that the disputed domain name be transferred to it.
Respondent did not reply to Complainant’s contentions.
6. 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.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., 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. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the SANOFI Marks, which have been used since at least as early as 1988, well before Respondent registered the disputed domain name on February 5, 2019. With Complainant’s rights in the SANOFI trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name, typically disregarding the gTLD in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc/Joseph Gross, WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to Complainant’s SANOFI trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is fully incorporated into the disputed domain name at the second level, and the addition of the generic term “pharmaceuticals” after the mark does nothing to prevent a finding of confusing similarity. See, e.g. Comerica Bank v. Kimberly Barnes, WIPO Case No. D2014-1052.
Thus, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though 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 their burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the SANOFI Marks, and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the disputed domain name to redirect Internet users to a parked page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interest in the disputed domain name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 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 your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the SANOFI Marks long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the SANOFI Marks when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods/Privacy Gods Limited, WIPO Case No. D2016-1973.
Respondent’s attempt to offer the disputed domain name for sale in response to Complainant’s cease and desist letter is clear evidence that Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration for valuable consideration in excess of its documented out of pocket costs directly related to the disputed domain name, under Policy paragraph 4(b)(i).
Under the circumstances, Respondent’s registration of the disputed domain name incorporating Complainant’s well-known SANOFI trademark and the related industry term “pharmaceuticals,” also suggests that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SANOFI mark, in an effort to opportunistically capitalize on the registration. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) 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, <sanofipharmaceuticals.com>, be transferred to Complainant.
Brian J. Winterfeldt
Date: April 8, 2019