WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Sarah Plaschg, Astara Immobilien GmbH
Case No. D2020-2632
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Sarah Plaschg, Astara Immobilien GmbH, Austria.
2. The Domain Names and Registrar
The disputed domain names <sanofiaventistoken.com> (hereinafter, disputed domain name No 1) and <sanofitoken.com> (hereinafter, disputed domain name No 2) are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English language with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center further verified that the Complaint together with the 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”).
On October 14, 2020, the Center informed the Complainant that the language of the registration agreement is German and instructed the Complainant to alternatively provide by October 17, 2020, evidence that the Respondent agrees to English language as the language of proocedings, to submit the Complaint in German or to submit a request for English to be the language of the proceedings. The Respondent was invited to provide his comments by October 19, 2020. On October 16, 2020, the Complainant filed a submission requesting that English be the language of the proceedings. The Respondent did not respond.
In response to a notification by the Center of October 21, 2020 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 22, 2020.
In accordance with paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2020. In accordance with paragraph 5 of the Rules, the due date for Response was November 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 26, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a French multinational pharmaceutical company headquartered in Paris (France). It is one of the largest pharmaceuticals in the world. It engages in research and development, manufacturing and marketing pharmaceutical products for sale. The Complainant was formed by a merger in 2004 and changed its name into Sanofi in 2011. The Complainant is settled in more than 100 countries on all five continents.
The Complainant is the owner of several registrations worldwide for the trademarks SANOFI and SANOFI-AVENTIS, alone or with other verbal or figurative elements, in particular:
French trademark SANOFI No 1482708, registered on August 11, 1988 in classes 1, 3-5, 9, 10, 16,
25, 28 and 31;
- European Union trademark SANOFI No 004182325, filed on December 8, 2004, and registered on February 9, 2006, in classes 1, 9, 10, 16, 38, 41, 42 and 44;
- International trademark SANOFI No 1094854, registered on August 11, 2011 in classes 3 and 5;
French trademark SANOFI-AVENTIS No 3288019, registered on April 26, 2004, in classes 1, 3, 5, 9, 10, 16, 38, 41 42 and 44;
- European Union trademark SANOFI-AVENTIS No 004025318, filed on September 14, 2004, and registered on November 3, 2005 in classes 1, 3, 5, 9, 10, 16, 38, 41, 42 and 44; and
- International trademark SANOFI-AVENTIS No 839358, registered on October 1, 2004, in classes 1, 3, 5, 9, 10, 16, 38, 41, 42 and 44.
The Complainant is also the owner of an important number of domain names comprising SANOFI or SANOFI-AVENTIS, such as <sanofi.com>, <sanofi.eu>, <sanofi-aventis.com>, <sanofi-aventis.eu> and <sanofi-aventis.at>. Most of these domain names are used by the Complainant.
The disputed domain names were registered by the Respondent on July 15, 2020. They are linked to a parking page of the hosting company for the said names, Hoststar.
5. Parties’ Contentions
The Complainant alleges to be the owner of rights over the names SANOFI and SANOFI-AVENTIS which were registered worldwide as trademarks. The Complainant also claims to be the owner of a large number of domain names comprising these two names, which were all registered prior to the registration date of the disputed domain names. The Complainant underlines that both its trademarks SANOFI and SANOFI‑AVENTIS are well-known worldwide. SANOFI is reproduced in its entirety in both disputed domain names and SANOFI-AVENTIS in the disputed domain name No 1. The term “token” which is added in both disputed domain names is descriptive and commonly used in the pharmaceutical industry in relation to some services. The Complainant thus concludes that the disputed domain names are therefore confusingly similar to the trademark rights of the Complainant on its above-mentioned trademarks.
The Complainant refers to the fact that the Respondent has no legitimate right or interest in the disputed domain names: its business name is highly distinctive and does not contain the names SANOFI or SANOFI-AVENTIS; the Complainant never authorized by any mean whatsoever the use of the said names to the Respondent; the Respondent is not making a legitimate noncommercial use of the disputed domain names since they are inactive.
The Complainant finally alleges that the disputed domain names were both registered and used in bad faith (“opportunistic bad faith”), notably given the status of famous mark of SANOFI and SANOFI-AVENTIS. In this regard, the Complainant is of the opinion that the disputed domain names were registered for the purpose of attracting Internet users to the Respondent’s website. Furthermore, the Complainant raises that the disputed domain names are not linked to active websites and that passive holding falls also under the terms of the UDRP and is in certain circumstances considered as an indicator of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Language of proceedings
Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise (see WIPO of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO 3.0”, section 4.5.1.).
In the present case the language of the proceedings would thus be German.
Notwithstanding the Complainant made a submission requesting the language of the proceedings to be English, based on the following grounds:
Firstly, the spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language. The Complainant’s business is primarily operated in English which is therefore its preferred method of communication.
Secondly, the disputed domain names contain the English word “token”, a choice made by the Respondent which shows that he is acquainted with the English language.
Thirdly, the translation of the Complaint into German would constitute an administrative and costly burden for the Complainant.
Fourthly, the disputed domain names were registered through a company which name includes several English terms.
In the light of the above and in the absence of a reaction by the Respondent, the Panel agrees that English shall be the language of the present proceedings.
B. Identical or Confusingly Similar
The Complainant showed that it has trademark rights in SANOFI and SANOFI-AVENTIS through several registrations designating many countries notably within the European Union. Based on the case file, the Panel finds that said trademarks, which are widely used in many countries for pharmaceutical products, are well-known trademarks. The Complainant has provided sufficient evidence in this regard.
According to WIPO Overview 3.0, section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name No 1 contains SANOFI in its entirety while the disputed domain name No 2 comprises both trademarks of the Complainant in their entirety. The mere addition of the descriptive term “token” which is a standard term used in relation to pharmaceutical services on the Internet obviously does not prevent confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Complainant makes several statements showing that it never allowed the Respondent to use the trademarks SANOFI and SANOFI-AVENTIS by any means whatsoever and that the Respondent would not have any rights in the names SANOFI and/or SANOFI-AVENTIS or would be known by it.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.
The Respondent has chosen not to reply. The Panel also notes that the disputed domain names are inactive.
Furthermore, the Respondent seems to be active in real estate and no evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain names, in particular that the Respondent has been commonly known by the disputed domain names or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain names.
Consequently, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant has shown that its SANOFI and SANOFI-AVENTIS trademarks are registered and are widely used worldwide by the Complainant in relation to pharmaceutical products. As stated by several panels in past UDRP decisions, SANOFI and SANOFI-AVENTIS can be considered as well-known trademarks.
Hence, the Panel agrees with the Complainant regarding the fact that the Respondent knew or should have known about the Complainant’s trademark and deliberately registered the confusingly similar disputed domain names (see WIPO Overview 3.0, section 3.2.2).
The disputed domain names are inactive. The circumstances of this case, including the reputation of the Complainant’s trademark and implausibility of any good faith use of the disputed domain names, support a finding that the passive holding of the disputed domain names is in bad faith. See WIPO Overview 3.0, section 3.3.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainant has established its case 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, <sanofiaventistoken.com> and <sanofitoken.com> be transferred to the Complainant.
Theda König Horowicz
Date: December 14, 2020