WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi and Sanofi-Aventis Deutschland GmbH v. Redacted for privacy, Whois Privacy Protection Foundation / Adam Clark
Case No. D2020-3079
1. The Parties
The Complainants are Sanofi, France and Sanofi-Aventis Deutschland GmbH, Germany (collectively named “the Complainant”), represented by Selarl Marchais & Associés, France.
The Respondent is Redacted for privacy, Whois Privacy Protection Foundation, Netherlands / Adam Clark, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dulcolaxt.com> (the “Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed 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 23, 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 November 23, 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 December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. On December 29, 2020, the Respondent sent an email to the Center. On January 4, 2021, the Complainant requested to suspend the proceeding. The Center notified the Suspension of Proceeding on January 12, 2021. On January 13, 2021, the Center received the standard settlement form signed by the Complainant. On March 3, 2021, the Complainant requested the reinstitution of the proceeding. Further to the Complainant's request for reinstitution, the proceeding is reinstituted as of March 8, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on March 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 French multinational pharmaceutical company that operates a life sciences business in more than 100 countries with consolidated net sales in 2018 of more than EUR 34 billion. The Complainant holds registrations for the trademark DULCOLAX in a number of countries, which it uses to designate a laxative that stimulates bowel movements, including, for example, International registration No. 165781 in classes 1 and 5 that has been registered since December 10, 1952.
The Complainant owns a number of domain names that comprise of, or contain, the trademark DULCOLAX, including the domain name <dulcolax.com>, which was registered on December 2, 1997.
The Disputed Domain Name <dulcolaxt.com> was registered on September 28, 2020 and resolved to a website where putative DULCOLAX branded medication and other pharmaceuticals were offered for sale online.
5. Parties’ Contentions
The Complainant cites its trademark registrations for DULCOLAX in various countries as prima facie evidence of ownership.
The Complainant submits that the trademark DULCOLAX is well known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name <dulcolaxt.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the DULCOLAX trademark and that the similarity is not removed by the addition of the letter “t” and addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to divert Internet users to “a website containing a number of hypertext listings, including links to websites advertising, inter alia, pharmaceutical products”. The Complainant also submits: “The Respondent is more than likely generating clickthrough revenue from such listings, in addition to commission revenue from sites through links on its homepage, which does not account for a noncommercial or fair use of the disputed domain name in any respect.”
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the well-known nature of the trademark and its long standing prior use, and that it was being used in a manner where “the Respondent has intentionally attempted to attract, Internet users by creating a likelihood of confusion with the Complainant’s mark and company name as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other location”.
The Respondent did not reply to the Complainant’s contentions, but sent an email on December 29, 2020 saying that: “Hi we delete website, check again.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark DULCOLAX. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the DULCOLAX trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s DULCOLAX trademark; (b) followed the letter “t”; and (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “dulcolaxt”.
It is also well-established that where a domain name incorporates a complainant’s trademark in its entirety, it may be confusingly similar to that mark despite the addition of a descriptive word such as, in this case, the letter “t” (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
In line with numerous previous UDRP panel decisions, this Panel accepts that the addition of the letter “t” does not preclude a finding of confusing similarity (see: Kiloutou v. Domain Drop SA, WIPO Case No. D2006-1105 (“Adding the letter “t” adds very little, if anything, to the overall impression of the disputed domain name”); Hollister Incorporated v. Wristband Resources, Inc., WIPO Case No. D2003-0973 (“the addition of the letter “t”…does not prevent the Domain Name from being considered confusingly similar, if not virtually identical, to the Complainant’s Mark”).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the trademark DULCOLAX is “worldwide well-known”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that the Respondent “has not made a non-commercial or fair use of the disputed domain name as a website containing a number of hypertext listings, including links to websites advertising, inter alia, pharmaceutical products”. In F. Hoffmann-La Roche AG v. Veselko Dragic, Wuntux Trade Ltd., WIPO Case No. D2017-0034, involving an online pharmacy, the panel stated:
“A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that an online pharmacy, selling or purporting to sell ‘brand and generic mediciations [sic] ...’ from a variety of ‘legit manufacturers ...’, to which a confusingly similar domain name resolves, (particularly one that is confusingly similar because it incorporates a widely‑known mark of one particular pharmaceutical manufacturer out of many mentioned on the website concerned), could amount to a bona fide offering of goods or services. […] There is no evidence before this Panel that suggests that the Respondent has rights or legitimate interests in the Disputed Domain Name or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.”
On any objective view, the Respondent is not an authorized reseller with a legitimate interest in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website at the Disputed Domain Name, therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001‑0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an illegitimate commercial use of the Disputed Domain Name by pretending to be associated with the Complainant for the purpose of misleading consumers based on users seeking out the Complainant’s mark DULCOLAX. It could therefore be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that a complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. This Panel finds it most unlikely that the Respondent might have registered the Disputed Domain Name without knowing of the trademark (see Sanofi, Sanofi-Aventis Deutschland GmbH v. 权中俊 (Quan Zhong Jun), WIPO Case No. D2020-2668, (“The Complainants’ DULCOLAX trademarks have been registered in many countries around the world. These registrations were made long prior to the registration of the Disputed Domain Name. The Respondent chose the identical ‘Dulcolax’ term as the distinctive part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the ‘Dulcolax' term for any reason other than the reputation of the Complainants’ trademarks. The Panel finds that the Disputed Domain Name has been registered in bad faith.”).
Further, a gap of more than 20 years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007‑1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by approximately 68 years.
On the issue of use, the Panel notes that the Disputed Domain Name used to resolve to an online website that purportedly offers DULCOLAX branded medications for sale. In line with prior UDRP panel decisions, the Panel finds that the obvious danger of online consumers being afforded inaccurate, incomplete or misleading information about medical products, services and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith (see: Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794; Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155; Parrot S.A. v Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474).
This Panel finds that the Respondent has taken the Complainant’s trademark DULCOLAX and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Name <dulcolaxt.com> be transferred to the Complainant.
Date: April 7, 2021