WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Domain Investments
Case No. D2020-2610
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Investments, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sanofica.com> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 8, 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 October 9, 2020. On November 13, 2020, the Center notified the Complainant regarding the word limit of the Complaint. On November 16, 2020, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amendment to the Complaint and amended 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 October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2020.
The Center appointed Jon Lang as the sole panelist in this matter on November 13, 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 is a French multinational pharmaceutical company headquartered in Paris, France which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trademark and trade name SANOFI, which it has used for over 40 years. The Complainant had consolidated net sales of EUR 34.46 billion in 2018, and employs 100,000 people in over 100 countries. It is the proprietor of several registered trademarks including French trademark SANOFI, number 1482708, registered on August 11, 1988; European Union trademark SANOFI, number 004182325, registered on February 9, 2006, and International trademark SANOFI number 1092811, registered on August 11, 2011. The Complainant is also the owner of a number of domain names including <sanofi.com> registered on October 13, 1995, <sanofi.us> registered on May 16, 2002, and <sanofi.ca> registered on January 5, 2004.
The Domain Name <sanofica.com> was registered on September 1, 2020, and resolves to a web page offering it for sale for USD 280.
The above-mentioned trademarks and domain names were registered prior to registration of the Domain Name.
5. Parties’ Contentions
The following is a brief summary of the main assertions of the Complainant.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Domain Name reproduces the SANOFI trademark, a word which has no particular meaning and is therefore highly distinctive. It is the dominant part of the Domain Name, the addition of the geographical acronym “ca” being descriptive of the Complainant’s activities in Canada and insufficient to avoid confusing similarity (and will in fact suggest to Internet users that the Domain Name is related to the Complainant’s activities in Canada). The generic Top-Level Domain (“gTLD”) should be disregarded as it does not serve to distinguish domain names.
The likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trademarks, domain names and goodwill.
The Domain Name is confusingly similar to the SANOFI trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent has neither prior rights nor legitimate interests to justify the use of the well-known and worldwide trademarks and domain names of the Complainant.
The Respondent is not authorized to use the Domain Name and is not in any event using it in connection with a bona fide offering of goods or services to confer a right or legitimate interest in it. The Domain Name resolves to a parking website and has been registered only for the purpose of attracting Internet users into clicking on sponsored links. The Respondent is using the Domain Name to obtain commercial gain by misleadingly diverting consumers.
The Domain Name was registered and is being used in bad faith.
The Respondent’s registration of the Domain Name can in no way be the result of a mere coincidence.
Numerous UDRP panel decisions have recognized the reputation of the Complainant’s SANOFI trademark and the worldwide reputation of its activities. Given the famous and distinctive nature of the SANOFI trademark, the Respondent is likely to have had at least constructive, if not actual notice, of the existence of the Complainant’s marks at the time the Domain Name was registered. This suggests that the Respondent acted with opportunistic bad faith in registering the Domain Name for the purposes of making illegitimate use of it.
The Respondent is using the Domain Name to divert Internet users to a parking website with links to commercial websites, thus benefiting from the Complainant’s reputation, for its own commercial benefit. The Domain Name has therefore been registered for the purposes of attracting Internet users to the Respondent’s website by creating a likelihood of confusion, or at least an impression of association, between the SANOFI trademark and Domain Name.
The Respondent must have been aware of the risk of deception and the confusion that would inevitably arise from the Domain Name given that it could lead Internet users searching for official information or the Complainant’s pharmaceutical products, to the website to which the Domain Name resolves.
The Respondent selected the Domain Name in an attempt to free-ride on the coat-tails of the fame of the Complainant’s SANOFI trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a 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 complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the SANOFI trademark. Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s SANOFI trademark, followed by the letters “ca” which is a geographical designation for Canada. As the SANOFI trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms usually does not prevent confusing similarity.
The well-known SANOFI trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the letters “ca” which follow it, renders the Domain Name something other than confusingly similar (to the SANOFI trademark). In the Panel’s view, they do not. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Domain Name is confusingly similar to the SANOFI trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy thereof has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Given the composition of the Domain Name, the dominant element of which is clearly the Complainant’s SANOFI trademark, an invented and highly distinctive term, there can be no doubt that the Respondent had the Complainant in mind when choosing it. It was not coincidence. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “[…] rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. It seems clear that (without legitimate excuse) the Respondent was indeed trying to create an impression of association with the Complainant in its choice of the Domain Name. Moreover, the nature of the Domain Name carries a risk of implied affiliation with the Complainant (see section 2.5.1 of the WIPO Overview 3.0).
In these circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant asserts that “[t]he litigious domain names are leading to a parking website and have been registered only for the purpose of attracting Internet users into clicking on the sponsored links.” In fact, the Domain Name resolves to a web page which offers it for sale for USD 280 as indicated by the screenshot annexed to the Complaint. The Panel notes that such use of the Domain Name for a parking page could be considered analogous to its passive holding (albeit with the offer for sale in the parking page itself). It appears appropriate therefore to consider that the Domain Name is not being actively used by the Respondent. From the inception of the UDRP, UDRP panels have found “that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”.
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of t he respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.(See section 3.3 of the WIPO Overview 3.0).
The Respondent has chosen an inherently misleading Domain Name incorporating a very distinctive trademark and has offered it for sale.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicative of bad faith registration and use, which include “[…] circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”Whether or not selling the Domain Name to the Complainant, or a competitor of the Complainant was the Respondent’s primary purpose in registration, it seems unlikely that the Respondent could point to any plausible good faith use to which the Domain Name could be put. Indeed, the Respondent has not even bothered to try (having failed submit a Response). In the Panel’s view, the passive holding doctrine clearly supports a finding of bad faith.
In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sanofica.com> be transferred to the Complainant.
Date: November 23, 2020