ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. weqweqw, qweqweqwe Case No. D2024-2282 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is weqweqw, qweqweqwe, Kingdom of Cambodia. 2. The Domain Names and Registrar The disputed domain names and are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2024. On June 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 6, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy, weqweqw) 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. The Center appointed María Alejandra López García 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.
page 2 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 it 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 of 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, filed on December 8, 2004, and registered on February 9, 2006, and in force until December 8, 2024, in ICs 1, 9, 10, 16, 38, 41, 42, 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 its domain name portfolio, based on the SANOFI trademark, as i.e.: 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 05, 2004; and registered on November 19, 2001. 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; and Sanofi v. Millan Eskimo, WIPO Case No. D2024-1466. The disputed domain names were registered on March 20, 2024, and resolve to inactive 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 names.
page 3 Notably, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s SANOFI trademark and that the adjunction of nondistinctive numbers “6666” and “7125” in the disputed domain names (respectively), does not eliminate the confusion with a well-known trademark as SANOFI. Furthermore, the Complainant contends that the Respondent has no rights or any legitimate interest 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 any of the above-mentioned trademarks; the Respondent is not making a legitimate non-commercial 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 (iii) of the Policy. 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 a well-known trademark, in this case SANOFI, which according with the panel’s consensus view, suggest an evidence of opportunistic bad faith and false association; that the Respondent knew about the Complainant’s SANOFI trademark at the time of the registrations; and that according to the passive holding doctrine established through the Telstra Case, the disputed domain names are being used in bad faith as well. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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; 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. The Complainant must meet these requirements despite the Respondent’s default. No Response or any kind of communication has been submitted by the Respondent, despite the fair opportunity given by the Center to present its case in accordance with paragraph 2(a) of the Rules. Therefore, this Panel shall analyze the evidence submitted by the Complainant and decide this dispute under the “balance of probabilities” or “preponderance of the evidence” standard. See, paragraphs 14 and 15(a) of the Rules, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.2. 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 a trademark or service mark 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 plus the numbers “6666” and “7125” (respectively). The trademark it is easily recognizable within the disputed domain names. In accordance with the UDRP Panelists’ consensus view, 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
page 4 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. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / zname, WIPO Case No. D2022-1782. 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. 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 names such as those enumerated in the Policy or otherwise. It is very clear to the Panel, that there is no relationship between the Parties, that the Respondent has deliberately registered the disputed domain names without any kind of the Complainant’s authorization, generating with it a false association with the Complainant, and that given the worldwide recognition and notoriety of the SANOFI trademark, the Respondent has sought through the disputed domain names registrations to take advantage imminently. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith According to the submitted evidence, by the time the Respondent registered the disputed domain names, composed of the Complainant’s trademark SANOFI and meaningless numbers, the Complainant’s worldwide pharmaceutical reputation and trademark recognition was more than established, therefore, there is very little chance in the Respondent’s favor able to alleviate such fact before this Panel. WIPO Overview 3.0, section 3.2.1 and section 3.2.2. 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. WIPO Overview 3.0, section 3.2.1. 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 notoriety, distinctiveness, and worldwide reputation of the Complainant’s trademark SANOFI, the composition of the disputed domain names, the Complainant’s unrebutted allegations, given the lack of the Respondent’s Response, and finds that in the circumstances of
page 5 this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. See e.g.: Sanofi v. Khalil Rahmani, Sanofiavintis Co., WIPO Case No. D2024-1348; Sanofi v. Millan Eskimo, WIPO Case No. D2024-1466; and Sanofi v. wang lao, WIPO Case No. D2024-1850. 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: July 25, 2024
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