WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Contact Privacy Inc. Customer 1246827457, Contact Privacy Inc. Customer 1246827457 / Gopal Yadav, Onineaudiotraining
Case No. D2020-0832
1. The Parties
Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Contact Privacy Inc. Customer 1246827457, Contact Privacy Inc. Customer 1246827457 / Gopal Yadav, Onineaudiotraining, India.
2. The Domain Name and Registrar
The disputed domain name <sanofipasteurs.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2020. On April 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 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 Complainant on April 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 9, 2020, of receipt by Center.
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 Respondent of the Complaint, and the proceedings commenced on April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 5, 2020.
The Center appointed Nels T. Lippert as the sole panelist in this matter on May 18, 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
Complainant, Sanofi, is a French multinational pharmaceutical company headquartered in Paris, France. Complainant 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. Sanofi Pasteur is the vaccines division of Sanofi which produces over one billion doses of vaccines each year, offering immunization to more than 500 million people worldwide. Sanofi Pasteur employs almost 15,000 people worldwide and generated EUR 5.118 million in revenue in 2018. It has 12 production and/or R&D sites located worldwide.
Complainant has rights in trademark registrations for the SANOFI mark in many jurisdictions around the world, including the European Union and France, as well as the United States of America, and a number of international registrations with effect in a number of jurisdictions around the world. Registrations for the SANOFI mark date back to at least as early as 1988. A full list of global registrations of the SANOFI trademark is provided in Annex 8 to the Complaint and include:
- French Trademark Registration No. 3831592, registered on May 16, 2011;
- French Trademark Registration No. 96655339, registered on December 11, 1996;
- French Trademark Registration No. 1482708, registered on August 11, 1988;
- European Union Trademark Registration Nos. 010167351 registered on January 7, 2012, 000596023, registered on February 1, 1999 and 004182325, registered on February 9, 2006;
- International Trademark Registration Nos. 1094854 and 1092811 registered on August 11, 2011, designating multiple jurisdictions; and
- United States Registration No. 4178199, registered on July 24, 2012 for a house mark for a full line of pharmaceuticals.
In addition, Complainant has a worldwide consent to use the Pasteur name from the Institut Pasteur which owns registrations of that name alone or in combination with other terms. Complaint, Annex 12.
Complainant owns various domain names corresponding to the SANOFI mark, including <sanofi.com>, registered in 1995 as set out in Annex 9 to the complaint. These domain names include:
<sanofipasteur.com> registered on May 19, 2004;
<sanofipasteur.fr> registered on December 23, 2004; and
<sanofipasteur.ca> registered on February 2, 1998.
These trademark and domain name registrations were obtained prior to Respondent’s registration of the disputed domain name on April 2, 2020.
5. Parties’ Contentions
Complainant asserts that the disputed domain name reproduces the SANOFI trademark which is highly distinctive because it has no particular meaning and reproduces the domain name <sanofipasteur.com> merely adding an “s” to form the plural version. Complainant also cites numerous prior UDRP decisions finding that Complainant’s trademark is well known in many jurisdictions. Complainant contends that the disputed domain name is confusingly similar to Complainant’s SANOFI trademarks and domain names because it reproduces the SANOFI mark in its entirety and also reproduces Complainant’s <sanofipasteur.com> and similar domain names. Complainant further contends that the addition of an “s” and the generic Top-Level Domain (“gTLD”) extension “.com” do not diminish the confusing similarity to Complainants trademark rights.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has never licensed or otherwise authorized Respondent to use its trademarks or to register any domain name that includes Complainant’s trademark. Complainant also notes that there is no relationship between Complainant and Respondent. Complainant further asserts that Respondent has no prior right or legitimate interest justifying use of Complainant’s well-known trademark and domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name or use of the disputed domain name in connection with a bona fide offering of goods or services.
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 SANOFI trademark, Respondent is likely to have constructive if not actual notice as to the existence of Complainant’s trademarks at the time the disputed domain name was registered which suggests that Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an 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 the SANOFI trademarks and the disputed domain name. Finally, Complainant notes that the disputed domain name resolves to an inactive website which constitutes passive holding which falls within the concept of bad faith use.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel should decide a complaint based on the statements and documents submitted and in accordance with the Policy and Rules, and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must establish each of the following:
(i) hat the domain name registered to the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In this case the disputed domain name incorporates Complainant’s SANOFI trademark in its entirety plus the plural of the term “pasteur” which is Complainant’s own vaccines division and a third-party trademark which Complainant has rights to use. As noted in section 1.12 of the WIPO Overview of WIPO Panel vies on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the Complainant’s trademark is recognizable within the disputed domain name, the edition of other third-party marks is insufficient tin itself to avoid a finding of confusing similarity to the Complainant’s mark. Here, Complainant is authorized to use the third-party mark and uses such mark in Complainant’s domain names. Furthermore, the addition of an “s” in the disputed domain name does not avoid confusing similarity. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043. Furthermore, the addition of the applicable Top-Level Domain in a domain name is viewed as a standard registration requirement and is disregarded under the confusing similarity test. WIPO Overview 3.0, section 1.11.1.
The Panel finds the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Based on the above facts and arguments, it is clear that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because Respondent knew or should have known of Complainant and the SANOFI marks and 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. The evidence demonstrates that Respondent uses the disputed domain name to redirect Internet users to an inactive website.
In circumstances such as this, where Complainant has established a prima facie case and Respondent has failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In this case, Complainant has submitted compelling evidence that the disputed domain name is registered and used in bad faith. The evidence establishes that the SANOFI marks and <sanofipasteur> (in the singular) and other domain names were registered and used long before Respondent registered the disputed domain name. The Panel notes that Respondent registered the disputed domain name, which incorporates the name of Complainant’s vaccines division, on April 2, 2020, at a time when there is an increasing call for vaccines due to the coronavirus pandemic. Noting also that the disputed domain name resolves to an inactive website and Respondent has not put forward any arguments as to why it registered the disputed domain name it can be concluded that Respondent registered and uses the disputed domain name in an effort to improperly capitalize on Complainant’s trademark and domain names.
As noted in WIPO Overview 3.0, section 3.3, panelists have found that the non-use of a disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding. Here the passive holding doctrine is amply supported by the high degree of distinctiveness and reputation of Complainant’s trademark; the failure of Respondent to submit a response or provide any evidence of actual or contemplated good-faith use; and the implausibility of any good faith use to which the disputed domain name may be put – indeed especially in the current global health crisis, given Complainant’s activity in the vaccine space, it is difficult to conceive of any.
Therefore, the Panel finds that the disputed domain name was registered and is being used 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, <sanofipasteurs.com> be transferred to Complainant.
Nels T. Lippert
Date: June 1, 2020