ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. Kan Ha Ha, jkl Case No. D2024-1910 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is Kan Ha Ha, jkl, China. 2. The Domain Names and Registrar The disputed domain names , , , , and are registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2024. On May 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 7, 2024, the Registrar transmitted by email to the Center its verification response confirming that the disputed domain names are registered with GoDaddy.com, LLC, and disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 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 16, 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”). On May 16, 2024, the Respondent sent an email communication to the Complainant, which in summary requested the reconsideration of the Complaint and offered to solve the matter under amicable terms. On May 16, 2024, the Complainant sent an email to the Center, requesting the suspension of the proceedings. On the same date, the Center confirmed the Suspension of the Proceedings (before commencement) to the Parties and to the Registrar, until June 15, 2024.
page 2 The Respondent did not provide any further communication or any response. On June 17, 2024, the Complainant requested the reinstitution of the proceedings, giving the Respondent’s lack of response to the settlement. On June 17, 2024, the Center notified to the Parties and to the Registrar, the reinstitution of the proceedings. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2024. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on July 9, 2024. The Center appointed María Alejandra López García as the sole panelist in this matter on July 18, 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 French multinational pharmaceutical company headquartered in Paris, France. It is one of the world’s largest multinational pharmaceutical companies by prescription sales, settled in more than 100 countries on all 5 continents, with 100,000 employees. Historically, the company 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, which is a member of the European Federation of Pharmaceutical Industries and Associations (EFPIA), 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. According to the 2022 Shareholder Report, the Complainant’s net sales were nearly 43 billion euros. 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, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. The Complainant owns, among many others, the following trademarks: - French trademark for SANOFI (word mark), Reg. No. 1482708, registered on August 11, 1988, and in force until August 11, 2028, in International Classes (“ICs”) 1, 3, 4, 5, 10, 16, 25, 28, and 31 notably concerning pharmaceutical products. - French trademark for SANOFI (word mark), Reg. No. 96655339, registered on December 11, 1996, and in force until December 11, 2026, in ICs 1, 3, 5, 9, 10, 35, 40, and 42 notably concerning pharmaceutical products. - European Union trademark for SANOFI (word mark), Reg. No. 004182325, registered on February 9, 2006, and in force until December 8, 2024, in ICs 1, 9, 10, 16, 38, 41, 42 and 44 notably concerning products in pharmaceutical and medical spheres. - International trademark for SANOFI (word mark), Reg. No. 1092811, registered on August 11, 2011, and in force until August 11, 2031, in ICs 1, 9, 10, 16, 38, 41, 42, and 44 notably concerning products in pharmaceutical and medical spheres. The Complainant also owns in its domain name portfolio, based on the SANOFI trademark, e.g., registered on October 13, 1995; registered on March 12, 2006; registered on October 10, 2006; registered on May 16, 2002; registered on May 16, 2003; registered on January 5, 2004; registered on November 17, 2001.
page 3 The Panel notes that SANOFI is a worldwide and well-known trademark, with strong reputation, which status, has been also recognized by previous panels along the years, as in e.g., Sanofi v. PrivacyProtect.org / ICS INC., WIPO Case No. D2012-1293; Sanofi v. Contact Privacy Inc. Customer 0129138820 / ICS INC., D2012-1314; Sanofi v. Joseph Donovan, WIPO Case No. DCO2013-0015; Sanofi v. Online Management/Registration Private, Domains By Proxy, LLC, WIPO Case No. D2013-2212; Sanofi v. Farris Nawas, WIPO Case No. D2014-0705; Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829; Sanofi v. Adrian Richie, WIPO Case No. D2021-3032; Sanofi v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / zname, WIPO Case No. D2022-1782; Sanofi v. Maeva Djouadjong, WIPO Case No. D2023-4114; Sanofi v. Sidney Haitoff, Mishe, Inc., WIPO Case No. D2024-0127; Sanofi v. Millan Eskimo, WIPO Case No. D2024-1466; Sanofi v. 石磊 (Lei Shi), WIPO Case No. D2024-2133. The disputed domain names have been registered and resolve as follows: No. Disputed Domain Name Registration Date Resolving Website 1 April 17, 2024 Registrar’s parking page 2 April 17, 2024 Inactive – no content 3 April 12, 2024 Inactive – no content 4 April 17, 2024 Registrar’s parking page 5 April 17, 2024 Registrar’s parking page The Respondent is apparently an individual located in China. The Respondent has no past or present relationship of any kind with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s SANOFI well-known trademark regardless of the adjunction of numbers as “16”, “17”, “197”, “198”, and “199” in the disputed domain names. Furthermore, the Complainant contends that the Respondent has no rights or any legitimate interests in respect of the disputed domain names, since there is no relationship between the Parties; the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the SANOFI trademark; that giving the inactive and parking websites where the disputed domain names resolve, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names nor it’s using them in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) and 4(c)(iii) of the Policy. And finally, the Complainant contends that the disputed domain names have been registered and are being used in bad faith, since the disputed domain names are confusingly similar to the famous and well-known trademark SANOFI, which according to the UDRP panelists’ consensus view, suggests evidence of opportunistic bad faith and false association; that Respondent has prior knowledge about the Complainant’s SANOFI trademark at the time of the registrations; that Respondent has offered for sale several of the disputed domain names through the Registrar’s parking page incurring in paragraph 4.(b)(i) of the Policy; that according to the passive holding doctrine other disputed domain names are being used in bad faith.
