WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Marek Zdanowicz
Case No. D2017-0095
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Marek Zdanowicz of Weltevredenpark, South Africa.
2. The Domain Name and Registrar
The disputed domain name <snaofi.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 18, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2017, 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 January 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2017.
The Center appointed J. Nelson Landry as the sole panelist in this matter on February 16, 2017. 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
Sanofi is a French multinational pharmaceutical company ranking fourth world's largest pharmaceutical company by research, development and prescription of pharmaceutical products. The Complainant is settled in more than hundred countries on all five continents employing 110,000 people. In 2015, it invested over EUR 5 billion in Research and development ("R & D") and its net sales were of EUR 39 billion in that year. It is a leading pharmaceutical company in seven major therapeutic areas namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
The Complainant is the owner of numerous SANOFI trademarks under four groups, SANOFI (+device), SANOFI, Sanofi and Sanofi (+device). First, each are registered in France, the earliest one being French Trademark No. 1482708 SANOFI (registered on August 11, 1998 in international classes 1, 3, 4, 5, 10, 16, 25, 28 and 31); second, three are registered in European Union, SANOFI first since 1997; third, each of the four are registered as an International trademark, the first one on September 25, 1992; then SANOFI was registered in the United States of America on July 24, 2012 and last SANOFI registered on December 11, 1998 in South Africa, the country of residence of the Respondent (herein the "SANOFI Trademarks").
Furthermore, the Complainant has registered and is the owner of 11 different domain names, all comprised of the term "sanofi" and a generic Top-Level Domain ("gTLD"), <sanofi.com> being the first registered on October 13, 1995, and <sanofi.tel> the most recent in March 2011.
The disputed domain name was registered on January 16, 2017. The disputed domain name resolves to a website with the following notice "Reserved for snaofi.com".
5. Parties' Contentions
In an elaborate and detailed Complaint, in addition to factual information comprising numerous references and citations of UDRP decisions, the Complainant has indicated its experience in respect of at least 30 domain name disputes incorporating or confusingly similar to its SANOFI Trademarks.
The Complainant states that it has several SANOFI Trademarks registered in various jurisdictions including South Africa, where the Respondent is located. It furthermore represents that the disputed domain name wherein the term SANOFI is present except in respect of the inversing of the second and third letters, to become <snaofi.com>. It submits that the disputed domain name is confusingly similar to its SANOFI Trademark and, in relying on Sanofi v. Ojet Ohbrain, WIPO Case No. D2016-1053, this kind of inversing two letters in the Complainant's Trademarks has been considered before and submits that in the present case the disputed domain name involves an obvious misspelling of the Complainant's well known SANOFI Trademark.
The Complainant represents that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name and further states that this is not the first attempt of the Respondent in such behavior since in Sanofi v. Marek Zdanowicz, WIPO Case No. D2016-2545, the same Respondent had registered the domain name <saonfi.com>, thereby showing that the Respondent has engaged in a pattern of cybersquatting supporting a claim of absence of legitimate interests in the disputed domain name as held in said decision. The Complainant further contends the absence of any rights or legitimate interests in the disputed domain name by the Respondent in that his name Mark Zdanowicz does not bear any resemblance with the term "sanofi" in the SANOFI Trademarks of the Complainant, said term being inventive and not having a particular meaning is therefore highly distinctive of the Complainant's company and pharmaceutical activities.
The Complainant states that it has never licensed or otherwise authorized the Respondent to use any of its SANOFI Trademarks or domain names to register the disputed domain name or any domain names including any of its SANOFI Trademarks. The Complainant further represents that there is no relationship between the Complainant and the Respondent and that the later has clearly modified the Complainant's SANOFI Trademark without the authorization of the Complainant.
The Complainant submits that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name nor is he using the disputed domain name in connection with a bona fide offering of goods or services and cannot claim a right or legitimate interests therein since the website at the address of the disputed domain name is not used legitimately by the Respondent since said website simply refers to an inactive page.
The Complainant submits that the disputed domain name was registered and is being used in bad faith in particular on the basis of previous UDRP decisions which recognized opportunistic bad faith where the disputed domain name appears confusingly similar to the Complainant's well known Trademark. See Sanofi v. Marek Zdanowicz, supra.
The Complainant further quote from a decision of MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412, wherein the panel stated: "There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use". The Complainant, as the panel quoted, represents that its Trademark is a well-known mark and that the respondent had both constructive and actual knowledge of Complainant's Trademarks and nevertheless chose to exploit it and the goodwill associated with it.
The Complainant further contends that there is absence of any prior rights or legitimate interests to justify the use its well-known and worldwide SANOFI Trademarks and domain names, said absence of legitimate interests induces the absence of good faith upon registration of the disputed domain name by the Respondent. Furthermore, the Respondent acted with opportunistic bad faith in having registered the disputed domain name in order to make an illegitimate use of it and finally, that the disputed domain name was 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 the Complainant's SANOFI Trademarks and domain names, on the one hand, and the disputed domain name on the other hand.
