WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / santo ben, Pharm Company

Case No. D2020-1865

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / santo ben, Pharm Company, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <ca-sanofi.com> (“Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 17, 2020, 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 the Complainant on July 20, 2020 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 July 21, 2020.

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 July 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on August 26, 2020. 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 one of the largest multinational pharmaceutical companies in the world. It uses and owns numerous registrations covering the SANOFI trademark. These include:

- French trademark Registration No. 3831592, registered on May 16, 2011;
- French trademark Registration No. 96655339, registered on December 11, 1996;
- French trademark Registration No. 1482708, registered on August 11, 1988;
- European Union Trade Mark Registration Nos. 000596023, registered on February 1, 1999 and 004182325, registered on February 9, 2006;
- International trademark Registration No. 591490, registered on September 25, 1992, designating multiple jurisdictions; and
- Canadian trademark Registration No. TMA385822, registered on June 21, 1991.

The Respondent registered the Disputed Domain Name on June 2, 2020. The Disputed Domain Name does not resolve to a working website.

5. Parties’ Contentions

A. Complainant

The Complainant, Sanofi, is a multinational pharmaceutical company headquartered in Paris, France. The Complainant engages in research and development (R&D), manufacturing, and marketing of pharmaceutical products for sale, in the prescription and over-the-counter pharmaceutical markets.

The Complainant has rights in trademark registrations for the SANOFI mark in many jurisdictions around the world, including the European Union and France specifically, as well as the United States of America, and a number of international registrations with effect in a number of jurisdictions around the world. Registrations for the SANOFI mark date back to at least as early as 1988. These include:

- French trademark Registration No. 3831592, registered on May 16, 2011;
- French trademark Registration No. 96655339, registered on December 11, 1996;
- French trademark Registration No. 1482708, registered on August 11, 1988;
- European Union Trade Mark Registration Nos. 000596023, registered on February 1, 1999 and 004182325, registered on February 9, 2006;
- International trademark Registration No. 591490, registered on September 25, 1992, designating multiple jurisdictions; and
- Canadian trademark Registration No. TMA385822, registered on June 21, 1991.

Previous UDRP panels have held that the Complainant’s SANOFI trademark is well known. Panel decisions from only this year include: Sanofi v. Gopal Yadav, WIPO Case No. D2020-0832; Sanofi v. HUANG GUANGJIN aka HUANGGUANGJIN, WIPO Case No. D2020-0814; Sanofi v. Liu Huaxiang,WIPO Case No. D2020-0746; and Sanofi v. wingsknow, WIPO Case No. D2020-0642.

The Respondent has no rights or legitimate interests in the Disputed Domain Name because the Complainant has never licensed use of its mark to the Respondent; there is no relationship between the Complainant and the Respondent; the Respondent incorporated the Complainant’s SANOFI trademark into the Disputed Domain Name without authorization; the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name nor is the Respondent using the Disputed Domain Name in connection with a bona fide offering of goods or services.

The Disputed Domain Name does not resolve to a working website.

The Respondent’s registration of the Disputed Domain Name reflecting the Complainant’s famous trademark must be in bad faith as the Respondent’s adoption of the SANOFI trademark can in no way be the result of a mere coincidence.

The passive holding of a domain name reflecting a famous trademark is indicative of bad faith use and registration.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural Issues: Remedy

The Panel notes that after the commencement of proceedings, the Complainant submitted an amended Complaint on July 30, 2020, requesting that the remedy be changed from cancellation to transfer of the Disputed Domain Name. In the absence of any objection or response from the Respondent, and in accordance with the Panel’s general powers set out in paragraph 10 of the Rules, the Panel grants the Complainant’s request regarding the remedy.

6. 2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).

The Complainant has provided detailed evidence of its rights in the trademark SANOFI on the basis of its multiple trademark registrations for the same in various jurisdictions around the world, including Canada, which have been registered decades before the Respondent registered the Disputed Domain Name on June 2, 2020. Likewise, the Panel notes that the Complainant is also the registrant of several domain names, comprising of its registered trademark SANOFI, the earliest of which goes back to 1995.

The Disputed Domain Name <ca-sanofi.com> incorporates the registered trademark SANOFI of the Complainant with the addition of “ca”, which is the country code for Canada.

The addition of the geographically descriptive country code does not avoid confusing similarity between the Complainant’s trademark and the Disputed Domain Name (see eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307). The Panel notes the Complainant’s trademark is the dominant component of the Disputed Domain Name (See, CNH America LLC v. UnderHost Networks Ltd, WIPO Case No. D2013-1252).

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent possesses no rights or legitimate interests in the Disputed Domain Name. Once the Complainant makes a prima facie showing, the burden of production shifts to the Respondent, though the burden of proof always remains on the Complainant. If the Respondent fails to come forward with evidence showing rights or legitimate interests, the Complainant will have sustained its burden under the second element of the UDRP.

The Complainant alleges that the Respondent was in no way authorized by the Complainant to register or use the Disputed Domain Name.

The Panel considers the distinctive nature of the SANOFI trademark, the size and scope of the Complainant’s worldwide business, and the overwhelming number of Panel decisions holding that the SANOFI trademark is well known, and concludes that it is evident that the Respondent was aware of the Complainant and the SANOFI marks prior to registration of the Disputed Domain Name, and does not have any rights or legitimate interests in the Disputed Domain Name. The Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services, nor, in view the Complainant’s reputation, could it.

Accordingly, the Complainant has provided evidence supporting its prima facie claim that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. The Respondent has failed to rebut any of the Complainant’s assertions. Thus, the Panel concludes that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to the Policy, bad faith is understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see section 3.1 of the WIPO Overview 3.0). The Panel notes that section 3.1.4 of the WIPO Overview 3.0 states that the mere registration of a domain name that is identical to a registered and widely known trademark, by an unaffiliated entity can itself create a presumption of bad faith.

Previous UDRP panels have consistently found that it ought to be presumed that the respondent had constructive notice of the complainant’s trademark if it is shown by the complainant to be well known or in wide use on the Internet or otherwise. Such knowledge of the Respondent is an indicator of bad faith on its part in having registered the disputed domain name. See, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

Here, as discussed above, considering the Complainant’s extensive use, widespread business activities, numerous trademark registrations worldwide, and considering previous UDRP decisions which have held that the trademark SANOFI of the Complainant is widely known in many jurisdictions, the Panel concludes that it is apparent that the Respondent must have been aware of the goodwill and reputation associated with the Complainant’s trademark.

The Panel also notes that the Respondent utilized a proxy service, which has the effect of concealing the Respondent’s true identity. Furthermore, the Respondent did not respond to the Complaint.

Previous UDRP panels have ruled that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028. WIPO Overview 3.0, section 3.3 stipulates that:

“[w]hile 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.”

Accordingly the Panel holds that the Complainant has satisfied the requirements of 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 <ca-sanofi.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: September 16, 2020