SANOFI v. REDACTED FOR PRIVACY
Claim Number: FA1912001876098
Complainant: SANOFI of Paris, France.
Complainant Representative:
Complainant Representative: Marchais Associes of Paris, France.
Respondent: Data Protected Limited of HONGKONG, HONGKONG, International, HK.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Minds + Machines Group Limited
Registrars: ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: December 20, 2019
Commencement: December 20, 2019
Default Date: January 6, 2020
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.
Findings of Fact:
The Complainant is the owner of the following International Trademark Registration:
No. IR1091805 SANOFI & Device, registered August 18, 2011 for goods and services in classes 1, 3, 5, 9, 10, 16, 35, 38, 40, 41, 42 and 44, based on a national French trademark registration, and designating 14 countries/regions around the world.
The Complainant has provided evidence of use of the trademark, as registered by the Trademark Clearinghouse.
There is no information on the Respondent, other than provided by the Complainant, as the Respondent has not responded.
Legal Findings and Conclusion:
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.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid International Trademark Registration No. IR1091805 SANOFI & Device. Further, the Complainant has proved that the said trademark is in current use by presenting confirmation from the Trademark Clearinghouse.
The relevant part of the disputed domain name is <sanofi>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a trademark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
The Examiner concludes that the disputed domain name is identical to the Complainant's trademark SANOFI.
NO RIGHTS OR LEGITIMATE INTERESTS
As SANOFI is a distinctive and well known trademark, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <sanofi.luxe>.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <sanofi.luxe>.
BAD FAITH REGISTRATION AND USE
According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
In this case, the Complainant’s trademark is distinctive and well-known, and registered long before the Respondent registered the disputed domain name. As <sanofi.luxe> is identical to the Complainant’s trademark, it is obvious that the Respondent registered <sanofi.luxe> with the Complainant’s trademark in mind. The use of the top level domain .luxe indicates further that it is referring to more luxury goods provided by the Complainant.
As to the use, the Complainant has shown that the Respondent, although not traditionally actively using the disputed domain name, it is linked to a page with the message “Um, we can't find this site” (in French) thereby creating confusion for customers seeking information on the Complainant’s goods, indicating that there is something wrong with Complainant’s business.
Although the Respondent has not responded, the use as such strongly indicates that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name.
Thus, the Examiner concludes that the Complainant has established that the Respondent has registered and used <sanofi.luxe> in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<sanofi.luxe>
Petter Rindforth, Examiner
Dated: January 09, 2020
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