ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. Name Redacted Case No. D2023-2322 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is Name Redacted1. 2. The Domain Name and Registrar The 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 May 30, 2023. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2023, 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 (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2023 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 May 31, 2023. 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"). 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent's name from this decision. However, the Panel has attached as Annex 1 to this decision, an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on June 23, 2023. The Center appointed Zoltán Takács as the sole panelist in this matter on June 27, 2023. 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, headquartered in Paris, France is one of the biggest pharmaceutical companies in the world. It is present in more than 100 countries, employing 100,000 people. The Complainant has an extensive portfolio of trademarks consisting of or comprising the SANOFI trademark, including the European Union Trademark Registration No. 004182325, registered on February 9, 2006, and the International Trademark Registration 6749936, registered on June 11, 1997. The Complainant also owns numerous domain names comprising the SANOFI trademark, including the domain name , which was registered on October 13, 1995, and resolves to its corporate website. The disputed domain name was registered on May 4, 2023. According to the evidence in the case file, it resolves to an inactive site. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name, which incorporates the entirety of its SANOFI trademark is confusingly similar to it because addition of a hyphen and the abbreviation "chc" does not sufficiently distinguish the disputed domain name from the trademark. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The Complainant contends that the Respondent has registered and is using the disputed domain in bad faith. Due to the well-known status of its trademark it is inconceivable that the Respondent did not have actual knowledge of its trademark at the time of registration of the disputed domain name, which it chose to register to unlawfully benefit from the recognition attached to the trademark. The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. However, following the Notification of the Complaint, the individual indicated to be the registrant of the disputed domain name, according to the Registrar verification, sent an email to the Center on June 12, 2023, using a different email address than the one provided by the Registrar, expressly stating: "I am not the owner of this domain. I do neither know this domain name nor any of these contacts". page 3 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel's decision be made "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 complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if the complainant owns a nationally or regionally registered trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced evidence of having registered rights in the SANOFI trademark by virtue of the trademark registrations listed above, which satisfy the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant's trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the Complainant's trademark. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. The disputed domain name fully incorporates the Complainant's SANOFI trademark, which is evidently recognizable in the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Respondent's addition of a hyphen and the term "chc" to the Complainant's trademark in the disputed domain name does not prevent a finding of confusing similarity. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain ("TLD") in a domain name (in this case ".com") is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant's trademark and that the first ground of the Policy is established page 4 B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) before any notice of the dispute, its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating its rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established prior rights in the SANOFI trademark. The Complainant has never authorized the Respondent to use its trademark, in a domain name, or otherwise. There is no evidence that the Respondent is commonly known by or that it is making a legitimate noncommercial of fair use of the disputed domain name. The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter to the Complainant's prima facie case and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith It has been well-established in prior decisions under the UDRP, with which the Panel agrees, that the Complainant's SANOFI trademark is well-known globally (see e.g. Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta, WIPO Case No. D2016-0096). According to section 3.1.4 of the WIPO Overview 3.0, UDRP "panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith". The Respondent's replication of the Complainant's well-known trademark in the disputed domain name convinces the Panel that the Respondent clearly had the trademark in mind at the time of registration and that it registered the disputed domain name in order to target the Complainant and its trademark. The Panel's finding on bad faith is reinforced given the actual registrant's apparent abuse of a third party's identity (in this case of the Respondent confirmed by the Registrar and named in the Complaint by the page 5 Complainant) for the purposes of the registration of the disputed domain name (see section 3.4 of the WIPO Overview 3.0). As mentioned above, there is no evidence that the disputed domain name has resolved to an active site. According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. In this case, the Panel takes into account (i) the degree of distinctiveness and reputation of the Complainant's SANOFI trademark, (ii) the Respondent apparently provided third party information when registering the disputed domain name; (iii) the Respondent concealing its identity, and (iv) the implausibility of any good faith use to which the inherently misleading disputed domain name may be put. Therefore, the Panel finds that passive holding of the disputed domain name does not, in the circumstances of this case, prevent a finding of bad faith. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning 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 be transferred to the Complainant. /Zoltán Takács/ Zoltán Takács Sole Panelist Date: July 6, 2023
Full & Egal Universal Law Academy