WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Domains By Proxy, LLC / Coby McQuay-Lee
Case No. D2020-0795
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Coby McQuay-Lee, United States.
2. The Domain Name and Registrar
The disputed domain name <plaquenil.org> 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 April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2020, 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 April 14, 2020 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 15, 2020.
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 April 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2020.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on June 3, 2020. 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, Sanofi, is a French multinational pharmaceutical company, with an investment of 5.9 billion EUR in 2018, and is also engaged manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market. The Complainant is located in more than 100 countries, with around 100,000 employees.
The Complainant offers a wide range of patented prescription drugs all over the world, mainly in the fields of cardiovascular, thrombosis, metabolic disorder, oncology, central nervous system, internal medicine and vaccines.
The Complainant is the owner of the following trademark registrations concerning pharmaceutical products:
- French trademark PLAQUENIL with No. 1480756, registered on May 27, 1988;
- European Union trademark PLAQUENIL with No. 000041962, registered on November 27, 1998; and
- Chinese trademark PLAQUENIL with No. 3973694, registered on September 21, 2006.
The Complainant also owns the domain name <plaquenil.com> registered on October 28, 1998.
The disputed domain name was registered on March 19, 2020 and resolves to a parking page.
5. Parties’ Contentions
The Complaint includes the following contentions:
(i) Identical or Confusingly Similar
The Complainant states that SANOFI is the rightful owner of the trademarks PLAQUENIL registered in France, European Union, and China and the domain name <plaquenil.com>. The disputed domain name reproduces PLAQUENIL trademarks and domain name which are highly distinctive and there is likelihood of confusion between the disputed domain name and the Complainant’s aforementioned trademarks and domain name. The Complainant alleges that 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 is related to official PLAQUENIL websites, it can be perceived as some of Complainant’s special websites designed to provide information on PLAQUENIL’s goods. The disputed domain name is to be considered as confusingly similar to Complainant’s trademarks, domain names, and corporate name.
(ii) Rights or legitimate interests
The Complainant states that the Respondent does not have any rights or legitimate interests in using the disputed domain name. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including its trademarks, there is no relationship between the parties, and the Respondent has used the Complainant’s trademarks for its own use and incorporated them into his domain name without the Complainant’s authorization.
The Complainant asserts that the 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, as disputed domain name’s website simply refers to an inactive parking page and has been registered only for the purpose of attracting Internet users into clicking on the sponsored links. The Respondent is using the disputed domain name to obtain commercial gain by misleadingly diverting consumer and not making legitimate noncommercial or fair use of the disputed domain name. Under these circumstances, the absence of any authorization by the Complainant and the lack of legitimate reason in the use of the disputed domain name at stake both prove that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
(iii) Registration and Use in Bad Faith
The Complainant contends the Respondent’s bad faith based on the following grounds;
- The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide trademarks and domain name of the Complainant.
- 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 between the PLAQUENIL trademarks and the disputed domain name, as SANOFI is nowadays one of the world leaders among pharmaceutical companies and trademark PLAQUENIL has been recently been under the spotlight within the frame of the COVID-19 pandemic. Therefore, it can only be found that the Respondent must have been aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name since it could lead internet users searching for official PLAQUENIL websites to the litigious page.
- Given the famous and distinctive nature of the PLAQUENIL marks, the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it.
- The Respondent is using the disputed domain name to divert Internet users to a typical parking website with links to commercial websites, in order to take benefit of the Complainant’s reputation for commercial profit. The disputed domain name leads to a website which displays to Internet users links named after different drugs or molecules containing hydroxychloroquine. By clicking on the links, the Internet user is redirected to a page displaying sponsored listings. The Respondent is trying to ride off the Complainant’s worldwide reputation. The advertisements and links proposed on the parking websites provide income to the Respondent on a pay-per-click (“PPC”) basis.
-The lack of use of the disputed domain name particularly close to those used by the Complainant is likely to cause irreparable prejudice to their general goodwill because Internet users could be led to believe that Complainant is not on the Internet or that Complainant is out of business.
