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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Whois Privacy, Private by Design, LLC / Pramod Mohan

Case No. D2020-2972

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States”) / Pramod Mohan, India.

2. The Domain Name and Registrar(s)

The disputed domain name <sanofi-aventis-job.com> (“Domain Name”) is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing the 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 November 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 amended Complaint on November 17, 2020.

The Center 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on December 22, 2020.

The Center appointed Marylee Jenkins as the sole panelist in this matter on January 8, 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

Based on the review of the uncontested evidence submitted by the Complainant, the Panel finds that the Complainant is the owner of multiple trademark registrations for the word mark SANOFI-AVENTIS in multiple jurisdictions worldwide including: French Trademark Registration No. 3309318 (filed on August 20, 2004; registered 2004) in International classes 01, 03, 05, 09, 10, 16, 38, 41, 42, and 44; French Trademark Registration No. 3288019 (filed on April 26, 2004; registered 2004) in International classes 01, 03, 05, 09, 10, 16, 38, 41, 42, and 44; European Union Trade Mark (“EUTM”) Registration No. 004054193 (filed on September 28, 2004; registered on December 26, 2005) in International classes 01, 03, 05, 10, 38, and 42; EUTM Registration No. 004025318 (filed on September 14, 2004; registered on November 28, 2005) in International classes 01, 03, 05, 09, 10, 16, 38, 41, 42, and 44; International Trademark Registration No. 849323 (registered on February 17, 2005) in International classes 01, 03, 05, 10, 38, and 42 and designating several countries including the United States; and International Trademark Registration No. 839358 (registered on October 01, 2004) in International classes 01, 03, 05, 09, 10, 16, 38, 41, 42, and 44 and designating several countries including the United States (individually and collectively referred to as the “Complainant’s Mark”). The Complainant also owns multiple domain names incorporating the Complainant’s Mark including <sanofi-aventis.com>, <sanofi-aventis.eu>, <sanofi-aventis.fr>, <sanofi-aventis.us>, <Sanofi-aventis.net>, <sanofi-aventis.ca>, <sanofi-aventis.biz>, <sanofi-aventis.info>, <sanofi-aventis.org>, <sanofi-aventis.mobi>, <sanofi-aventis.tel>, and <sanofi-aventis.tel> and markets its products and services through its primary websites accessible at the domain names <sanofi-aventis.com>, <sanofi-aventis.fr>, <sanofi-aventis.us>, and <sanofi-aventis.ca>.

The Domain Name <sanofi-aventis-job.com> was registered on September 26, 2020. There is currently a website accessible at this Domain Name offering money management advice, primarily, directed to gambling and sports betting.

5. Parties’ Contentions

A. Complainant

The Complainant states that it was founded in 2004 as Sanofi-Aventis after the merger of two pharmaceutical companies, Aventis and Sanofi-Synthélabo, and then changed its name to Sanofi in May 2011. The Complainant also states that it engages in the research, development, manufacturing, and marketing of pharmaceutical products principally in the prescription market. The Complainant further maintains that it offers a wide range of patented prescription drugs to treat patients with serious diseases, including cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. The Complainant states that it employs 100,000 people in 100 countries around the world and it is the fourth largest multinational pharmaceutical company in the world by prescription sales. The Complainant maintains several websites at the domain names <sanofi-aventis.com>, <Sanofi-aventis.fr>, <sanofi-aventis.us>, and <sanofi-aventis.ca>.

The Complainant states that it owns and has obtained numerous trademark registrations for the Complainant’s Mark, including those cited above, and that none of these registrations have been abandoned, cancelled, or revoked. Further, the Complainant states that it has made significant investments over the years to advertise, promote, and protect the Complainant’s Mark through various forms of media, including the Internet. Based on its extensive use and trademark registrations, the Complainant alleges that it owns the exclusive right to use the Complainant’s Mark and that Complainant’s Mark is well known.

The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s Mark as it incorporates the Complainant’s Mark completely. The Complainant then alleges that the Respondent has added the descriptive term “jobs” to the Complainant’s Mark, which suggests to viewers that the Domain Name is related to career opportunities at the Complainant and only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s Mark. The Complainant also alleges that there is no meaning to the terms “Sanofi” or “Aventis”, making them highly distinctive.

The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering a Domain Name that incorporates the Complainant’s Mark in its entirety and a closely related term, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s products, and to mislead Internet users as to the source of the Domain Name and the Complainant’s websites.

The Complainant further alleges that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests in the Domain Name. Additionally, the Complainant notes that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Mark. The Complainant further notes that the Respondent has neither business relations with nor knowledge of the Respondent.

