WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Aamir Hitawala
Case No. D2021-1781
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Aamir Hitawala, India.
2. The Domain Name and Registrar
The disputed domain name <sanofimail.com> is registered with First Alliance Group Ltd T/A Netclues Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. On June 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2021, 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 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 June 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2021.
The Center appointed Adam Samuel as the sole panelist in this matter on July 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 multinational pharmaceutical company. It owns a number of trademarks for the mark SANOFI, including the International trademark 1091805 registered on August 18, 2011. The Complainant registered the domain name <sanofi.com> on October 13, 1995 through which it promotes its products.
The disputed domain name was registered on May 21, 2021. It currently resolves to a page which reads:
“This site can’t be reached. Check if there is a typo in sanofimail.com. If spelling is correct, try running Windows Network Diagnostics.”
5. Parties’ Contentions
The disputed domain name reproduces the SANOFI trademarks, which in themselves do not have any particular meaning. The Complainant has used its trademark for over thirty years. The reproduction of the Complainant’s trademarks as the dominant part of the disputed name makes the disputed domain name confusingly similar to the Complainant’s trademarks regardless of the addition of the term “mail”. The generic word “mail” is insufficient to avoid confusing similarity. Internet users will be led erroneously to believe that the dispute domain name is related to the Complainant’s mail-related services.
The Respondent has no legitimate interest in using the disputed domain name. The Respondent’s name bears no resemblance to the Complainant’s trademark. The Respondent has no prior rights or legitimate interests that justify the use of the already well-known worldwide trademarks of the Complainant. There is no relationship between the Complainant and Respondent. The Respondent is not using the disputed domain name.
Given the famous and distinctive nature of the Complainant’s trademark SANOFI, the Respondent is likely to have had at least constructive if not actual notice of the existence of the Complainant’s trademarks when he registered the disputed domain name. The disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion or impression of association between the Complainant’s trademarks and the disputed domain name. The Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it, and is passively holding the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right;
(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 disputed domain name consists of the Complainant’s trademark which is a made-up name with no ordinary meaning, the word “mail”, and the gTLD “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The addition of a dictionary word like “mail” to a distinctive trademark does not prevent the confusing similarity that exists between the disputed domain name and the Complainant’s trademark.
Section 1.8 of the WIPO Overview 3.0 says:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, […], meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “sanofimail” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any purpose.
Based on the available record, where the Complainant has made out a preliminary case that the Respondent lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0.
C. Registered and Used in Bad Faith
The Complainant’s trademark SANOFI is a word without any ordinary meaning except as the Complainant’s name and trademark. From this, the Panel concludes that the Respondent knew of the Complainant’s business when it registered the disputed domain name.
Without a Response, it is impossible to know why the Respondent registered the disputed domain name. He is likely to have done this for one or more of the following reasons:
- to sell the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs related to the disputed domain name;
- to disrupt the Complainant’s business; or
- to attract, for commercial gain, Internet users to the Respondent’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.
Each is evidence of registration and use in bad faith, UDRP, paragraph 4(b)(i),(iii), and (iv) of the Policy. This conclusion is reinforced by the fact that the disputed domain name consists primarily of a made-up word corresponding to the Complainant’s trademark, with an added dictionary word, and so has no inherent value except for the Complainant. In these circumstances, the fact that the disputed domain name does not resolve to an active website does not prevent a finding of bad faith. See section 3.3 of WIPO Overview 3.0.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. In the circumstances, there is no need to address the other allegations of bad faith made by the Complainant.
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 <sanofimail.com> be transferred to the Complainant.
Date: July 30, 2021