Consequently, the disputed domain name 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. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements are present:
(i) the disputed domain name registered by the Respondent 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 Complainant submits sufficient evidence for its registered trademarks in the European Union, France and China. Accordingly, the Panel is satisfied that the Complainant is the owner of the trademark PLAQUENIL.
The disputed domain name entirely incorporates the Complainant’s trademark. As numerous prior UDRP Panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525: “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for the purposes of the Policy.”
It is an accepted principle that generic Top-Level Domains (“gTLDs”), in this case “.org”, are to be typically disregarded in the consideration of the issue of whether a domain name is identical or confusingly similar to a complainant’s trademark. Disregarding the gTLD “.org”, the Panel notes that the disputed domain name is identical to the Complainant’s trademark.
In the light of the above the Panel finds that the disputed domain name is identical to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.)
The Panel confirms that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has neither replied to the Complainant’s contentions formally nor presented any evidence to support his rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case, the Panel concluded that the Complainant has established the second element of paragraph 4(a) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765; Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630; Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493.
The Panel also notes that there is no evidence of the Respondent’s demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name resolves to a parking page which contains third parties’ sponsored links through the listed keywords related to the business field of the Complainant. As there is a statement "This Web page is parked for FREE, courtesy of GoDaddy.com" on the website to which the disputed domain name resolves, it appears that the PPC advertisements were generated by the Registrar (“GoDaddy”) and the Respondent allowed the Registrar to control the content on the website. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPOCase No. D2007-0267. The Panel points that holding the disputed domain name passively through the Registrar's free parking service does not constitute rights or legitimate interests to the Respondent in the disputed domain name in the circumstances of this case.
Furthermore, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Here, noting the disputed domain name is identical to the Complainant’s trademark, there is a high risk of implied affiliation and such composition cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. (WIPO Overview 3.0, section 2.5.1.)
As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled by the Complainant.
C. Registered and Used in Bad Faith
The Panel confirms the Complainant’s trademark PLAQUENIL is widely-known especially in the pharmaceutical sector and it has been in use by the Complainant for the drug hydroxychloroquine. As it is stated in WIPO Overview 3.0, section 4.8 a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. In this regard, the drug hydroxychloroquine has come under recent international media scrutiny in the context of the COVID-19 pandemic, and this scrutiny corresponds to the registration date of the disputed domain name. The Panel is convinced that the Respondent was aware of the Complainant and its trademark PLAQUENIL when the disputed domain name was registered and the Respondent’s aim of the registration was to take advantage of the confusion between the domain name and the Complainant’s widely known trademark that has been used in connection to the recently spotlighted drug hydroxychloroquine. Several UDRP panels have held that registering and using the domain names which correspond to widely-known trademarks suggests bad faith. (Philip Morris USA Inc. v. Luca Brignoli, WIPO Case No. D2014-1180; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
As stated above the disputed domain name resolves to a parking page which contains third parties’ sponsored links through the listed keywords related to the business field of the Complainant and there is a statement "This Web page is parked for FREE, courtesy of GoDaddy.com" on the website. The Panel is in the opinion that the Registrar and not the Respondent obtains a commercial gain by diverting Internet users to the PPC links. Nevertheless, the Respondent is responsible for the content of the website and he should be aware that the PPC links related to the business field of the Complainant are generated in the parking page. See, for example, StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC, WIPO Case No. D2018-0497 “whether the commercial gain from misled Internet users is gained by the Respondent or by the Registrar (or by another third party), it remains that the Respondent controls and cannot (absent some special circumstance) disclaim responsibility for, the content appearing on the website to which the disputed domain name resolves.” It is clear that the object of registering the disputed domain name consisting of the Complainant’s trademark and allowing the PPC links related to the field of the Complainant in the website to which the disputed domain name resolves should be commercial gain by misleading the Internet users. As the UDRP panel pointed out in its decision of Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491 by referring Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, it does not matter whether the Respondent itself or a third party gains profit because the reason for such profits would be always the registration of the disputed domain names by the Respondent. It has been established in numerous UDRP decisions that such conduct constitutes bad faith of the Respondent set out at paragraph 4(b)(iv) of the Policy.
Having considered all the facts in this case, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith.
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 <plaquenil.org> be transferred to the Complainant
Ugur G. Yalçiner
Date: June 17, 2020