The Complainant alleges that the Respondent is using the Domain Name to share gambling advice as a cover for its attempt to suggest that the Respondent is affiliated with or connected to the Complainant. The Complainant alleges that the website lists different topics, including “Health” and “Education,” while only posting on gambling. The Complainant further alleges that this activity constitutes cybersquatting. The Complainant therefore states that the Respondent is not using the Domain Name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as allowed under the Policy.

The Complainant alleges that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant further alleges that the Respondent’s use of the Complainant’s Mark, or any minor variation of it, strongly implies bad faith.

The Complainant alleges that at the time of the registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s Mark and that the registration of a domain name containing well-known trademarks constitutes bad faith per se. The Complainant further alleges that prior decisions under the Policy have stated that SANOFI is one of the most well-known names and most cyber-squatted marks. The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering a Domain Name that incorporates the Complainant’s Mark in its entirety and a closely related phrase, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and the website. By creating this likelihood of confusion between the Complainant’s Mark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Complainant alleges that the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s Mark in order to increase traffic to the Domain Name’s website.

The Complainant further alleges that the Respondent, at the time of the initial filing of the Complaint, had employed a privacy service to hide its identity, which supports an inference of bad faith registration and use. Based on the above, the Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s Mark and that the Respondent should be found to have registered and used the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Mark.

A review of the second-level domain (“sanofi-aventis-job”) of the Domain Name shows that the domain comprises the Complainant’s Mark SANOFI-AVENTIS in its entirety with the descriptive word “jobs” as a suffix. The hyphens in the Domain Name provide no significance in this review in determining whether the Domain Name is identical or confusingly similar to the Complainant’s Mark. The inclusion of the descriptive word “jobs” in the Domain Name does not avoid a finding of confusing similarity between the Domain Name and the Complainant’s Mark.

Based on this uncontested evidence, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed, or authorized the Respondent to register or use the Complainant’s Mark in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Name, as an individual, business, or otherwise. Rather the uncontested evidence clearly shows that the Complainant had well-established rights to the Complainant’s Mark in multiple jurisdictions worldwide that substantially pre-date the Respondent’s registration of the Domain Name. In addition, the Complainant has presented sufficient evidence to result in a finding that the Respondent was using the Domain Name to misleadingly divert Internet users looking for possible jobs with the Complainant to the Respondent’s unauthorized website offering money management advice, primarily, directed to gambling and sports betting with links to blank web pages for “health” and “education.” Such use of the Domain Name by the Respondent cannot be considered to be legitimate noncommercial or fair use.

The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent clearly had actual knowledge of the Complainant’s Mark when registering the Domain Name. This finding is supported by the uncontested and extensive evidence showing that the registration of the Domain Name by the Respondent in no way pre-dates the Complainant’s substantially earlier registration dates for the Complainant’s Mark. Rather the review of the Complainant’s many trademark registrations for the word mark SANOFI-AVENTIS in multiple classes and jurisdictions worldwide shows that such registrations well pre-date the Respondent’s registration of the Domain Name. Coupled with the evidence of the Complainant’s own websites at the domain names <sanofi-aventis.com>, <sanofi-aventis.fr>, <sanofi-aventis.us>, and <sanofi-aventis.ca>, the Complainant has more than sufficiently shown that the Respondent registered the Domain Name in bad faith for the purpose of intentionally diverting Internet users looking for jobs with the Complainant to the Respondent’s unauthorized website at the Domain Name. The evidence of the Complainant’s own websites at the domain names <sanofi-aventis.com>, <sanofi-aventis.fr>, <sanofi-aventis.us>, and <sanofi-aventis.ca>, show that the Respondent was clearly aware of the Complainant’s Mark and the Complainant’s websites when registering the Domain Name. As the uncontested evidence also shows, the Respondent was not making any legitimate noncommercial or fair use of the Domain Name and clearly had knowledge of the Complainant, the Complainant’s Mark, and the Complainant’s websites based on the Respondent’s unauthorized website. The Respondent’s failure to provide accurate contact information in the Domain Name registration further supports a finding of the Respondent’s bad faith registration and use of the Domain Name.

The Panel therefore concludes that the Respondent registered and is using the Domain Name to intentionally attract users searching for jobs with the Complainant to the Respondent’s unauthorized website by creating a likelihood of confusion with the Complainant’s Mark as well as its websites as to the source, sponsorship, affiliation, or endorsement thereof.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <sanofi-aventis-job.com> be canceled, as requested by the Complainant in its Complaint.

Marylee Jenkins
Sole Panelist
Date: January 22, 2021

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