ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. Name Redacted Case No. D2024-3114 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is Name Redacted, United States of America (“United States”).1 2. The Domain Name and Registrar The disputed domain name
is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2024. On July 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 (Perfect Privacy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 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 August 2, 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”). 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 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 sent an email communication to the Center on August 5, 2024. Pursuant to paragraph 6 of the Rules, the Center informed the Parties of the commencement of the panel appointment process on August 26, 2024. On August 27, 2024, the Center received an email communication from a third party in receipt of the Center’s written notice. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 3, 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 headquartered in Paris, France, ranking as the world’s 4th largest multinational pharmaceutical company by prescription sales. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the Complainant also develops over-the-counter medication. The Complainant is a pharmaceutical company with consolidated net sales of EUR 43 billion in 2022, EUR 37,7 billion in 2021, EUR 36.04 billion in 2020, EUR 34.46 billion in 2018, EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015, and EUR 31.38 billion in 2014. In 2004, the Complainant merged with AVENTIS, a former European agro-chemical and pharmaceutical group born in 1999, and became SANOFI-AVENTIS and changed its name to SANOFI in May 2011. The Complainant is settled in more than 180 countries on all 5 continents, employing more than 90,000 people. The Complainant is the owner of the following trademark registrations, among others: - France trademark number 3309318, for SANOFI AVENTIS, registered on August 20, 2004, in classes 1, 3, 5, 9, 10, 16, 38, 41, 42, and 44, notably concerning pharmaceutical products; - France trademark SANOFI-AVENTIS number 3288019, for SANOFI-AVENTIS, registered on April 26, 2004, in classes 1, 3, 5, 9, 10, 16, 38, 41, 42, and 44, notably concerning pharmaceutical products; - European Union trademark number 004054193, for SANOFI-AVENTIS, filed on September 28, 2004, and registered on November 24,, 2005, in classes 1, 3, 5, 10, 38, and 42; - European Union trademark SANOFI-AVENTIS number 004025318, filed on September 14, 2004, and registered on November 3, 2005, in classes 1, 3, 5, 9, 10, 16, and 38; The Complainant is also the owner of the following domain names: - registered on March 14, 2004; - registered on March 10, 2006; - registered on December 20, 2006. The disputed domain name was created on June 11, 2024. It currently resolves to a website that purports to offer for sale Cannabis Seeds, Hemp Seed Oil, and CBD Oils. The website has the tittle “Green Genetics” and contains the following legend: “For 40 years Malberry has been leading the way in the supply of bulk medical Cannabis Seeds, Hemp Seed Oil, and CBD Oils.”.
page 3 5. Parties’ Contentions A. Complainant According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. Firstly, the Complainant submits that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant. Secondly, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name. Thirdly, the Complainant submits that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. However an email was sent from the email address disclosed by the Registrar as belonging to the Respondent. The email, received by the Center on August 5, 2024, stated: “ Good Morning […] Kindly tell me what this is about in layman's terms and what is required to resolve the matter”. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name: (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 burden of proof of each element is borne by the Complainant. The Respondent’s default does not by itself mean that the Complainant is deemed to have prevailed. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), WIPO Overview 3.0, section 4.3. 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. In the present case, the inversion of the two terms of the trademark (SANOFI and AVENTIS) in the disputed domain name () does not prevent confusing similarity.
page 4 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. The Panel finds the disputed domain name carries a risk of implied affiliation with the Complainant. The composition of the disputed domain name, comprising the Complainant’s trademark in its entirety but in reverse order and the content of the disputed domain name related to competing pharmaceutical products like CBD oil and CBD seeds cannot be considered a bona fide of offering goods and services. 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 trademarked terms SANOFI and AVENTIS do not have any meaning in the English language, and are therefore distinctive. They have been in use at least since 2004 and the SANOFI trademark was considered as well-known by several UDRP panels. - The Respondent registered the disputed domain name only on June 11, 2024. It is clear that the Respondent was aware of the Complainant’s trademark since it used both terms forming the Complainant trademark in reverse order. - In addition, the disputed domain name resolves to a website offering arguably competing pharmaceutical products, like CBD oil and seeds. - There is no disclaimer in the website. - the Respondent is in default. In light of these facts, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.
page 5 Lastly, as noted above in Section 3, the Center received an email from a third party apparently in receipt of the Center’s written notice. The Panel notes that the physical address disclosed for the Respondent does relate to the organization from which the third party was sending its email and does not, in any way, appear to relate to the location of the Respondent or the organization identified on the disputed domain name’s website.2 Accordingly, it seems more likely than not that the Respondent used the contact details of a third party (or various third parties) when registering the disputed domain name, which is a further indication of bad faith. 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 transferred to the Complainant. /Pablo A. Palazzi/ Pablo A. Palazzi Sole Panelist Date: September 18, 2024 2 Further to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.8, the Panel conducted a cursory Internet search for the Respondent and the organization identified on the disputed domain name and noted that the top results identified the Respondent as a top executive for “Malberry”, which is an Austria-based distributor of CBD-oils. Given the United States-based address disclosed for the Respondent, which apparently related to a distinct third party, and the “[…]@yahoo.com.au” email address disclosed for the Respondent, which uses the country-code Top Level Domain for Australia, the totality of mismatched information is very suspicious and indicative of fraud.
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