WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Amr Ahmed

Case No. D2021-2688

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Amr Ahmed, Egypt.

2. The Domain Name and Registrar

The disputed domain name <sanofigerman.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2021, 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 September 3, 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 September 8, 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. On September 15, 2021, the Respondent sent an email communication to the Center but did not submit any formal response. On October 12, 2021, the Center informed the Parties of commencement of panel appointment process.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 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

The Complainant is a multinational pharmaceutical company headquartered in France. According to the Complainant, it maintains a presence in more than 100 countries and employs 100,000 people. The Sanofi group owns Sanofi-Aventis Deutschland GmbH, demonstrating the group’s presence and influence in Germany. The Complainant had consolidated net sales of EUR 34.46 billion in 2018, EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014. The Complainant operates commercial websites at, among other addresses, “www.sanofi.com”.

The Complainant is the owner of registrations for the word, and word and device/design, trademark SANOFI, on the trademark registries of a substantial number of countries, including (without limitation), registration at the European Union Intellectual Property Office (“EUIPO”), (word mark) registration number 004182325, registration dated February 9, 2006, in international classes (“ICs”) 1, 9, 10, 16, 38, 41, 42, and 44, covering, inter alia, chemical products for use in the manufacture of pharmaceuticals and cosmetic goods; and (word mark) registration number 010167351, registration dated January 7, 2012, in ICs 3 and 5, covering, inter alia, pharmaceutical and veterinary preparations as further specified. The Complainant also is owner of International Registrations under the Madrid System, including (word mark) registration number 1092811, registration dated August 11, 2011, in ICs 1, 9, 10, 16, 38, 41, 42, and 44.

The disputed domain name was registered on July 27, 2021. The disputed domain name leads to a website offering pesticide extermination services that includes the Complainant trademark.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The disputed domain name <sanofigerman.com> reproduces “SANOFI” trademarks which, as themselves, do not have any particular meaning and are therefore highly distinctive. The disputed domain name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) combined with an additional term and (c) followed by a top-level domain suffix “.com”. The addition of the term “german” remains insufficient to avoid confusing similarity, and will falsely suggest to Internet users that the disputed domain name is related to the Complainant’s activities in Germany, as the Complainant’s mark remains the dominant component of the disputed domain name.

Rights or legitimate interest

The Complainant alleges that the Respondent is not known as the disputed domain name.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and it is not related in any way with the Complainant.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy given that the disputed domain name is not used legitimately by the Respondent. The disputed domain name has been registered only for the purpose of unfairly attracting Internet users to the Respondent’s webpage: that is evident from the fact that the disputed domain name leads to a website offering pesticide extermination services and including the Complainant’s trademark. Besides, the website, written in Arabic, states that “[t]he German Sanofi is the best pest control company in Egypt, using only high quality German pesticides with a full five-year guarantee”. Thus, the Respondent is using the disputed domain name to obtain indirect commercial gain by misleading Internet users, suggesting a new business line of the Sanofi group related to chemicals and pesticides. Hence, Internet users could falsely be led to believe that the products sold by the Respondent, given that they contain active and chemical substances, may be produced by the Sanofi group. The Respondent also has chosen to reproduce the SANOFI’s trademarks in the disputed domain name, without any legitimate interests.

Registration and use in bad faith

The Complainant alleges the existence of the Complainant’s marks at the time the Respondent registered the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it.

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 at least an impression of association – between SANOFI trademarks and the disputed domain name. It must be reminded that SANOFI is nowadays one of the world leaders among pharmaceutical companies, ranking first in Europe and ranked fourth in the world in the pharmaceutical industry. Numerous panel decisions have recognized the reputation of Sanofi’s trademarks. Therefore, it can only be found that the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name since it could lead Internet users searching for official information of SANOFI pharmaceutical products to the website to which the disputed domain name resolves.

This knowledge characterizes the Respondent’s bad faith in registering the disputed domain name: it is crystal clear that, given the reputed and distinctive nature of the marks SANOFI, the Respondent is likely to have had, at least, constructive, if not actual, notice as to the Complainant’s marks at the time he registered the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it. Further, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Rather the disputed domain name has been used for the purpose of unfairly attracting Internet users to the Respondent’s website, by creating false impression of association with the Complainant. This is sufficient to characterize a bad faith use under paragraph 4(b)(iv) of the Policy.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, an email was sent to the Center stating the following:

“Hello
can i know more detail ??
what you made this lock for the domain ?
what do you need ??”

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 Panel finds that the Complainant has established trademark rights in SANOFI as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.

The Panel is also prepared to find that the disputed domain name is confusingly similar to the Complainant trademark SANOFI. The name SANOFI is clearly recognizable in the disputed domain name. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the trademark SANOFI, as the additional term “german” is disregarded.

The addition of the word “german” does not prevent a finding of confusing similarity. On the contrary, many Internet users would falsely suppose that the disputed domain name had been registered by the Complainant or an affiliate of the Complainant to promote its business in Germany.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence, in the record, of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks.

The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the disputed domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent.

In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainant’s rights in the SANOFI trademark when it registered the disputed domain name, since the Complainant’s trademark is a widely trademark.

Furthermore as set forth in section 3.1.4 of WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Here, as the Complainant has made clear, the SANOFI trademark is widely known, given its registration for several decades before the Respondent created the disputed domain name; its registration in numerous jurisdictions worldwide; and the large scale of the Complainant’s global operations associated with the SANOFI trademark.

The Panel is of the view that the disputed domain name has been registered only for the purpose of unfairly attracting Internet users to the Respondent’s webpage since the disputed domain name leads to a website offering pesticide extermination services and including the Complainant’s trademark. The Panel therefore concludes that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name and that it has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

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 <sanofigerman.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: December 22, 2021