WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Wes Martz
Case No. D2020-2624
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Wes Martz, United States.
2. The Domain Names and Registrars
The disputed domain names <sanoficlinicalresearch.com> and <sanoficlinicaltrials.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2020. On October 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 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 16, 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 October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent contacted the Center on October 16, 2020 and November 17, 2020, but did not submit a formal response. After the deadline to submit a Response, the proceedings were suspended to allow the Parties to reach a settlement agreement. Further to the expiry of the suspension period, the proceedings were reinstituted and on December 29, 2020, the Center informed the Parties that it would proceed to appoint a panel.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 29, 2021. 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 major pharmaceuticals company based in France. The Complainant is established world-wide and is engaged in research and development, manufacturing and marketing of prescription and over-the-counter medicines. The scale of the Complainant is that it employs 100,000 people internationally and has recorded net sales of over EUR 30 billion per year in recent years.
The Complainant owns a number of trademarks for SANOFI, of which the following may be considered representative for this proceeding:
SANOFI, French trademark, registered on August 11, 1988, registration number 1482708, in classes 1, 3, 4, 5, 10, 16, 25, 28, and 31;
SANOFI, European Union Trade Mark, registered on February 9, 2006, registration number 4182325, in classes 1, 9, 10, 16, 38, 41, 42, and 44;
SANOFI, International Trademark, registered on August 11, 2011, registration number 1092811, in classes 1, 9, 10, 16, 38, 41, 42, and 44.
The Complainant also owns a number of domain names incorporating its trademark, including <sanofi.com>, <sanofi.eu>, <sanofi.fr>, <sanofi.us>, <sanofi.net>, <sanofi.ca>, <sanofi.biz>, <sanofi.info>, <sanofi.org>, <sanofi.mobi>, and <sanofi.tel>.
The disputed domain names were both registered by the Respondent on July 16, 2020 and have resolved to similar but not identical websites with pay-per-click links mostly about clinical research or clinical trials. The only background information offered by the Respondent was contained in emails in which he said he registered the disputed domain names in connection with the Complainant's clinical trials, intending to transfer them, and could not find out how to cancel them.
5. Parties’ Contentions
The Complainant says the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant's trademark word SANOFI is highly distinctive, has no particular meaning, has been used for 40 years, and is well advertised internationally including in the United States. The Complainant's trademark is wholly reproduced in the disputed domain names, which are confusingly similar to the Complainant’s trademark irrespective of the adjunct terms “clinical research” or “clinical trials”, and these adjunct terms may increase any confusing apparent affiliation of the Respondent with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has never had any relationship with the Complainant or been licensed or authorised to use the Complainant's trademark in any way. The disputed domain names are not in use in connection with a bona fide offering of goods or services but lead to parking websites with sponsored links, constituting use for commercial gain. The Complainant said the Respondent having that name could not claim to be known commonly by the disputed domain names. It may be inferred that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant's trademark is so well known that the Respondent is likely to have had at least constructive notice of its existence prior to registration of the disputed domain names, which would constitute registration in opportunistic bad faith.
The Complainant says the Respondent cannot have any legitimate interest in the disputed domain names, which incorporate the Complainant's trademark. Their purpose is to attract Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant's trademark. The disputed domain names take Internet users to a parking website with commercial advertising links. The Respondent is thereby intending to generate click-through revenue, which, since it relies on the fame of the Complainant's trademark in order to attract visitors, amounts to use of the disputed domain names in bad faith.
The Complainant says the fact that the disputed domain names are not in proper use could be damaging to the Complainant's interests if visitors believe the Complainant is not using the Internet, or may have gone out of business.
The Complainant has cited numerous previous decisions under the Policy that it believes support its position and points to 85 decisions concerning itself.
The Complainant requests the cancelation of the disputed domain names.
The Respondent did not provide any formal Response to the Complainant’s contentions.
