WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Registration Private, Domains By Proxy, LLC / Yujuan Ma
Case No. D2019-1493
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Yujuan Ma, China.
2. The Domain Name and Registrar
The disputed domain name <sanofipacking.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 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 June 28, 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 July 1, 2019.
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 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. The Respondent submitted an email communication on July 9, 2019.
The proceedings were suspended at the Complainant’s request between July 10, 2019 and August 12, 2019, without any mutual agreement being concluded. Accordingly, the Response due date was updated to September 1, 2019. No formal Response was filed with the Center. On September 4, 2019 the Center notified the Parties that it will proceed to panel appointment process.
The Center appointed Marilena Comănescu as the sole panelist in this matter on September 16, 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.
The language of the proceeding is English.
4. Factual Background
The Complainant Sanofi is a French multinational pharmaceutical company ranking first in Europe and the fourth in the world in its industry. The Complainant is active in more than 100 countries on all five continents employing more than 100,000 people.
The Complainant has a large portfolio of registrations for the SANOFI mark worldwide including:
- the European Union Trademark SANOFI (stylized), registration number 0596023, registered on February 1, 1999, for goods in International Classes 3 and 5; and
- the International Trademark SANOFI, registration number 674936, registered on June 11, 1997, for goods in International Classes 3 and 5.
The Complainant holds and uses a number of domain name registrations which wholly incorporate the SANOFI mark, including <sanofi.com>, <sanofi.eu>, <sanofi.info>, and <sanofi.tel>.
It is undisputed that the Complainant’s trademark is well-known worldwide. See for example Sanofi v. Sanofi India, WIPO Case No. D2019-0695, Sanofi v. Jamey Kirkes, WIPO Case No. D2019-0657, Sanofi v. Nicholas Woolf, WIPO Case No. D2018-1747 and Sanofi v. John Valley, WIPO Case No. D2018-2575.
The disputed domain name <sanofipacking.com> was registered on August 20, 2018, and, according to the evidence provided in the Complaint, it was used in connection with a service provider presentation page and it was depicting the Complainant’s trademark.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark SANOFI with an additional generic term, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent submitted an email communication on July 9, 2019, but no formal Response was filed with the Center. In its communication, the Respondent affirms particularly that it does not use the disputed domain name but also, at the Complainant’s request to provide the amicable transfer of the disputed domain name during the suspension procedure, the Respondent had no positive reaction.
6. Discussion and Findings
In view of the Respondent’s lack of formal response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the SANOFI trademark.
The disputed domain name <sanofipacking.com> incorporates the Complainant’s trademark in its entirety, with the addition of the word “packing” at the end of the second-level domain portion. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <sanofipacking.com> is confusingly similar to the Complainant’s trademark SANOFI, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark SANOFI, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent has used the disputed domain name in connection with a presentation page, with SANOFI marks displayed without any permission from the Complainant.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights since at least 1988 and it is well-known worldwide in its field of activity. The disputed domain name was created in 2018 and incorporates the Complainant’s mark with an additional term “packing”. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint the disputed domain name resolved to a third party page, promoting its services and displaying without consent the Complainant’s distinctive mark.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for Internet users with regard to a potential affiliation or connection with the Complainant. This false impression was increased by the incorporation of the Complainant’s entire trademark in the disputed domain name and the featuring of the SANOFI mark on such website.
Furthermore, the Respondent registered the disputed domain name under a proxy service and refused to participate in the present proceeding in order to provide arguments in its favor or to amicably transfer the disputed domain name to the Complainant during the suspension of the proceeding. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <sanofipacking.com> be transferred to the Complainant.
Date: September 30, 2019