page 4 B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On May 16, 2024, the Respondent sent an email (from a Gmail address) to the Complainant, as follows: “Dear Sir/Madam, I am writing in response to the complaint filed by Sanofi regarding the [disputed] domain names. I would like to provide my perspective and relevant information regarding this matter. 1. **Domain Name Acquisition**: - I acquired these domain names through GoDaddy, a legitimate and well-known domain registrar. The purchase process followed all standard protocols and regulations established by the domain registration industry. 2. **Intended Use**: - The domain names were registered with no intention of infringing on Sanofi’s trademark or causing any confusion. I had specific, legitimate plans for these domain names which are not related to the pharmaceutical industry or Sanofi’s business operations. 3. **Good Faith Registration**: - At the time of registration, I was unaware of any potential conflicts with Sanofi’s trademarks. The domain names were selected based on their availability and my intended use, which is entirely unrelated to Sanofi’s brand. 4. **Lack of Infringement**: - I have not used these domain names in a manner that would infringe upon Sanofi’s trademarks. There has been no attempt to mislead or deceive consumers or to capitalize on Sanofi’s brand reputation. 5. **Willingness to Resolve**: - I am open to discussing this matter further to find a mutually agreeable resolution. I believe there may be a misunderstanding regarding the intent and use of the domain names. In light of the above points, I kindly request that the complaint be reconsidered. I am more than willing to provide any additional information or documentation that may be required to resolve this issue amicably. Thank you for your attention to this matter. I look forward to your response.” As a result of the above Respondent’s email, the Complainant sought an amicable resolution of the present dispute. The proceeding was thus suspended. However, the Respondent did not provide any further communication. Accordingly, the proceeding was reinstated. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must satisfy each of the three following elements: (i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; (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 5 In order to prevail, the Complainant must prove each of those requirements. No Response has been submitted by the Respondent, despite the opportunity to present its case. Therefore, this Panel shall analyze the evidence submitted by the Complainant, including the Respondent’s email of May 16, 2024, and decide this dispute on that basis. 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 3.0, section 1.7. The Complainant has shown rights in respect of the SANOFI trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The disputed domain names are composed by the Complainant’s trademark SANOFI and the addition of the numbers “16”, “17”, “197”, “198”, and “199” (respectively). The trademark it is plainly recognizable within the disputed domain names. According with the UDRP panelists’ consensus view, in cases “where the relevant trademark is recognizable within the disputed 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”. Accordingly, the disputed domain names are confusingly similar to the SANOFI trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Also see, Sanofi v. Mary Englehart, WIPO Case No. D2020-2612. As for the applicable generic Top-Level Domain (“gTLD”) “.top”, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark, as it is a technical requirement of registration. WIPO Overview 3.0, section 1.11.1. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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 available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Although the Respondent on its email of May 16, 2024, simply asserted that the disputed domain names ‘were registered with no intention of infringing the SANOFI’s trademark, giving specific and legitimate plans, unrelated to the pharmaceutical industry or SANOFI’s business operations’, the Respondent did not provide any evidence of these self-serving and conclusory statements which themselves are not inherently credible. See WIPO Overview 3.0, section 4.3. The Respondent has therefore not rebutted the Complainant’s prima facie showing as it has not come forward with any relevant credible evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Furthermore, the Panel notes that several of the disputed domain names are merely parked and the others do not resolve; neither of these scenarios is a legitimate noncommercial or fair use of the disputed domain
page 6 names nor use in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) and 4(c)(iii) of the Policy. 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. In the present case, the Panel notes that all the disputed domain names are confusingly similar to a widely known trademark as SANOFI and were registered long after the Complainant acquired its trademark rights. Giving that and the mere assertions of the Respondent’s email of May 16, 2024, the Panel accepts that it is clear that at the time of the registration of the disputed domain names, the Respondent knew the Complainant and its widely known SANOFI trademark and undertook to register the disputed domain names with the Complainant’s mark in mind. WIPO Overview 3.0, section 3.2.2. Additionally, despite claiming to have plans to use them, the disputed domain names are merely parked. Regarding the other disputed domain names, it is well established that 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and worldwide reputation of the Complainant’s trademark SANOFI, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the (above mentioned) disputed domain names does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element 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 names , , , and be cancelled. /María Alejandra López García/ María Alejandra López García Sole Panelist Date: August 1, 2024
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