ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. Maeva Djouadjong Case No. D2023-4114 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is Maeva Djouadjong, South Africa. 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 October 3, 2023. On October 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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 (Privacy service provided by Withheld for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 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 October 3, 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 October 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2023. The Respondent sent an informal email to the Center on October 10, 2023. page 2 The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on November 9, 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 Complaint in this procedure is SANOFI a French multinational pharmaceutical company headquartered in Paris (France), ranking 4th world's largest multinational pharmaceutical company by prescription sales. The Complainant engages in research and development, manufacturing, and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication. SANOFI is a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA). Historically, the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and SanofiSynthélabo and changed its name to Sanofi in May 2011. The Complainant is a multinational company settled in more than 100 countries on 5 continents employing 100,000 people. The new group benefits from a large portfolio of high-growth drugs. With an R&D investment of 5.9 billion Euros in 2019, SANOFI's Research and Development portfolio includes 84 projects in clinical development, 28 of which are at advanced stages. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in 7 major therapeutic areas, namely cardiovascular, 9 thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. The Complainant's worldwide recognition has been once more enshrined in the annual "L2 Digital IQ Index: Pharma brand & Healthcare Providers" worldwide brand survey issued April 18, 2011 in which the multinational appeared in the "Flash of Genius" in reference to its promoting patient resources and also has a strong presence in Internet with the web page "Sanofi.com". The Complainant presented evidence of their SANOFI trademark intellectual property rights as an example the following: Trademark Country Number of registration Date of Registration Class SANOFI and design France 3831592 May 16, 2011 01; 03; 05; 09; 10; 16; 35; 38; 40; 41; 42; 44 SANOFI France 96655339 December 11, 1996 01; 03; 05; 09; 10; 35; 40; 42 notably SANOFI and design France 92412574 March 26, 1992 05 SANOFI France 1482708 August 11, 1988 01; 03; 04; 05; 10; 16; 25; 28; 31 SANOFI European Union 010167351 January 7, 2012 03; 05 SANOFI European Union 004182325 February 9, 2006 01; 09; 10; 16; 38; 41; 42; 44 SANOFI European Union 000596023 registered on February 1, 1999 03; 05 page 3 SANOFI and design International Trademark designating among others Georgia, Russian Federation, Ukraine 1091805 August 18, 2011 01; 03; 05; 09; 10; 16; 35; 38; 40; 41; 42; 44 SANOFI International trademark designating among others Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation, Iceland, Ukraine 1092811 August 11, 2011 01; 09; 10; 11; 16; 38; 41; 42; 44 SANOFI International trademark and designating among others Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation, Iceland, Ukraine 1094854 August 11, 2011 03; 05 SANOFI International trademark designating among others Switzerland, Cuba, Romania, Russian Federation, Ukraine. 674936 June 11, 1997 03; 05 SANOFI and design International Trademark and designating among others Switzerland, China, Cuba, Romania, Russian Federation 591490 September 25, 1992 05 SANOFI United States of America 85396658, July 24, 2012 05 SANOFI Iceland V0027811, July 22, 1997 03 and 05 page 4 The Complainant is also the owner of the following domain names among others: 1) registered on October 13, 1995 2) registered on March 12, 2006 3) registered on October 10, 2006 4) registered on May 16, 2002 5) registered on May 16, 2003 6) registered on January 05, 2004 7) registered on November 19, 2001 8) registered on August 24, 2001 9) registered on July 12, 2001 10) registered on June 20, 2006 11) registered on March 17, 2011 12) registered on November 21, 2012 The disputed domain name was registered on September 16, 2023. The disputed domain name does not resolve to any active website. 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain name is identical or confusingly similar to its SANOFI trademark due to the fact that the disputed domain name reproduces the complete trademark. Additionally, the Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed domain name and finally, that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent sent an informal communication, notwithstanding did not send any argument or evidence to rebut the complaint. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the Complainant has established that it has registered trademark rights in the SANOFI trademark. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1: "Where the Complainant holds a nationally and internationally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case." In order to establish the confusing similarity test, panels typically do a side-by-side comparison between the trademark and the domain name to establish if the complainant's trademark is recognizable within the domain name. In this case, the disputed domain name reproduces the trademark SANOFI in its entirety. This trademark does not have any particular meaning and is therefore highly distinctive. page 5 The Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes, and sells a wide variety of pharmaceutical products under the trademark and trade name SANOFI. It has used its trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI trademarks in countries all over the world, being able to establish a good reputation for its name. In the present case, the disputed domain name comprises the Complainant's SANOFI trademark in its entirety. