WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Bradley Perkey, greenhood
Case No. D2020-3011
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Bradley Perkey, greenhood, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cn-sannofi.com> is 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 November 12, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 for the disputed domain name.
The Center verified that 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 November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on December 14, 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 multinational pharmaceutical company with its headquarters in Paris, France. It is the world’s fourth largest pharmaceutical company, by prescription sales, and it provides its products to over 100 countries.
The Complainant trades as SANOFI and it has registered numerous trade marks worldwide to protect this trading style. These include, by way of example only, European Union Trade Mark, registration number 004182325, for SANOFI, registered on February 9, 2006, in classes 1, 9, 10, 16, 38, 41, 42, and 44. The Complainant also has registered many domain names which include the Complainant’s SANOFI mark, the majority of which are in active use, including <sanofi.com>, <sanofi.eu>, <sanofi.cn>, and <sanofi.us>.
The disputed domain name was registered on July 13, 2020. It resolves to a directory page containing pay-per-click (“PPC”) links which relate to a variety of subjects, including CNS News, CNS Com, CNS Lighting, Conservative Websites and CNS Lymphoma.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its portfolio of SANOFI trade marks, full details of one of these marks having been set out above, and says that Sanofi is a term with no particular meaning and is therefore highly distinctive. The Complainant’s mark comprises the distinctive and dominant part of the disputed domain name. The addition of the letters “cn” are descriptive, as these letters are an abbreviation for “China” and Internet users will therefore still associate the disputed domain name with the Complainant. The typographical mistake of a double “n” in “Sanofi” does not alter the perception of the SANOFI trade marks by Internet users. Accordingly, the disputed domain name is confusingly similar to the Complainant’s mark.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name, nor has the Complainant licensed or otherwise authorized the Respondent to use its trade marks or to register any domain name including its trade marks. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name in that the use of the disputed domain name to resolve to a parking website does not comprise use in connection with a bona fide offering of goods and services; see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.
Lastly, the Complainant says that the disputed domain name has been registered and is being used in bad faith. Opportunistic bad faith will be found when a contested domain name appears confusingly similar to a Complainant’s well-known trade mark. The registration of a domain name that is confusingly similar to a famous trade mark by an entity that has no relationship to that mark is itself evidence of bad faith registration. The Respondent had both constructive and actual knowledge of the Complainant’s mark and chose nevertheless to exploit it. This is indicative of bad faith registration; see, for example; NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077. Furthermore, the use of the disputed domain name in order to redirect to a parking website is indicative of bad faith use under paragraph 4(b)(iv) of the Policy; see Manheim, Inc. v. Triton Logic LLC, WIPO Case No. D2014-1562.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of the many registered trade marks it owns for SANOFI, which establish its rights in this mark.
As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when assessing confusing similarity. There are therefore three differences between the disputed domain name and the Complainant’s mark, namely the addition of the prefix “cn” (which will be perceived by many Internet users as denoting China), a hyphen and the insertion of an additional “n” in the Complainant’s mark, so that it is presented within the disputed domain name as “sannofi”. None of these differences are substantial, nor do they prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “While each case is judged on its own merits, 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”. Furthermore, the addition of the letters “cn”, irrespective of whether they were understood by Internet users as an abbreviation for China, would not prevent a finding of confusing similarity.
The Complainant’s distinctive SANOFI trade mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods or services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Section 2.9 of the WIPO Overview 3.0 deals with the position of a respondent’s right or legitimate interest in a PPC website and explains that “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. A number of the links on the Respondent’s webpage do not seem to have any relationship with the Complainant’s business. However, “CNS” is a generally known acronym for “Central Nervous System” and so CNS Lymphoma and, to some degree, CNS News and CNS Com, can be perceived as relating to health-related issues and to have some connection with the Complainant’s business. But, in any event, the distinctive character and reputation of the Complainant’s SANOFI mark is such that any use of it by the Respondent without the licence or authority of the Complainant, even as a typosquat variant, capitalizes on the repute of the Complainant’s mark and cannot amount to use in connection with a bona fide offering of goods or services; see Candi Controls, Inc. v. Whois Privacy Protection Service Inc. / Domain Vault LLC, WIPO Case No. D2016-0818.
The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character and does not constitute fair use.
The Complainant has made out a prima facie case under the second element and, in the absence of any response to it by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s registered trade mark rights for SANOFI were acquired many years prior to the Respondent’s registration of the disputed domain name. The disputed domain name incorporates a misspelling of the Complainant’s well-known trade mark SANOFI with the addition of the prefix “cn” (which will be perceived by many Internet users as denoting China where the Complainant also operates). It is therefore reasonable to infer that the Respondent was aware of the Complainant’s mark at the date of registration of the disputed domain name. As explained at section 3.1.4 of the WIPO Overview 3.0, registration of a domain name which is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a well-known trade mark can create a presumption of bad faith. See, by way of example, Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited, WIPO Case No. D2017-2395, in which the panel commented that; “It is well-settled that the practice of typosquatting constitutes an evidence of the bad faith registration of a domain name”. See, by way of further example, Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039 in which the panel commented that; “Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”.
The only known use to which the disputed domain name has been put is to point to a webpage containing PPC links. Such webpages are permissible where the domain name in issue consists of a dictionary word or phrase and is used to host PPC links, which relate to that word or phrase; see section 2.9 of the WIPO Overview 3.0. However, it has been well established in previous decisions under the Policy that such conduct can, in other circumstances, amount to bad faith use. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “[…] the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name[s] resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The circumstances of the Respondent’s use of the disputed domain name are similar to those outlined in Yahoo! Inc. v. Hildegard Gruener, supra. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 name <cn-sannofi.com> be transferred to the Complainant.
Date: December 29, 2020