WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Moniker Privacy Services / Unifund Corporation, Unifund Corporation
Case No. D2018-2327
1. The Parties
Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States of America / Unifund Corporation, Unifund Corporation of Beverly Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sanofitv.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2018, 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 Complainant on October 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 18, 2018.
The Center verified that the Complaint together with the amended 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 October 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 12, 2018.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on November 20, 2018. 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, Sanofi, is a company incorporated in Paris, France. It is a leading French multinational pharmaceutical company, ranked amongst the top five pharmaceutical companies in the world by prescription sales. It has consolidated net sales of EUR 35.05 billion in 2017 and EUR 33.82 billion in 2016. It has presence in over 100 countries on five continents employing about 110,000 people around the world.
Complainant has exclusive rights in SANOFI, and SANOFI-related marks. Complainant has registrations and owns several trademarks incorporating the trademark SANOFI and is the sole owner of the trademark SANOFI in multiple jurisdictions around the world, including the United States of America. Complainant also owns the trademark SANOFI in the European Union, Asia and in essence all around the world, for example French trademark no. 1482708, registered on August 11, 1988. Complainant also owns and operates several domain names which contain the SANOFI mark in entirety, such as <sanofi.com> (registered on October 13, 1995), <sanofi.eu> (registered on March 12, 2006), <sanofi.fr> (registered on October 10, 2006), and <sanofi.cn> (registered on April 28, 2004).
Respondent registered the disputed domain name on August 30, 2018 and it does not resolve to an active website.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to the SANOFI marks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name <sanofitv.com> be transferred to it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the SANOFI marks acquired through registration. The SANOFI mark has been registered internationally (covering the United States of America) well before the date in which the disputed domain name was registered.
The disputed domain name <sanofitv.com> differs from Complainant’s trademark SANOFI by only the letters “tv” added after the trademark SANOFI. This Panel believes that the mere addition of the common acronym “TV” used in relationship with television does not avoid a finding of confusing similarity between Complainant’s registered trademarks and the disputed domain name.
It is undisputed that the disputed domain name is confusingly similar to the SANOFI trademark as it encompasses the entirety of the trademark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks for the purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (explaining that, “in cases where a domain name incorporates the entirety of a trademark … the domain name will normally be considered confusingly similar to that mark”).
Accordingly, the Panel concludes that Complainant has established the first element 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 Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
This Panel has to consider as true the facts asserted by Complainant, as Respondent offered no evidence to contradict any of them, amongst the most relevant facts are that Complainant is a leading French multinational pharmaceutical company, ranking 4th amongst the world’s largest multinational pharmaceutical companies by prescription sales. It has sales exceeding EUR 35 billion and employs about 110,000 people around the world. This Panel also considers as a proved fact that Complainant has presence in over 100 countries on five continents, including the United States of America. This Panel also finds that Complainant has rights in the SANOFI international trademarks, covering the United States of America since at least 2012, (which long precede Respondent’s registration of the disputed domain name (in 2018)).
Moreover, Respondent is not an authorized dealer of Sanofi-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce relevant evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has produced no evidence to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “sanofitv” in its business operation. Respondent has not provided any evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SANOFI marks or to apply for or use any domain name incorporating the SANOFI marks. There is nothing to suggest that Respondent is commonly known by the disputed domain name. Respondent has not proved that Respondent has any registered trademark rights with respect to the disputed domain name. Furthermore, there is no evidence which shows that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Complainant’s trademark SANOFI is well known and has acquired worldwide recognition and reputation with regards to its products and services. Complainant has registered the trademark SANOFI and other trademarks incorporating SANOFI all over the world, including in the United States of America. Due to the fact that the trademark is highly distinctive as it has no meaning in any language known to this Panel, it is extremely unlikely that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2018). The Panel therefore finds that the SANOFI mark is not a word that someone will spontaneously and legitimately adopt, but rather a name that someone would adopt with the purpose of creating an impression of an association with Complainant. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.
Respondent chose not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
At the time of the Complaint the disputed domain name appears to have been inactive. At the time this decision is rendered, the disputed domain name appears to continue to be inactive. Despite several attempts by this Panel to access the site, the disputed domain name does not appear to resolve to an active website. UDRP panels before have stated in terms of inactive domain names, consistent jurisprudence summarized in section 3.3 of the WIPO Overview 3.0 which provides: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” As discussed above, Complainant’s SANOFI marks, arguably, are well known.
Given the lack of response, the Panel cannot find any other explanation than bad faith in the use of the disputed domain name. Taking into account all the circumstances of this case, the Panel concludes that the passive holding of the disputed domain name by Respondent is in bad faith.
It can be inferred that by Respondent choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademark, intended to take advantage of the association with Complainant’s trademark. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <sanofitv.com> be transferred to Complainant.
Date: December 3, 2018