ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. Daniel Davies Case No. D2024-3025 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is Daniel Davies, United States of America (“US”). 2. The Domain Name and Registrar The disputed domain name (“the Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2024. On July 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 25, 2024, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 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 29, 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 August 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2024. The Center appointed Catherine Slater as the sole panelist in this matter on August 29, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
page 2 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 corporation with headquarters in Paris. It engages in the research, development, manufacture, and marketing of pharmaceutical products. In 2022, it had consolidated net sales of EUR 43 billion and was the world’s fourth largest pharmaceutical company by prescription sales. It has a presence in around 100 countries and employs around 91,000 people. The Complainant is the owner of many trademark registrations worldwide including: - European Union Registration 010167351 for SANOFI (word mark), registered on January 7, 2012; - International Registration 1094854 for SANOFI (word mark) registered on August 11, 2011; and - US Registration 4178199 for SANOFI (word mark) registered on July 24, 2012. The SANOFI trademark is hereinafter referred to as “the Complainant’s trademark”. The Complainant is also the owner of many domain names incorporating the Complainant’s trademark, including the domain name which was registered on October 13, 1995. The Disputed Domain Name was registered on July 8, 2024. At the date of filing of the Complaint, the Disputed Domain Name pointed to a parking page upon which appeared “pay-per-click” (“PPC”) links. At the date of this Decision, the Disputed Domain Name did not connect to any website. 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 because it reproduces their highly distinctive trademark. The Disputed Domain Name is an intentional misspelling of SANOFI, which is insignificant and amounts to typosquatting. This creates a risk of confusion because the average consumer could be led to believe that the Disputed Domain Name is related to the Complainant’s own websites, particularly in light of the Complainant’s established goodwill and well-known trademark as previously recognized by prior UDRP panels. The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name because his name does not bear any resemblance to the Disputed Domain Name, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including its trademarks, the Respondent is using the Disputed Domain Name as a “bait and switch”, the Disputed Domain Name leads to a parking page which demonstrates that the Disputed Domain Name was registered solely for the purpose of misleadingly diverting consumers into thinking that the Respondent is in some way connected to the Complainant, the Disputed Domain Name has been used to unfairly attract the Complainant’s consumers by leading them to a page that displays internet links related to the Complainant’s trademarks, the Respondent is using the Disputed Domain Name to obtain commercial gain by misleading consumers and because the use of a parking website does not constitute a bona fide noncommercial use.
page 3 Finally, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith because the Complainant’s marks are well known and the mere registration of a confusingly similar domain name amounts to opportunistic bad faith. In this regard, the Complainant contends that the Disputed Domain Name has been registered in bad faith because it has been done for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks and the primary purpose of the registration was to gain unfair benefit from the Complainant’s reputation. The Complainant further contends that the Disputed Domain Name is being used in bad faith because the Respondent is trying to ride off the worldwide reputation of SANOFI by pointing the Disputed Domain Name to a “parking website” and profiting from the revenue created by the PPC links with the increased traffic created by the internet users being drawn to the Respondent’s website and therefore capitalizing on the goodwill of the Complainant’s trademark. 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 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 Panel finds the Complainant’s trademark is recognizable within the Disputed Domain Name. The Disputed Domain Name is a misspelling of the Complainant’s trademark since it comprises that trademark with the interspersion of a single letter “i” which is easily overlooked. This amounts to “typosquatting”. WIPO Overview 3.0, section 1.9. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. 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
page 4 demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Moreover, the “typosquatting” nature of the Disputed Domain Name is inherently misleading and reflects an intent by the Respondent to mislead Internet users expecting to find the Complainant, which cannot vest in the Respondent rights or legitimate interests. The Disputed Domain Name has been used to point to a parking page containing PPC links relating to the Complainant’s trademark. It is well-established that such pages that are built around a trademark (as opposed to PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services and nor do they constitute a legitimate noncommercial or fair use. 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 Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Disputed Domain Name was registered and is being used in bad faith. The Panel accepts the Complainant’s contention (supported by evidence and including prior panel Decisions on the point) that the Complainant’s trademark has a reputation and is well-known (see, for example, Sanofi v. Cai Rui Qiao, WIPO Case No. D2017-1765, and Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta, WIPO Case No. D2016-0096). Taking that into account, and the fact that the Disputed Domain Name is a mere misspelling of that trademark, it is inconceivable that the Respondent did not have the Complainant’s trademark in mind at the point of registration and it is equally inconceivable that the Respondent had any reason to register the Disputed Domain Name other than to take advantage of, abuse, or otherwise engage in behaviour detrimental to the Complainant’s trademark. As such, the Disputed Domain Name was registered in bad faith. WIPO Overview 3.0, section 3.1. The Panel further finds that the Respondent’s use of the Disputed Domain Name to resolve to a parking page containing PPC links constitutes bad faith as the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy. The Disputed Domain Name is not currently being used. Panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. 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. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement) and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes that the Complainant’s trademark is distinctive, has a reputation and is well-known, that the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use and that it is impossible to conceive of any plausible actual or contemplated active use of the typosquatting Disputed Domain Name by the Respondent that would be legitimate. Considering these circumstances, the Panel concludes that the Respondent’s current passive holding of the Disputed Domain Name satisfies the requirement of paragraph 4(a)(iii) and that the Disputed Domain Name continues to be used in bad faith. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Catherine Slater/ Catherine Slater Sole Panelist Date: September 12, 2024
Full & Egal Universal Law Academy