WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Mary Englehart
Case No. D2020-2612
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Mary Englehart, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sanofi360.com> (the “Domain Name”) 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 October 7, 2020. On October 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 9, 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 12, 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. Shortly before the Center’s notification of Respondent default issued on November 9, 2020, the Center received email communications from the Respondent, requesting an extension of response time. On November 13, 2020, the Center granted an extension of time until November 18, 2020 in accordance with paragraphs 5(b) and 5(e) of the Rules. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed with panel appointment on November 19, 2020.
The Center appointed Jon Lang as the sole panelist in this matter on November 19, 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 <sanofi360.com> was registered on September 15, 2020, and resolves to a website displaying pay-per-click links.
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 with the numbers that follow it (“360”) being insignificant for the purposes of distinguishing the SANOFI trademark mark and Domain Name. The generic Top-Level Domain (“gTLD”) should be disregarded as it does not serve to distinguish domain names.
The addition of the numbers “360” strengthens the idea of affiliation with the Complainant and consumers requiring services provided by the Complainant might enter the site to which the Domain Name resolves expecting to obtain a presentation of the global strategy, marketing and communication of the Complainant.
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 so as 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 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 numbers “360”. 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. Nor do numbers.
The well-known SANOFI trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the numbers “360” that follow it, renders the Domain Name something other than confusingly similar (to the SANOFI trademark). In the Panel’s view, it does 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.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name, and given the nature of the website to which the Domain Name resolves, i.e., a parking website with links to commercial websites (some of which may compete with the Complainant’s business), it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of the Domain Name suggests the very opposite - the dominant element is the Complainant’s well-known SANOFI trademark with the addition of numbers which, together, are sometimes used to indicate, in a business sense, all points of view, seeing everything, the full picture, a review that is comprehensive etc. The addition of “360” therefore, rather than indicating that the Domain Name has nothing at all to do with the Complainant, may well indicate that it has everything to do with the Complainant. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party (and in some cases, possibly competing) websites. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy.
In all the 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 Respondent must have been aware of the Complainant and its SANOFI trademark at the time of registration of the Domain Name given its formulation.
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The purpose behind registration of the Domain Name appears to have been to attract Internet users to the Respondent’s (commercial) website using a domain name confusingly similar to the Complainant’s SANOFI trademark. In other words, the circumstances envisaged above. The fact that links on the website to which the Domain Name resolves might be automatically generated does not prevent a finding of bad faith under the Policy. (See section 3.5 of the WIPO Overview 3.0).
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 <sanofi360.com> be cancelled.
Date: November 23, 2020