SANOFI v. nashan
Claim Number: FA1705001730300
Complainant: SANOFI of Paris, France.
Complainant Representative: Philippe MARTINI-BERTHON
Complainant Representative: Marchais Associes of Paris, France.
Respondent: nashan of Shen Yang Shi, International, CN.
REGISTRIES and REGISTRARS
Registries: GMO Registry, Inc.
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Omar Haydar, as Examiner.
Complainant submitted: May 5, 2017
Commencement: May 8, 2017
Default Date: May 24, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The complaint and findings relate to one domain <sanofi.shop>. There is one Complainant and one (or more) Respondent, and no domain names were dismissed from this complaint.
The Respondent has registered the domain name <sanofi.shop>.
Complainant, Sanofi, is the owner of trademarks including Sanofi, which it has registered in various jurisdictions including its own of France and under the Madrid Protocol since at least 2011.
Complainant has claimed that the domain name in question is identical to their protected word or mark.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark for which the Complainant holds a valid national or regional registration and that is in current use.
2. Respondent has no legitimate right or interest to the domain name.
3. The domain name(s) was/were registered and are being used in bad faith.
The Examiner finds that Complainant has proven that the domain name is identical through evidence of the trademark registration. The Complainant’s trademark is a well established mark, in use for almost twenty years with international use and recognition as a leading pharmaceutical company.
The Examiner further finds that Complainant has proven that Respondent has no legitimate right or interest to the domain name. The Complainant has neither licensed the trademark to the Respondent for use, nor has the Respondent made any claim to a legitimate right or interest to the name, whether by responding to this Complaint or vis-a-vis the content of their website. But the Complainant could have a legitimate right based on the content of the website when and if it should go live.
The Examiner finds that the evidence does not prove the domain names were registered and are being used in bad faith. Although the Examiner finds that the domain could give an automatic inference of affiliation to the entity holding the trademark, and could cause confusion amongst internet users into an assumption of an affiliation or relationship (See Treeforms.com FA0010000095856), this is not a sufficient basis on a standalone basis to establish bad faith, especially considering the nature of the domain, being a shop, which could have a lawful, non-fringing use. The Complainant has alleged various justifications for bad faith, including:
- A notice Respondent would have received regarding the trademarked name when registering the domain.
- The fact that the domain resolves to an inactive website, which is claimed to disrupt Complainant’s business.
- The domain was registered for the illegitimate purpose of attracting visitors by creating a likelihood of confusion with the trademarked entity.
Unfortunately, the Complainant fails to document any communication with or evidence from the Respondent to clarify these matters and whether the Respondent has any legitimate right to the domain, and the timing of the claim renders the impossibility of any such action. There also remains within the realm of possibility that the Respondent has some legitimate right to the domain.
If the Complainant were to substantiate some of their aforementioned claims, or if the Respondent was shown to register trademarked domains with no legitimate rights as a pattern of behavior, or alternatively, if the domain, which was just registered within the past month, were to be activated and have content which would support the claims of Complainant, bad faith could be established. But the claim on its merits does not establish bad faith to a clear and convincing standard.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<sanofi.shop>
Omar Haydar, Examiner
Dated: May 30, 2017
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