WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Alex Turkewycz
Case No. D2021-3672
1. The Parties
Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Alex Turkewycz, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <ipghealth-sanofi-cxfollowup.com> is registered with Wix.com Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 14, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on January 7, 2022. 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
Complainant is a French multinational pharmaceutical company headquartered in Paris, France, ranking, per Complaint, as the 4th world’s largest multinational pharmaceutical company by prescription sales.
Complainant is settled in more than 100 countries on five continents employing 100,000 people and presenting consolidated net sales of 34.46 billion euros in 2018, 35.05 billion euros in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014.
Complainant is the owner of SANOFI trademark registrations worldwide including, inter alia:
- the French trademark registration no. 96655339, SANOFI (figurative), filed and registered on December 11, 1996 for goods and services in international classes 01, 03, 05, 09, 10, 35, 40 and 42; and
- the French trademark registration no. 3831592, SANOFI (figurative), filed and registered on May 16, 2011, for goods and services in international classes 01, 03, 05, 09, 10, 16, 35, 38, 40, 41, 42 and 44.
Complainant is also the owner of domain name registrations for SANOFI, including <sanofi.com>, registered on October 13, 1995, <sanofi.eu>, registered on March 12, 2006, <sanofi.fr> registered on October 10, 2006 and <sanofi.net> registered on May 16, 2003.
The Domain Name was registered on October 8, 2021 and leads to a web page with the indication “guest area” and the invitation to enter a password.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the SANOFI mark.
The Domain Name incorporates Complainant’s trademark SANOFI in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382).
The words “IPG Health”, which include the IPG acronym, the letters “cx”, which are the abbreviation for “customer experience”, the words “follow up”, which refer to further information about something and the hyphens before and after the word SANOFI which are added in the Domain Name do not prevent, in the Panel’s view, a finding of confusing similarity between Complainant’s mark and the Domain Name, as the SANOFI trademark of Complainant remains clearly recognizable (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the SANOFI mark of Complainant.
Complainant has established the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolves to a web page with the indication “guest area” and the invitation to enter a password.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Furthermore, “sanofi” is an invented word without meaning (Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078).
Because the SANOFI mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This finding is reinforced when considering the addition of the term “health” in the Domain Name which clearly indicates knowledge of Complainant’s field of business.
Taking into account the nature of the Domain Name, the Panel finds that the Domain Name was probably created for commercial gain by intentionally creating a likelihood of confusion with Complainant’s trademarks and business as to the source, sponsorship, affiliation or endorsement, within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).
The Domain Name currently leads to a web page with the sole indication “guest area” and the invitation to enter a password. The non-use of a domain name does not prevent a finding of bad faith in certain circumstances, which the Panel finds here (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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, <ipghealth-sanofi-cxfollowup.com> be cancelled.
Date: January 21, 2022