WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Marius Graur

Case No. D2018-2774

1. The Parties

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

The Respondent is Marius Graur of Brasov, Romania.

2. The Domain Name and Registrar

The disputed domain name <sanofi.global> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2018. On December 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 2018, 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 December 7, 2018 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 December 10, 2018.

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 December 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2018. The Respondent sent email communications on December 26, 2018 and January 17, 2019. The Center notified the Commencement of Panel Appointment Process to the Parties on January 2, 2019.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 11, 2019. 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 pharmaceutical group based in Paris, the fourth largest pharmaceutical company in the world based on prescription sales. The Complainant group employs over 100,000 people in more than 100 countries and made net sales of more than EUR 35 billion in 2017.

The Complainant operates a website at “www.sanofi.com” and has held that domain name since 1995. The Complainant also holds many other domain names using its SANOFI mark in other generic or country-code top level domains, such as <sanofi.net>, <sanofi.biz>, <sanofi.fr>, <sanofi.us>, and <sanofi.ro>.

The Complainant owns numerous trademark registrations, including the following:

The “.global” generic top-level domain name (“gTLD”) is a new gTLD that reached General Availability, according to ICANN, in September 2014. Domain name disputes in this gTLD are subject to the UDRP. The Registrar reports that the Domain Name was created on November 27, 2018 and is registered in the name of the Respondent, who appears to be an individual residing in Brasov, Romania. It does not appear that the Domain Name has ever been used for an active website.

After several communications from the Center in connection with this proceeding, the Respondent sent an email to the Center and to counsel for the Complainant on December 26, 2018. The email reads in part as follows:

“I hereby confirm that I have received this email and few other emails from you, about the lovely domain and website ‘www.sanofi.global’ :) Please worry not, lovely ones! :) That domain www.Sanofi.global is in very good hands! I never intended to use that domain without Sanofi's consent, you know? :) I'm a fair and friendly and honest guy, never doing anything illegal. :) ;)

I am a very honorable and internationally respected person and I.T. professional, and I have worked with major global telecom companies and international banks and with many other companies, big or small. So YES, trust me that you're safe, Sanofi. …

The web domain www.Sanofi.global is in very good hands, in my hands, and THERE IS NO WEBSITE ACTIVATED at this address! And there will not be, not without Sanofi's approval. So I DO NOT INTEND TO ACTIVATE ANY WEBSITE, AT THIS URL, WITHOUT THE CONSENT AND AGREEMENT OF THE SANOFI OFFICIALS …

I will send to Sanofi all the informations in the next days. …
I will come back to you very soon, in these next few days, with more details on this matter, and we'll clarify everything.”

Additionally, the Respondent sent another email to the Center and to counsel for the Complainant on January 17, 2019. The email reads in part as follows:

“All the previous written communications addressed to me from the Complainant / by the Complainant's representative, were very wrongly accusing, very violent, very threatening, and very wrong in their violent and illegal accusations. I have bought a web domain, with good intentions, very legal, and I will use it however I want.

I will sue the Complainant's representatives for being so violent and so aggresive and so aggressively and illegally threatening, against me.

Or I will not sue them - but I will address this to them, (and maybe even to the Police, for my safety), and I am sure we will reach a mutual friendly agreement, regarding the very exagerrated violence and aggressivity of the Complainant's representatives.

… you'll have all my answers until January 26, 2019. Actually even faster, in a day or two from today.”

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to its SANOFI trademark, and that the Respondent has no permission to use the trademark and no rights or legitimate interests in the Domain Name incorporating the trademark.

The Complainant contends that the Respondent must have been aware of the Complainant’s well-known trademark and selected the Domain Name in an act of “opportunistic bad faith”. The Complainant cites the “passive holding” doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”) and similar cases finding bad faith even without an active website associated with a domain name targeting a distinctive and well-known trademark.

B. Respondent

The Respondent’s two communications with the Center (the most recent sent long after the filing deadline for a Response) merely defer discussion of the issues. They cannot be construed as a Response or a Supplemental Filing, as they do not substantively address the issues or include the required certification of completeness, accuracy, and proper purpose (see Rules, paragraph 5(viii). They do not present evidence or arguments on any element of the Complaint or offer reasons for delaying the proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant indisputably holds registered SANOFI trademarks. The Domain Name incorporates this mark in its entirety. As in most cases, the generic Top-Level Domain (“gTLD”) “.global” is not a distinguishing feature. Id. That gTLD is open to registrants of any kind, and may refer to any community of interest, commercial or noncommercial. See the registry operator’s description of the gTLD at “www.go.global”.

Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s SANOFI trademark for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use, a corresponding business or brand name, or other evident legitimate interests. This shifts the burden to the Respondent. “Sanofi” is an invented mark, not a dictionary word. The Respondent has not made generic use of the Domain Name or come forward to assert any claims to fair use or other legitimate interests.

The Panel accordingly concludes that the Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, but these expressly do not exclude other possible instances of bad faith.

The Respondent has offered no explanation for the appropriation of the Complainant’s well-known and distinctive mark without permission. Indeed, the Respondent in informal communications to the Center not only advances no legitimate reason for registering and holding a Domain Name identical to the Complainant’s trademark but also insists that the Respondent “never intended” to use the Domain Name without the Complainant’s consent. Thus, the Respondent acknowledges prior knowledge of the mark and appears to recognize that the Respondent could not legitimately use the Domain Name without permission. It was irresponsible (at the least) to register and hold the Domain Name knowing that this was in conflict with The Complainant’s rights.

It is not necessary to wait for the Respondent to publish a website associated with the Domain Name to establish the element of bad faith for Policy purposes, where there is no plausible good faith use of the Domain Name patently based on a well-established trademark. See Telstra and WIPO Overview 3.0, section 3.3.

The Panel concludes on this record that the Complainant has established the third element of the Complaint.

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 Domain Name, <sanofi.global> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: January 25, 2019