ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. 大 大 Case No. D2024-2584 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is 大 大, 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 June 25, 2024. On June 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 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 26, 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 July 1, 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 July 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2024. The Center appointed Federica Togo as the sole panelist in this matter on August 6, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of
page 2 Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background It results from the Complainant’s undisputed allegations that it is a French multinational pharmaceutical company headquartered in Paris, France, settled in more than 100 countries on all 5 continents and employing circa 100,000 people. It is a major player on the worldwide pharmaceutical market, engaging 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. 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 is the registered owner of several trademarks worldwide consisting of or containing SANOFI, e.g., European Union Trade Mark Registration No. 010167351, registered on January 7, 2012 for goods in classes 3 and 5 notably concerning pharmaceutical products; and European Union Trade Mark Registration No. 000596023, registered on February 1, 1999 for goods in classes 3 and 5. In addition, the Complainant owns amongst others the domain name , created on October 13, 1995, for its official website. The disputed domain name was registered on June 18, 2024. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a website displaying game, movies and gambling contents. 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 confusingly similar to the Complainant’s trademark since it incorporates the Complainant’s registered and highly distinctive trademark SANOFI entirely. The adjunction of the nondistinctive number “2” at the end of the sign does not eliminate the likelihood of confusion with the well-known SANOFI trademark. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. It has never licensed or otherwise authorized the Respondent to use its well-known trademarks or to register any domain name including the above-mentioned trademarks. The disputed domain name seems to lead to a website and has been registered only for the purposes of attracting Internet users into clicking on the sponsored links/ advertising banners (related to game, streaming and gambling contents). Thus, the Respondent is obviously using the disputed domain name to obtain commercial gain by misleadingly diverting consumers. In addition, the disputed domain name is used by the Respondent for displaying game, movies and gambling contents. Consequently, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name, by taking unfair advantage of the reputation of the Complainant’s trademarks and domain names. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, it should be considered that, given the famous and distinctive nature of the mark SANOFI, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s marks at the time he registered the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it. In addition, the Respondent is using the disputed domain name to display
page 3 game, streaming and gambling contents. It follows from the above that this case constitutes an example of game, streaming and gambling squatting in which confusion with a well-known trademark is used to divert customers to a streaming website for commercial purposes. This squatting constitutes a paradigm case of registration in bad faith and in doing so there is a likelihood that the trademark of the Complainant is prejudiced thereby disrupting the business of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. 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 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 a trademark or service mark 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. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, numeral “2”) may bear on assessment of the second and third elements, the Panel finds the addition of such numeral does 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
page 4 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. Moreover, the Panel notes that the disputed domain names contain the Complainant’s registered and well-known trademark SANOFI, and that more likely than not, this trademark is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent registered the disputed domain name containing the Complainant’s trademark, with the intention to take advantage of the Complainant’s reputation and with the intent to mislead Internet users. 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 shares the view of other UDRP panels and finds that the Complainant’s trademark SANOFI is well-known. Therefore, this Panel has no doubt that the Respondent positively knew or should have known the Complainant’s trademark when registering the disputed domain name. This is underlined by the fact that the disputed domain name is clearly constituted by the Complainant’s trademark followed by numeral “2”. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith, WIPO Overview 3.0 section 3.1.4. The Panel shares this view. 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. On this regard, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (i) the nature of the disputed domain name (a domain name incorporating the Complainant’s well-known SANOFI mark plus addition of a numeral); (ii) the content of the website to which the disputed domain name resolves (i.e., displaying game, movies and gambling contents); (iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of the disputed domain name; (iv) the Respond concealed his identity behind a privacy shield.
page 5 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 name be cancelled. /Federica Togo/ Federica Togo Sole Panelist Date: August 19, 2024
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