WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Sanofi India, Sanofi India Limited
Case No. D2019-0695
1. The Parties
1.1 The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
1.2 The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Sanofi India, Sanofi India Limited of Visakhapatnam, India.
2. The Domain Name and Registrar
2.1 The disputed domain name <sanofiindia.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. At that time the Domain Name was registered in the name of a domain name privacy service.
3.2 On March 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which purported to record the registrant as Sanofi India Limited.
3.3 The Center sent an email communication to the Complainant on April 4, 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 April 9, 2019.
3.4 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”).
3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2019.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 8, 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.
3.7 On review of the case file, the Panel noted that the Domain Name appeared to be registered in the name of company in the Complainant’s group through which the Complainant conducted business in India. Accordingly, on May 13, 2019 the Panel issued a Procedural Order (“Procedural Order No 1”) asking the Complainant it clarify its position in this respect and in particular whether it contended that the registration details provided were false. The Procedural Order No 1 also invited the Respondent to file a further submission in this respect.
3.8 A further submission was filed by the Complainant on May 14, 2019 in response to Procedural Order No 1. The Respondent did not file any further submission.
4. Factual Background
4.1 The Complainant is a multinational pharmaceutical company headquartered in Paris, France, and is the world’s 4th largest multinational pharmaceutical company by prescription sales. 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. Its consolidated net sales in 2017 were EUR 35.05 billion. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the business also develops over-the-counter medication. It operates in more than 100 countries on 5 continents employing 100,000 people.
4.2 The Complainant owns various trade marks that comprise or incorporate the term “Sanofi”. They include:
(i) European Union trade mark number 000596023, filed on July 15, 1997, and registered on February 1, 1999, in classes 3 and 5 and comprising SANOFI in stylized text; and
(ii) International trade mark number 1092811, registered on August 11, 2011, in classes 1, 9, 10, 16, 38, 41, 42, and 44 comprising the work mark SANOFI and which has proceeded to grant in approximately 20 territories.
4.3 The Complainant is also the owner of various domain names comprising the term “Sanofi” in combination with various Top-Level Domains (“TLDs”). Most of these domain names are used to promote its business and products. They include <sanofi.com> and <sanofi.in>, both of which are currently in use and the latter of which is used for a website promoting the Complainant group’s activities in India.
4.4 The Complainant has been a party to a very large number of cases under the Policy (with over 70 being listed in its Complaint).
4.5 The Domain Name was previously registered on May 16, 2012, shortly after an announcement that the Complainant’s Indian operating company had changed its name to one that incorporated the term Sanofi. The Domain Name was then the subject of UDRP proceedings in which the appointed panel ordered the transfer of the Domain Name to the Complainant on August 27, 2012 (see Sanofi v. Tangzhou, WIPO Case No. D2012-1428).
4.6 The Domain Name appears to have been allowed to lapse and was then re-registered on February 27, 2019. It has since then been used for a pay-per-click (“PPC”) parking page.
4.7 The disclosed details for the registrant appear to identify a company with the Complainant’s group of companies, but the Complainant has confirmed (in response to Procedural Order No 1) that notwithstanding these registration details, the Domain Name has not been registered by that company.
4.8 As at the date of this decision the PPC parking page appears to be no longer in operation.
5. Parties’ Contentions
5.1 The Complainant describes the business of the Sanofi group, its trade marks and domain names. It claims that “Sanofi” is the dominant element of the Domain Name, combined with a descriptive geographic term “India” and the TLD “.com” and that the Domain Name is therefore confusingly similar to its SANOFI trade marks.
5.2 The Complainant contends that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply in this case. The original Complaint expressly asserted that there was “no relationship whatsoever between the parties”. That statement was made before the Complainant was informed of the underlying registration details for the Domain Name following the Registrar’s response to the Center’s verification request. Unhelpfully, the amended Complaint that was then filed, did not expressly address the fact that the registration details disclosed appeared to name a company within the Complainant’s group. However, in response to Procedural Order No 1, the Complainant confirmed that there was no relationship between the Complainant and the Respondent, and contended that the revealed registrant details for the Domain Name were false.
