ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. wang lao Case No. D2024-1850 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is wang lao, Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2024. On May 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2024, 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, Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 13, 2024, 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 14, 2024. 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 May 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2024.
page 2 The Center appointed Moonchul Chang as the sole panelist in this matter on June 19, 2024. 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 is Sanofi, a multinational pharmaceutical company headquartered in Paris (France). It was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. The Complainant is one of the world’s largest multinational pharmaceutical companies with operations in more than 100 countries. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market. The Complainant is the owner of SANOFI trademarks in a number of jurisdictions, including among the following: -France Trademark Reg. No. 96655339, registered December 11,1996; -European Union Trademark Reg. No. 010167351, registered January 7, 2012; and -International Trademark Reg. No. 1091805, registered August 18, 2011. 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 April 17, 2024, which does not currently resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant contends that: (a) the reproduction of the Complainant’s trademark as the dominant part of the disputed domain name, and the addition of terms such as the letters “hr” and of a hyphen, suggesting a human resource, does not prevent a finding of confusing similarity; (b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has neither authorized nor given its consent to the Respondent to register the disputed domain name, and the Respondent has no rights or legitimate interests in the SANOFI Mark and the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, given that the disputed domain name resolves to an inactive web page; and (c) the disputed domain name was registered and is being used in bad faith. Because the Complainant’s trademark SANOFI is well-known, the registration of the disputed domain name appears to be opportunistic for commercial gain. The Respondent has not used the disputed domain name, which currently resolves to an inactive website. The passive holding of the disputed domain name supports a finding of bad faith in this case. Further, the Respondent’s use of a privacy service indicates bad faith of the registrant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the disputed domain name is identical or confusingly similar to the Complainants’ trademark or service mark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
page 3 A. Identical or Confusingly Similar The disputed domain name includes the Complainant’s trademark SANOFI in its entirety together with addition of the letters “hr” and of a hyphen. Where the complainant holds a nationally or internationally registered trademarks, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1). It is also well accepted that the first element functions primarily as a standing requirement. The threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. (Section 1.7 of WIPO Overview 3.0). Adding the term “hr-” does not prevent a finding of confusing similarity. (Section 1.8 of WIPO Overview 3.0). In addition, the generic Top-Level Domain (“gTLD”) “.com” is disregarded under the confusing similarity test. (Section 1.11.1 of WIPO Overview 3.0). Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0). First, the Complainant contends that it has not authorized the Respondent to use the trademark SANOFI or to register any domain names incorporating it. Nonetheless, the composition of the Respondent’s disputed domain name carries a risk of implying that it was affiliated with SANOFI. Secondly, the Respondent has no rights or legitimate interests in the SANOFI mark and the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent has just used the disputed domain name by resolving to an inactive website. Thirdly, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. In the consideration of the above circumstances the Panel finds that the Complainant has made out a prima facie case and the Respondent failed to come forward with any appropriate evidence that might rebut the Complainant’s prima facie case. Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP Panel must be satisfied that a domain name has been registered and is being used in bad faith. These requirements are conjunctive; each must be proven or the Complaint fails. In addition, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (section 3.2.1 of WIPO Overview 3.0). First, the Complainant obtained the registration of SANOFI trademarks in numerous jurisdictions earlier than the Respondent registered the disputed domain name. Having considered that the Complainant’s trademark SANOFI is well-known and the composition of the disputed domain name, it is clear that the Respondent has been aware of the reputation of the SANOFI mark when registering a confusingly similar domain name that incorporates the Complainant’s mark plus the term “hr-”. Thus, it is also considered bad faith registration that the Respondent deliberately chose the disputed domain name to create a likelihood of confusion with the Complainant’s trademark so as to create a false association or affiliation with the Complainant. Secondly, the Respondent currently does not use the disputed domain name by resolving to an inactive website. Having reviewed the available 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. The Panel considers that the passive holding of the domain name constitutes bad faith use. (Section 3.3 of WIPO Overview 3.0). It is also considered that the Respondent intentionally attempted to attract Internet users for commercial gain to its
page 4 website by creating a likelihood of confusion with the Complainant’s trademarks. Thirdly, given the totality of the circumstances, the Respondent’s use of a privacy service to mask its details on the publicly available WhoIs, the Panel holds that the Respondent uses the disputed domain name in bad faith. Having reviewed the record, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case. 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. /Moonchul Chang/ Moonchul Chang Sole Panelist Date: July 4, 2024
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