WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. kiyuni

Case No. D2016-1190

1. The Parties

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

The Respondent is kiyuni of Luhansk Oblast, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <essaysanofi.accountant> and <essaysanofi.bid> are 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 June 13, 2016. On June 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 15, 2016, 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 of the Respondent.

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 June 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2016.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 10, 2016. 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 Sanofi. Sanofi is the registered owner of numerous trademark registrations for SANOFI, in particular, International trademark SANOFI No. 1094854 designating amongst others the Ukraine, where Respondent is located, registered on August 11, 2011 for goods in classes 3 and 5, amongst others pharmaceuticals.

The Respondent registered the disputed domain name <essaysanofi.accountant> on March 20, 2016 and <essaysanofi.bid> on March 21, 2016. It results from the Complainant’s documented allegations that no content is displayed on the websites to which the disputed domain names resolve.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is a French multinational pharmaceutical company headquartered in Paris, France, ranking as the world’s fourth largest multinational pharmaceutical company by prescription. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale. Sanofi is settled in more than 100 countries on all five continents employing 110,000 people. Additionally the Complainant holds domain name registrations containing the term “sanofi” and which were registered long before the disputed domain name. Most of these domain names are registered and used by the Complainant in connection with its activities.

On April 4, 2016, Sanofi sent a cease-and-desist letter by email to the Respondent in which it explained that the use of the disputed domain name <essaysanofi.bid> constituted a breach of the prior rights resulting from the trademarks SANOFI and requested immediate transfer of the disputed domain name. The Respondent did not answer to this letter.

The Complainant contends that the disputed domain names are confusingly similar to the SANOFI trademarks, domain names and corporate name. In particular, the disputed domain names incorporate the trademark SANOFI, which as itself does not have any particular meaning and which is therefore highly distinctive. In addition, the Complainant has used its trademark and trade name SANOFI for many years and promotes it in countries all over the world. As a consequence, the Complainant ascertains that the SANOFI trademark benefits from a worldwide reputation. According to the Complainant, the disputed domain names entirely contain this well-known trademark SANOFI as its dominant element and combine it with the descriptive term “essay” and the descriptive suffixes “.bid” and “.accountant”.

The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain names, since the Respondent’s name does not bear any resemblance with the highly distinctive trademark SANOFI. Furthermore, the Complainant has not licensed otherwise authorized the Respondent to use its trademark SANOFI or to register any domain names including said trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names nor is it using them in connection with a bona fide offering of goods or services. In fact, the disputed domain names simply refer to an inactive page.

Finally, the Complainant contends that the Respondent registered and uses the disputed domain names in bad faith. In particular, it contends that the disputed domain names have been registered in bad faith for the primary purpose of gaining unfair benefit of the Complainant’s reputation. The absence of legitimate interests induces the absence of good faith. Furthermore, the Complainant holds that in view of the distinctiveness of its SANOFI trademark, which is one of the most cybersquatted trademarks in the world, the Respondent is likely to have known of the trademark’s existence when registering the disputed domain names. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain names in order to make an illegitimate use thereof. Furthermore, according to the Complainant, the disputed domain names have been registered for attracting Internet users to the Respondent’s website by creating a likelihood of confusion, or at least an impression of association, between the trademark and the disputed domain names. In this regard, the Complainant repeats that Sanofi is one of the world leading pharmaceutical companies and that the trademark SANOFI enjoys a worldwide reputation. According to the Complainant the Respondent must therefore have been aware of the risk of deception and confusion that would arise from the registration of the disputed domain names. Moreover, the Complainant contends that the fact the disputed domain names are not being actively used could lead Internet users to believe that the Complainant is not present on the Internet or worse, that the Complainant is out of business. Finally, the Respondent’s failure to give any explanations in response to the cease-and-desist letter reinforces the inference of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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”. Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(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.