5.3 The Complainant further contends that the use of the Domain Name in connection with a PPC website demonstrates that the Domain Name has been registered “only for the purpose of attracting Internet users into clicking on the sponsored links” for commercial gain. It is claimed that this is not a legitimate noncommercial or fair use of the Domain Name.
5.4 The Complainant maintains (quoting one of the previous cases under the Policy in which it has been involved) that given the famous and distinctive nature of its SANOFI mark, “the Respondent is likely to have had, at least, constructive notice, if not actual notice, as to the existence of the Complainant’s marks at the time he registered the disputed domain name.” It also maintains that it follows from this and the use made of the Domain Name that the Domain Name was both registered and has been used in bad faith.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the most sensible (and probably the only sensible) reading of the Domain Name is as the terms “Sanofi” and “India” combined with the “.com” TLD. As such, the Complainant’s trade mark is not only recognisable, but clearly recognisable in the Domain Name. This is sufficient for a finding that the Domain Name and the Complainant’s trade mark are “confusingly similar” as that term is understood under the Policy; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 As is discussed in the context of bad faith, the Panel accepts that the text of the Domain Name was chosen by the Respondent so as to incorporate the Complainant’s SANOFI mark. The Panel also accepts this was done in order to take advantage of potential confusion between the Domain Name and the Complainant’s mark in order to draw Internet users to PPC websites.
6.6 There is no right or legitimate interest in holding a domain name for such a purpose and such conduct is prima facie evidence that no such right or legitimate interest exists (see section 2.9 of the WIPO Overview 3.0).
6.7 It follows that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8 The Panel accepts that the Domain Name was registered and thereafter used by the Respondent with a view to using the Domain Name’s association with the Complainant’s trade mark to draw Internet users to a PPC website for commercial gain (whether that be the commercial gain of the Respondent or some third party). In this respect, the Domain Name has no obvious meaning that is not associated with the Complainant. Further, the registration details for the Domain Name demonstrate that the person or entity responsible for the registration has deliberately sought to pretend to be a company in the Complainant’s group.
6.9 The Complainant contends this is a case of either actual or constructive notice. The Panel is not convinced by the constructive notice argument. It is a concept that tends only to be applied in cases where both parties are based in the United States (see section 3.2.2 of the WIPO Overview 3.0) and even then the Panel doubts that this is the right approach. However, it does not matter, as the Panel is more than persuaded that the registrant actually knew of the association of the term “Sanofi” with the Complainant at the time of registration.
6.10 The use of another’s trade mark in a domain name in this manner to draw Internet users to a PPC web page is activity that falls within the example of circumstances evidencing bad faith registration and use set out in paragraph 4(b)(iv) of the Policy.
6.11 It is also difficult to conceive of how the Domain Name might be held or used for a legitimate purposes in circumstances where (other than the “.com” TLD) the Domain Name merely comprises the Complainant’s mark and a geographical area in which that mark is used. In such a case the Domain Name alone involves a misrepresentation that it is either a domain name operated by, or at least authorised by, the Complainant. As was discussed by this Panel at some length in
Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031 (a case which similarly involved a domain name comprising a trade mark combined with a geographical term and a “.com” TLD), that will usually be sufficient to justify a finding of bad faith registration and use.
6.12 Last but not least, there are the registration details used in respect of the Domain Name. The Panel accepts not only that they are false but they represent a deliberate attempt on the part of the registrant to falsely impersonate the Complainant. No justification is offered by the Respondent to justify that impersonation and it is difficult to conceive of one that might be legitimately advanced.
6.13 In the circumstances, the Panel has little hesitation in holding that the Domain Name has been both registered and used in bad faith.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sanofiindia.com> be transferred to the Complainant.
Matthew S. Harris
Date: May 15, 2019