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7: "[.] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." Additionally, it is well established that the generic Top-Level Domain ("gTLD"), in this case ".vip", is generally disregarded when considering whether a disputed domain name is confusingly similar to the trademark in which the complainant has rights as is established on section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). For all the foregoing reasons, the Panel finds that the disputed domain name is identical to the SANOFI trademarks in which the Complainant has rights and that the requirements of first element of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy above mentioned, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following: (i) before any notice to you of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) The Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) The Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, a complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent does come forward with evidence of relevant rights or legitimate interests, the Panel weighs all the evidence, with the burden of proof always remaining on the complainant. In the present case, the Complainant contends that the Respondent is not referred to or commonly known by the disputed domain name or any related trademark. It claims it has not licensed or authorized the Respondent to use the trademark in any way including use in a domain name. The Complainant argues that there is no evidence that the Respondent is known by the disputed domain name or owns any corresponding registered trademarks. In the present case, the Respondent is also using a privacy shield service, masking its identity on the publicly available Registrar's WhoIs. Therefore, it appears that the Respondent aims at hiding its true identity. page 6 Also, according to the Complainant, the Respondent has not been using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services, nor making a legitimate noncommercial or fair use of the disputed domain name. During the procedure, the Respondent sent an email to the Center but has not formally responded and presented evidence in the present case, and based on the record, the Panel is unable to conceive any basis upon which the Respondent could have any rights or legitimate interests in respect of the disputed domain name. This Panel finds that the Respondent is not known under the disputed domain name and does not make any bona fide use, neither commercial nor noncommercial, of the same, being emphasized that the disputed domain name is not in use and has not displayed an active website. In the present case, the Complainant made a prima facie case that the Respondent lacks rights or legitimate interests to which the Respondent failed to formally respond. For the foregoing reasons the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the requirements of the second element of the Policy therefore are fulfilled. C. Registered and Used in Bad Faith The Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 disputed domain name; or (ii) the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. The Panel finds, in accordance with the Policy, that the disputed domain name was registered in bad faith, due to the fact that when the disputed domain name was registered by the Respondent (in 2023), taking into account that the trademark SANOFI was already well-known worldwide and directly connected to the Complainant's pharmaceutical and healthcare products and services. According to the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. This is even more evident when the trademark in question has no dictionary meaning. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent, at the time of the registration of the disputed domain name - could not have been aware of the Complainant's SANOFI trademark, additionally the gTLD ".vip" could not be a mere coincidence. 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 WIPO Overview 3.0, and given the distinctiveness of the Complainant's trademark, one might came to the conclusion 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. page 7 Previous panels 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, as it was stated on section 3.1.4 the WIPO Overview 3.0. In the present case the disputed domain name does not resolve to an active website. Having reviewed the record of this case, 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 panelis will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine, this Panel take into account the following factors: (i) the degree of distinctiveness or reputation of the Complainant's mark, in this case the SANOFI trademark is a very well known in the pharmaceutical industry of products and services (ii) the failure of the Respondent to submit a formal response or to provide any evidence of actual or contemplated good-faith use, (iii) the implausibility of any good faith use to which the domain name may be put, as stated on the WIPO Overview 3.0 section 3.3. 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 transferred to the Complainant. /Ada L. Redondo Aguilera/ Ada L. Redondo Aguilera Sole Panelist Date: November 22, 2023
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