Then the Complainant claims that the Respondent has already engaged in selecting another disputed domain name in a specific attempt of free riding on the coat tails of the Complainant upon registering the domain name <saonfi.com>, Sanofi v. Marek Zdanowicz, supra, said circumstances showing that the Respondent has engaged in a pattern of cybersquatting which advocates in favor of a finding of registration of the disputed domain name in bad faith.
Finally, the Complainant submits that the disputed domain name is being used in bad faith since by reason of its well-known SANOFI Trademarks, the Respondent had constructive notice if not actual awareness of the said SANOFI Trademarks when he registered the disputed domain name, thereby acting with opportunistic bad faith, said bad faith, according to the Complainant, is further based on the fact that the associated website is inactive as held in the Telstra Corporation Limited v. Nuclear Marshallows, WIPO Case No. D2000-0003, since according to the panel in said case it was not necessary to find that the respondent had undertaken any positive action in relation to the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has clearly shown that it is the owner of the registered SANOFI Trademarks which are widely known by reason of their extensive use in a considerable number of jurisdictions and generating financial success.
The disputed domain name is nearly identical to the SANOFI Trademarks, with a minor difference in the inversion of the two letters "a" and "n". As mentioned by the Complainant citing the Panel in Microsoft Corporation v. X-obx Designs, WIPO Case No. D2003-0093, "typographical error variations and misspellings of trademarked terms have long been found to be confusingly similar". The Panel observes that the small change caused by this inversion does not bring any significant difference in pronunciation and understanding and does not avoid a finding of confusing similarity to the SANOFI Trademarks.
The present situation is very similar to the same type of inversion made recently by the same Respondent in respect of the same SANOFI Trademarks in the in respect of the <saonfi.com> domain name case Sanofi v. Marek Zdanowicz, supra, where the panel concluded that "the disputed domain name was a deliberate misspelling of the SANOFI Trademarks and that visually the disputed domain name is so close to the Complainant's well-known SANOFI Trademarks that confusion is inevitable between them" which observations and conclusion the Panel finds equally applicable to the present case and the Panel on this basis adopts them.
The Panel therefore concludes that the disputed domain name is confusingly similar to the well-known and distinctive SANOFI Trademarks of the Complainant.
The first criterion has been met.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
The Complainant has presented its prima facie evidence that the Respondent is not known under the term "sanofi" and the Complainant has no other business relationship with the Respondent and finally, has not authorized or licensed the Respondent neither to use any of its SANOFI Trademarks or domain names nor to register the disputed domain name. The Panel further notes that the Respondent has not been commonly known by the disputed domain name nor by a similar one considering the conclusions and transfer of the similar domain name case registered by the same Respondent. Finally it is well established that registration in bad faith of the disputed domain name means any use of the disputed domain name would be neither "legitimate" nor "fair". The Panel determines that the Complainant has discharged its burden of prima facie evidence, and the Respondent has failed to rebut it.
In addition, there is no evidence that the Respondent is commonly known by the disputed domain name.
In view of the above the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The second criterion has been met.
C. Registered and Used in Bad Faith
Considering the earlier registration by the Respondent of another domain name which was successfully disputed in Sanofi v. Marek Zdanowicz, supra, the said domain name was registered on December 12, 2016, the complaint in that case was notified to the Respondent on December 20, 2016 with a due date to produce a response by January 10, 2017. The Panel upon considering that the present disputed domain name was registered later within a week on January 16, 2017, is convinced that the Respondent was well aware of the existence and registration of the SANOFI Trademarks in the disputed domain name when he engaged in a similar reproduction of the SANOFI Trademark with again 2 letters inverted. The Respondent was using the same scheme with 2 different letters inverted to achieve the same results of SANOFI Trademarks confusion. The Panel finds that the registration of the disputed domain name was made in bad faith, confirmed by the absence of any response by the Respondent and any attempt at justifying good faith in his course of conduct and thus engaged in a pattern of cybersquatting which also advocates a finding of registration in bad faith.
The evidence is clear, the Panel has attempted to reach the website at the address of the disputed domain name and verified that there was no use, simply the presence of a page with the following notice "Reserved for snaofi.com" nothing else as alleged by the Complainant in its Complaint. The Panel acknowledges and adopts the finding in the Telstra Corporation Limited v. Nuclear Marshmallows, supra, and also in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that the presence of inactive associated website does avoid a bad faith finding. The Respondent is not required to take positive action in relation to the disputed domain name and on this basis the Panel determines that the disputed domain name is being used in bad faith.
The Panel finds that the disputed domain name was registered and is used in bad faith.
The third criterion has been met.
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 <snaofi.com> be transferred to the Complainant.
J. Nelson Landry
Date: March 16, 2017