ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. 大 大 Case No. D2024-2281 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is 大 大, 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 June 4, 2024. On June 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 June 6, 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 June 7, 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 June 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2024.
page 2 The Center appointed Theda König Horowicz as the sole panelist in this matter on July 16, 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 a French multinational pharmaceutical company which is headquartered in Paris. The Complainant engages in research and development, manufacturing, and marketing of pharmaceutical products for sale, principally in the prescription market, and also develops over-the-counter medication and offers a wide range of patented prescription drugs. It is a major player in the pharmaceutical market and has a presence in many countries around the world. The Complainant is the owner of numerous SANOFI trade marks worldwide, including the following: - European Union Trade Mark No. 000596023, registered on February 1, 1999; - International trade mark registration No. 591490, registered on September 25, 1992, designating China where the Respondent is located; and - French trade mark registration No. 1482708, registered on August 11, 1988. The Complainant is also the owner of various domain names incorporating the SANOFI trade mark, including , registered on October 13, 1995 which leads to the Complainant’s official online presence. The disputed domain name was registered on May 25, 2024, and resolves to a webpage providing links to game, gambling and streaming websites. 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 name. Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to the highly distinctive SANOFI trade mark in which the Complainant has rights for over 40 years. The disputed domain name reproduces the Complainant’s SANOFI trade mark in its entirety. The Complainant’s SANOFI trade mark is highly distinctive. The adjunction of the number “1” and the gTLD “.com” does not differentiate the disputed domain name from the Complainant’s SANOFI trade mark. The SANOFI trade mark has been recognized as well-known by many Panels. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s name bears no resemblance to SANOFI. The Complainant is not affiliated with the Respondent, and has never licensed or authorized the Respondent to use its SANOFI trade mark or to register a domain name incorporating its trade marks. The disputed domain name resolves to a website offering sponsored links and advertising banners related to game, streaming and gambling contents, for commercial gain, use which tarnishes the goodwill of the Complainant’s well-known SANOFI trade mark and which cannot be considered as legitimate.
page 3 Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s SANOFI trade mark is well-known and distinctive so the registration of the disputed domain name incorporating the trade mark is opportunistic bad faith by the Respondent. The disputed domain name was clearly registered in an attempt to target the Complainant and its famous trade mark. Given the fame of the SANOFI trade mark, the Respondent ought to have actual or constructive knowledge of the Complainant and its trade mark. The disputed domain name was created for the purpose of attracting Internet traffic to the Respondent’s webpage which advertises sponsored links to streaming and gambling services in order to take advantage of the Complainant’s reputation and divert consumers to a streaming website in order to obtain commercial gain or at least in order to disrupt the Complainant’s activities. Hence, the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of the trade mark SANOFI for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. The addition of the number “1” to the Complainant’s trade mark does obviously 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. 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 name. 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.
page 4 Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. The Panel further finds, that the use of the disputed domain name to host a parked page comprising pay-per-click (“PPC”) links to gaming, streaming and gambling websites cannot be considered a bona fide offering. WIPO Overview 3.0, section 2.9. 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 the Respondent could not have ignored the highly distinctive and well-known SANOFI trademark when registering the disputed domain name, bearing in mind that the said trademark is also registered in China where the Respondent is based. The fact that the disputed domain name resolves to a webpage providing links to third party websites of gaming, streaming and gambling contents are clearly showing that the Respondent’s purpose is to use the reputation of the Complainant’s trade mark to direct Internet users to commercial websites for financial gain. The nature of these websites is likely to tarnish the Complainant’s brand and image. The fact that the Respondent used a privacy service in order to register the disputed domain name and its silence during the proceedings are other indications of bad faith. Under the circumstances, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel therefore 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 name be transferred to the Complainant. /Theda König Horowicz/ Theda König Horowicz Sole Panelist Date: August 19, 2024
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