WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Thomas Christina, Thomas Christina Christina
Case No. D2019-0718
1. The Parties
1.1 The Complainant is Sanofi of France, represented by Selarl Marchais & Associés, France.
1.2 The Respondent is Thomas Christina, Thomas Christina Christina of United States of America (“United States”).
2. The Domain Name and Registrar
2.1 The disputed domain name <san0fipasteur.com> (the “Domain Name”) is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2019. On March 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2019, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 9, 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
4.1 The Complainant is a multinational pharmaceutical company headquartered in Paris, France, and is one of the world’s 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 also develops over-the-counter medication. It operates in more than 100 countries on 5 continents employing 100,000 people.
4.2 “Sanofi Pasteur” is the vaccines division of the Sanofi group of companies and produces more than one billion doses of vaccines every year.
4.3 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 03 and 05 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.
4.4 The Complainant is also the owner of various domain names comprising the term “sanofi” or “sanofipasteur” in combination with various Top-Level Domains (“TLDs”), many of which are used to promote its business and products (or those of other companies within the Complainant’s group). They include <sanofi.com> and <sanofipasteur.com>, the latter of which is used for a website promoting the activities of the vaccines division of the Sanofi group of companies.
4.5 The Domain Name was registered on March 21, 2019. It does not appear to have been used for any active website since registration. The WhoIs details for the Domain Name appear to identify an individual with an address in the United States as the registrant of the Domain Name.
4.6 On March 22, 2019, the Complainant sent to the Registrant an email in which it requested the immediate transfer of the Domain Name but has received no response to that communication.
5. Parties’ Contentions
5.1 The Complainant describes the business of the Sanofi group, its trade marks and domain names, including the business of “Sanofi Pasteur”.
5.2 Unfortunately, the rest of the Complaint is not as carefully prepared as it could have been. It appears that the Complaint is an amended revision of complaints previously used, at times with insufficient care being given to what remains in the final versions. As a consequence, it contains a number of errors. For example, in the context of rights or legitimate interests jumping from a second to a fourth contention. Others include (i) asserting that the Domain Name comprises the Complainant’s mark and the “.com” alone, when it does not and (ii) claiming that the Domain Name has been registered for the purpose of attracting Internet users to the Respondent’s website not withstanding assertions elsewhere in the Complaint that the Domain Name is not being used. There is also at one point a reference and reliance upon a “to a worldwide consent of use of the name Pasteur […] from the French company Institut Pasteur, owner of registrations containing the highly distinctive term Pasteur alone or in combination with another term”. A document is said to be annexed to the Complaint that evidences this but was not.
5.3 This is unhelpful and makes the job of a panel more difficult than it ought to have been. Nevertheless, the thrust of the Complaint when stripped of these errors and extensive references to UDRP case law, is relatively clear and straight forward. In particular, the Complainant contends that:
(i) The term “Sanofi” is a term that has no independent meaning other than as the mark used by the Complainant;
(ii) The Domain Name includes that term with the letter “o” replaced with the number “0”;
(iii) The form of the Domain Name is such that it is confusingly similar to the Complainant’s mark;
(iv) The Domain Name has not been actively used, and none of the examples of rights or legitimate interests can be said to apply in this case;
(v) The fame of the Complainant’s SANOFI mark is such that the Respondent must have known about or at least had constructive notice of that mark at the time the Domain Name was registered.
(vi) The form of the Domain Name alone, is sufficient to justify a finding of bad faith registration and use. In this respect, the Complainant appears to rely upon the fact that the Domain Name involves a typosqatting variation of the <sanofipasteur.com> domain name that it actively uses.
(vii) So far as bad faith is concerned, the Complainant also relies upon the Respondent’s failure to respond to a “letter” (which is actually an email) sent to it by the Complainant.
5.4 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 term “Sanofi” with the number “0” in place of the letter “o”, and “Pasteur” combined with the “.com” TLD. As such, the Complainant’s SANOFI 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”).
6.5 Further, the Panel accepts that this is a case of typosquatting in relation to the Complainant’s mark, and panels have frequently found that in such cases the domain name and relevant trade mark are “confusingly similar” for the purposes of the Policy (see section 1.9 of the WIPO Overview 3.0)
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 As is discussed in the context of bad faith, the Panel accepts that the text of the Domain Name was chosen by the Respondent to incorporate a typosquatting version of the Complainant’s SANOFI mark and of the “Sanofi Pasteur” name used in respect of one of its businesses. The Panel also accepts this was done, and that the Domain Name has subsequently been held, with the intention of taking some form of unfair advantage of the Complainant’s mark.
6.8 There is no right or legitimate interest in holding the Domain Name for such a purpose. Further, this is the case where the Domain Name, albeit with a substitution of a letter “o” with the number “0” represents the entirety of the name of one of the business divisions of the Complainant, combined with the “.com” TLD. It therefore essentially takes the form <[name of the Complainant’s business].com>, which effectively impersonates the Complainant and in respect of which it is difficult to conceive of any legitimate use other than by or with the authorisation of the Complainant (see section 2.5.1 of the WIPO Overview 3.0). In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
6.9 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
6.10 The Domain Name does not appear to have been used for a website and there is no evidence before the Panel to the effect that it has been used for some other purposes (such as part of email addresses). Accordingly, it is not entirely clear for what exact purpose the Domain Name has been registered.
6.11 Nevertheless, the Panel has little hesitation in concluding that the Domain Name was registered and has been held with the intention of taking some form of unfair advantage of the trade mark rights of the business. The main reason for this is that the Domain Name obviously comprises a typosquatting variation of the name of the Complainant’s “Sanofi Pasteur” business division and of the <sanofipasteur.com> domain name used in connection with that business. It is difficult to conceive of how the Domain Name might be held or used for a legitimate purpose and the Domain Name in and of itself alone involves a misrepresentation that it is either a domain name operated by, or at least authorised by, the Complainant (as to which see, for example, Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031).
6.12 The Complainant contends that the Respondent has at least constructive notice of its SANOFI mark. The constructive notice claim is unnecessary. Constructive notice 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 the Panel doubts that this is the right approach even in these cases. However, the distinctiveness of the SANOFI mark and the “Sanofi Pasteur” name makes it abundantly clear that the Respondent was aware of the use of that name by the “Sanofi Pasteur” business at the time that the Domain Name was registered.
6.13 It follows that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.14 There is a minor complication in this case in that the Domain Name comprises not only the registered trade mark of the Complainant but also the mark of a third party. Where the relevant third party is not also a party to UDRP proceedings or has not otherwise consented to those proceedings, this can raise questions as to whether, notwithstanding that a complainant has satisfied the requirements of the Policy, the appropriate remedy is transfer (see section 4.13 of the WIPO Overview 3.0).
6.15 However, the present case is not one where the domain name comprises a complainant’s mark and another mark with which the complainant has no association. The Complainant (or at least a company or business within the Complainant’s group) is actively using “Sanofi Pasteur” as part of the name of its business. This is being done according to the complainant with the authority of and/or under license from that third party. Unhelpfully (and has already been described earlier in this decision), although the Complainant claims to have annexed that authority or license to the Complaint, it is missing from the papers filed. But the Panel is prepared to adopt a common sense position in this respect. The evidence filed with the Complaint suggests that the use of the name “Sanofi Pasteur” is very extensive and it is simply not credible that this would have been done without the relevant third party’s consent.
6.16 Therefore, there is no good reason why the Domain Name should not be transferred to the successful Complainant.
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 <san0fipasteur.com> be transferred to the Complainant.
Matthew S. Harris
Date: May 26, 2019