ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. peter a Case No. D2023-3155 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is peter a, China. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 21, 2023. On July 21, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 (Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 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 August 8, 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"). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 18, 2023. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 29, 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. page 2 4. Factual Background The Complainant is SANOFI, a multinational pharmaceutical company headquartered in Paris (France), ranking as the world's fourth largest multinational pharmaceutical company by prescription sales, with operations in more than 100 countries on 5 continents. The Complainant is the owner of several trademark registrations around the world, among others, the following: Trademark No. Registration Jurisdiction Date of Registration 3831592 France May 16, 2011 96655339 France December 11, 1996 SANOFI 010167351 European Union January 07, 2012 SANOFI 1092811 Australia, Georgia, Japan, South Korea, Cuba, Russia, Israel, among others. August 11, 2011 9504443 Çhina December 28, 2013 The Complainant also owns and operates several domain names incorporating its SANOFI mark, such as (registered in 1995) and (registered in 2006). The disputed domain name was registered by the Respondent on May 31, 2023. It does not resolve to any active website. 5. Parties' Contentions A. Complainant The Complainant argued the following: I. Identical or Confusingly Similar That the disputed domain name is identical or confusingly similar to the SANOFI registered trademarks. That the incorporation of additional terms such as "hk" to the disputed domain name does not prevent a finding of confusing similarity under the first element of the Policy. page 3 II. Rights or Legitimate Interests That the Respondent does not have legitimate interests in the disputed domain name since the name of the Respondent has no resemblance with the word "Sanofi", which has no particular meaning and is therefore highly distinctive. That the Respondent has not been licensed or otherwise permitted by the Complainant to use the SANOFI trademark, and that consequently there is no relationship between the parties. That the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, nor is he using the disputed domain name in connection with a bona fide offering of goods or services, given that the disputed domain name resolves to an inactive web page. III. Registered and Used in Bad Faith That previous panel decisions rendered under the Policy regularly recognize opportunistic bad faith in cases in which the disputed domain name appears to be confusingly similar to a complainant's well-known trademark. That, given the famous and distinctive nature of the SANOFI trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant's mark at the time when he registered the disputed domain name. That the disputed domain name has obviously been registered for the purpose of creating a likelihood of confusion - or at least an impression of association - with the Complainant's trademark. That in cases in which the well-known status of a complainant's trademark is well-established, numerous panel decisions acknowledge that this consideration is indicative of bad faith registration and use. That numerous prior panel decisions have recognized the reputation of the SANOFI trademark as well as the worldwide reputation of the Complainant. That the lack of use of the disputed domain name is likely to cause irreparable prejudice to the general goodwill of the Complainant because Internet users could be led to believe that the Complainant does not have a presence on the Internet, or worse, that the Complainant has gone out of business. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Given the Respondent's failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant's undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292, and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487). A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. page 4 Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds that the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other characters and terms, here a hyphen and the ISO 3166 county code "hk" for Hong Kong may bear on assessment of the second and third elements, the Panel finds the addition of such character and term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. 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 relevant evidence demonstrating 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. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has asserted that there is no evidence of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent has not been licensed or otherwise permitted by the Complainant to use the SANOFI trademark or to register the disputed domain name (see Sanofi v. Peggy Hagen, WIPO Case No. D2023-3204; Sanofi v. opep roxxo, WIPO Case No. D2022-4852 and Autodesk, Inc. v. Brian Byrne, meshIP, LLC WIPO Case No. D2017-0191). The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel agrees with previous panels appointed under the Policy, in that the SANOFI trademark is well known (see Sanofi v. Sanofil Crop Science Hyderabad, WIPO Case No. D2021-3667, and Sanofi v. Cooper Wilson, WIPO Case No. D2021-3348). page 5 In the present case, the Panel notes that the Respondent registered the disputed domain name, which entirely reproduces the Complainant's well-known trademark SANOFI, evidencing that the Respondent has targeted the Complainant, which conduct constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L'Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk, WIPO Case No. D2020-1344; Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747, Landesbank Baden-Württemberg (LBBW) v. David Amr, WIPO Case No. D2021-2322) "Given the distinctiveness of the Complainant's trademark, it is reasonable to infer that the Respondent has registered the Disputed Domain Name with full knowledge of the Complainant's trademarks, constituting opportunistic bad faith. The Panel finds it hard to see any other explanation than that the Respondent knew of the Complainant's well-known trademark.") Previous panels appointed under the Policy have found that the mere registration by an unauthorized party of a domain name that is identical to a well-known trademark, can constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0; see also Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882). Given the circumstances of this case, the Panel finds that this is so in the present proceeding. Panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While 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. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the distinctiveness and fame of the Complainant's trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 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 cancelled. /Kiyoshi Tsuru/ Kiyoshi Tsuru Sole Panelist Date: October 13, 2023
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