The Panel is satisfied that the Registrant of record for the disputed domain names is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of numerous trademark registrations for SANOFI, in particular, International trademark SANOFI No. 1094854 designating amongst others the Ukraine, where Respondent is located, registered on August 11, 2011 for goods in classes 3 and 5, amongst others pharmaceuticals. This trademark and the Complainant’s corporate name predates the registration date of the disputed domain names which is March 20, 2016 (for <essaysanofi.accountant>) and March 21, 2016 (for <essaysanofi.bid>).

Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Sanofi, Genzyme Corporation v. Scott Scanlon / Registration Private, Domains By Proxy, LLC,WIPO Case No. D2016-1138; Multi Media, LLC v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1039; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910). This is the case in the present proceeding where the Complainant’s registered trademark SANOFI is fully included in both of the disputed domain names.

In addition, the disputed domain names combine the Complainant’s registered trademark SANOFI as their respective distinctive element with the further term “essay” which is a commonly used term for designating testing or trial and therefore directly applicable as a descriptive term in the pharmaceutical sector in which the Complainant is active. Therefore, the Panel is of the view that the diverging element “essay” is as such insufficient to distinguish the disputed domain names from the trademark SANOFI, which is fully included in the disputed domain names. The addition of the element “essay” is therefore insufficient to exclude the association of the Complainant’s trademark with the disputed domain names.

Finally, in accordance with the well-established precedents (see paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”) a TLD-suffix in the domain name will be as a rule disregarded under the confusing similarity test as it is a technical requirement of registration. This rule is, however, to be complemented in cases where new TLDs such as “.bid” and “.accountant” are involved (cf.Volkswagen AG v. Jan-Iver Levsen, LEVSEN.N.O.V.A. e.K., Case No. D2015-0069 for “.limo” and LEGO Juris A/S v. Jack Hollingsworth, WIPO Case No. D2015-0081 for “.london”). In fact, in the case at hand, Internet users will not only adjudge the new TLDs ”.bid” and “.accountant” its undisputed technical function. In the Panel’s view, the addition of each of these two new gTLDs respectively combined with the trademark SANOFI is rather likely to be understood by Internet users as referring to the SANOFI accountancy (“.accountant”) or the purchase department (“.bid”) in connection with SANOFI tests and trials (“essay”). As a result, the new TLDs “.bid” and “.accountant” are not qualified to exclude confusing similarity between the Complainant’s trademark and the disputed domain names but actually increase the confusing similarity in the case at hand.

The Panel has therefore no doubt that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain names. In the Panel’s view, based on the unrebutted allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names.

No content is displayed on the websites to which the disputed domain names resolve. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see Sanofi, Genzyme Corporation v. Scott Scanlon / Registration Private, Domains By Proxy, LLC, supra; Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,supra).

Finally, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain names or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain names’ registration and use in bad faith.

According to the Complainant’s undisputed allegations, the Respondent does not actively use the disputed domain names. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Sanofi, Genzyme Corporation v. Scott Scanlon / Registration Private, Domains By Proxy, LLC, supra; Sanofi, Genzyme Corporation v. Domain Privacy, supra; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, WIPO Case No. D2016-0068; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel must therefore examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity (see WIPO Overview 2.0 at paragraph 3.2 with further references, and Sanofi, Genzyme Corporation v. Domain Privacy, supra; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra).

In the case at hand, this Panel finds that the circumstances surrounding the registration, i.e., the Respondent’s failure to reply to the Complainants’ cease-and-desist letter, its failure to respond to this Complaint and the undisputed worldwide reputation of the SANOFI trademark supported by the evidence provided by the Complainant, suggest that the Respondent was aware that it has no rights or legitimate interests in the disputed domain names, and that the disputed domain names has been registered and are being used in bad faith (see Sanofi, Genzyme Corporation v. Scott Scanlon / Registration Private, Domains By Proxy, LLC, supra; Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). This finding is supported by the further circumstance that the Complainants’ registered trademarks SANOFI as well as its company name have existed for many years. This Panel therefore concludes that the Respondent knew or should have known the trademark SANOFI when it registered the disputed domain names, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain names.

In the light of the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy.

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, <essaysanofi.accountant> and <essaysanofi.bid> be cancelled.

Tobias Malte Müller
Sole Panelist
Date: August 24, 2016