The Respondent did, however, send certain emails. On October 16, 2020, after receiving the amendment to the Complaint, the Respondent emailed the Center and the Complainant, among others, and stated: “I work for a company that is contracting with Sanofi to host its clinical trial informational website so secured these domains while they were available with the intent to transfer”.
On November 17, 2020, the Respondent emailed the Registrar, copied to the Center and the Complainant among others, stating: “I wish to cancel these domain registrations, but I don't see an option to do so on the provider website where I initially registered them (whois.com). Can you provide any guidance on completing this? Thank you”.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel has inspected the trademark registration documentation produced in evidence by the Complainant and is satisfied that it has the requisite rights under paragraph 4(a)(i) of the Policy in the trademark SANOFI.
The disputed domains names are <sanoficlinicalresearch.com> and <sanoficlinicaltrials.com>, of which the generic Top-Level Domain (“gTLD”) “.com” may be disregarded in the determination of confusing similarity. Each of the disputed domain names features prominently the Complainant's trademark SANOFI in its entirety, and is to that extent confusingly similar to the trademark. The suffixed descriptive terms “clinical research” and “clinical trials” are found not to detract from confusing similarity between the respective disputed domain name and the Complainant's trademark. Accordingly the Panel finds for the Complainant in respect of each disputed domain name under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain names and has never had any relevant relationship with the Complainant.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
Notwithstanding the Respondent's email on receipt of the amendment to the Complaint, asserting that he works for “a company that is contracting with Sanofi to host its clinical trial informational website”, he has produced no evidence in support of this claim and no evidence that the Complainant has authorised the use of its trademark in the disputed domain names for any such purpose. The Panel finds no evidence that the Respondent has intended to use the disputed domain names in connection with a bona fide offering of goods or services, or has been commonly known by the disputed domain names, or that there has been any legitimate noncommercial or fair use of them.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The Complainant has produced in evidence a screen capture of the websites to which the disputed domain names resolved on October 7, 2020, the respective contents of which overlapped.
The website of <sanoficlinicaltrials.com> displayed “Related Searches”, namely “Paid Clinical Trial Volunteers Needed”, “Local Clinical Trials”, “Sign up for Clinical Trials”,” Clinical Trial Patient Recruitment”, “Clinical Research Studies”, “Clinical Trials”, and “Studies on Depression”.
The website of <sanoficlinicalresearch.com> displayed “Sign up for Clinical Trials”, “Local Clinical Trials”, “Clinical Trials Available”, “Paid Clinical Trial Volunteers Needed”, “Clinical Trial Recruitment”, “Clinical Research Studies”, and “Clinical Research Jobs”.
These various “Related Searches” on the Respondent’s websites may reasonably be presumed to be link categories that will lead the viewer who chooses to click on them directly or indirectly to websites provided by advertises according to the pay-per-click business model. In this model the owner of the website from which the click originated, i.e., the Respondent, would receive a share of the advertising revenue paid by the target website. Insofar as the Complainant’s trademark, incorporated into the disputed domain names, plays a prominent part in the attraction of Internet users to the Respondent’s websites and the links displayed therein, the Respondent is found, on the balance of probabilities, to be intending to make a commercial gain through the anticipation that at least some Internet users may be confused by the presence of the Complainant’s trademark into expecting to be taken to the Complainant’s Internet presence. On the evidence, the Respondent is found to be using the disputed domain names in bad faith for commercial gain by confusion within the meaning of paragraph 4(b)(iv) of the Policy and, on the balance of probabilities, to have registered the disputed domain names for the bad faith purpose for which they have been used.
The Panel accepts the Complainant’s contention that the disappointing user experience of visitors to the websites to which the disputed domain names resolve, if visitors believe they have reached a website endorsed by the Complainant, could be detrimental to the reputation and goodwill of the Complainant, and is a compounding factor in the Respondent’s bad faith in this instance.
Accordingly the Panel finds the disputed domain names to have been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
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 names <sanoficlinicalresearch.com> and <sanoficlinicaltrials.com> be cancelled.
Dr. Clive N.A. Trotman
Date: February 12, 2021