WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Domain Admin, Whoisprotection.cc / Jose Flora, Waeco mart ltd
Case No. D2021-1857
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Jose Flora, Waeco mart ltd, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <sanofipharms.com> (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing 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 June 15, 2021 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 June 16, 2021.
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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2021.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 2, 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 company headquartered in Paris (France), established in more than 100 countries and employing 100,000 people, with consolidated net sales of 34.46 billion euros in 2018, and 35.05 billion euros in 2017, which engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication.
The Complainant owns, inter alia, the following trade marks (the “Trade Marks”):
- French trademark SANOFI, registered on No. 1482708 on August 11, 1988;
- French trademark SANOFI, registered under No. 96655339 on December 11, 1996;
- European Union trademark SANOFI, registered under No. 000596023 on February 1, 1999;
- European Union trademark SANOFI, registered under No. 004182325 on February 9, 2006;
- United States trademark SANOFI registered under No. 85396658 on July 24, 2012.
The Domain Name was registered on May 3, 2021.
5. Parties’ Contentions
According to the Complainant, the Domain Name is confusingly similar to the Trade Marks since it contains the phantasy term “SANOFI”, of which the Trade Marks consist, in its entirety, while it is combined with a descriptive term, and followed by the generic top level designation (“gTLD”) “.com”, which should be disregarded as it does not serve to distinguish domain names.
The Complainant contends that the Respondent does not have any legitimate interest regarding the Domain Name since the name of the Respondent has no resemblance to the term SANOFI which has no particular meaning and is therefore highly distinctive. Furthermore, the Complainant submits that it has never licensed or otherwise authorized the Respondent to use the Trade Marks or to register any domain name including the term SANOFI. The Complainant also states that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, since it leads to a website selling pharmaceuticals and is therefore using the Domain Name to obtain indirect commercial gain by misleadingly diverting consumers in search for the Complainant’s website to its own website.
According to the Complainant, the Domain Name has been registered and is being used in bad faith, since given the famous and distinctive nature of the Trade Marks, the Respondent is likely to have had constructive, if not actual notice, as to the existence of the Trade Marks when registering the Domain Name, and has registered the Domain Name for the purpose of attracting Internet users to its website by creating a likelihood of confusion – or at least an impression of association – between the Trade Marks and the Domain Name. Moreover, the Complainant contends, the only explanation why the Respondent has chosen to reproduce the Trade Marks in the Domain Name is that the Respondent wanted to obtain a good ranking for the Domain Name and website on search engines and wanted to mislead consumers into thinking that the medicines sold on its website are connected to, sponsored by, or affiliated with the Complainant and its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates SANOFI, of which the Trade Marks consist in its entirety. The addition of the term “pharms”, which is an abbreviation used to refer to pharmaceuticals or pharmacies, does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980). The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. When the Panel searched for the website to which the Domain Name resolves using Google search, this yielded results including (now disabled) links to Lyrica, a pharmaceutical sold by a company called Viatris, Anavar, a steroid which is manufactured by many companies under its generic name oxandrolone and Winstrol, a veterinary pharmaceutical also sold as a steroid. Therefore, the Respondent uses the Domain Name for a website where one can order pharmaceuticals of other companies than the Complainant, which does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the undisputed information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since
- the Respondent’s registration of the Domain Name occurred twenty-three years after the registration of the earliest of the Trade Marks;
- the Trade Marks have a widespread reputation, as has been established by panels in previous WIPO UDRP cases (see e.g. Sanofi v. HUANG GUANGJIN aka HUANGGUANGJIN, WIPO Case No. D2020-0814, Sanofi v. Liu Huaxiang, WIPO Case No. D2020-0746and Sanofi v. Svetlana Guseva, WIPO Case No. D2019-2815) and evidenced by its worldwide presence and its registration of the Trade Marks throughout the world;
- the non-dictionary nature of the term SANOFI incorporated in the Domain Name implies that the Respondent cannot claim to have accidentally registered a domain name that happens to correspond to the Trade Marks;
- a simple trademark register search, or even an Internet search, prior to registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.
With regard to bad faith use the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the use of a privacy shield upon the initial registration of the Domain Name;
- the lack of a formal Response of the Respondent;
- the use of the Domain Name for a website selling pharmaceuticals from other companies than the Complainant, indicating that by using the 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 Trade Marks as to the source, sponsorship, affiliation, or endorsement of its website and the products sold on that website.
Therefore, the Panel concludes that the Domain Name has been 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, <sanofipharms.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: August 16, 2021