ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. lapaqaa laooa Case No. D2024-3679 1. The Parties The Complainant is Sanofi, France, represented by SELARL MARCHAIS & ASSOCIÉS, France. The Respondent is lapaqaa laooa, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2024. On September 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 (Domain Administrator, See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 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 September 17, 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 September 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2024. The Center appointed Peter Kružliak as the sole panelist in this matter on October 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 a pharmaceutical company based in France with consolidated net sales of EUR 43 billion in 2022, ranking 4th world’s largest multinational pharmaceutical company by prescription sales. The Complainant is settled in more than 100 countries on all 5 continents employing almost 100,000 people. The Complainant has been formed as Sanofi-Aventis in 2004 after the merger of Aventis and Sanofi-Synthélabo and changed its name to Sanofi in May 2011. The Complainant is the owner of numerous trademark registrations in many jurisdictions of the world containing SANOFI, including the following trademark registrations: − United States of America trademark registration SANOFI (word), number 85396658, filed on August 12, 2011 and registered on July 24, 2012 for classes 5, 9, 16, 41, 42, and 44; − European Union trademark registration SANOFI (word), number 010167351, filed on August 2, 2011 and registered on January 7, 2012 for classes 3 and 5; − European Union trademark registration SANOFI (word), number 004182325, filed on December 8, 2004 and registered on February 9, 2006 for classes 1, 9, 10, 16, 38, 41, 42, and 44; − International trademark registration SANOFI (word), number 1092811, registered on August 11, 2011, for classes 1, 9, 10, 16, 38, 41, 42, and 44 protected in the following jurisdictions: Bahrain, Belarus, Bhutan, Bonaire, Sint Eustatius and Saba, Bosnia and Herzegovina, Botswana, Croatia, Cuba, Curaçao, Egypt, Eswatini (Swaziland), Georgia, Ghana, Iceland, Kyrgyzstan, Lesotho, Liberia, Liechtenstein, Madagascar, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Democratic People’s Republic of Korea, North Macedonia, Sierra Leone, Singapore, Sint Maarten, Republic of Korea, Sudan, Switzerland, Syria, Tajikistan, Türkiye, Turkmenistan, Ukraine, Uzbekistan, Viet Nam, Zambia; and − International trademark registration SANOFI (word), number 1094854, registered on August 11, 2011, for classes 3 and 5 protected in the following jurisdictions: Albania, Antigua and Barbuda, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bhutan, Bonaire, Sint Eustatius and Saba, Bosnia and Herzegovina, Botswana, Croatia, Cuba, Curaçao, Egypt, Eswatini (Swaziland), Georgia, Ghana, Iceland, Iran (Islamic Republic of), Israel, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lesotho, Liberia, Liechtenstein, Madagascar, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Democratic People's Republic of Korea, North Macedonia, Norway, Oman, Russian Federation, San Marino, Serbia, Sierra Leone, Singapore, Sint Maarten, Republic of Korea, Sudan, Switzerland, Syria, Sao Tome and Principe, Tajikistan, Türkiye, Turkmenistan, Ukraine, Uzbekistan, Viet Nam, Zambia. (the “SANOFI trademark”) The Complainant also registered many domain names containing SANOFI trademark, such as , , , , , , , , , , and . The Complainant also indicated numerous UDRP panel decisions confirming the reputation and well-known character of the SANOFI trademark. The Respondent is from United States of America. The disputed domain name was created on August 28, 2024, and based on available record it resolves to an inactive page. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a cancellation of the disputed domain name.
page 3 Notably, the Complainant contends that the disputed domain name is confusingly similar to its SANOFI trademark regardless of the addition of the generic and descriptive terms “vital role” and the generic Top-Level Domain (“gTLD”) extension “.com”, which do not eliminate the likelihood of confusion with the SANOFI trademark. To the contrary, according to the Complainant, the addition of the generic terms increases the inherent risk of confusion, especially when considering well-known character of the SANOFI trademark. Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since: − the Respondent is not identified in the WhoIs database as the disputed domain name; − neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademarks, consequently there is no relationship between the Respondent and the Complainant who incorporated the Complainant’s trademarks into the disputed domain name without authorization; − the Respondent has no prior rights and/or legitimate interests to justify the use of SANOFI trademarks and domain names; and − the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor it is using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest, given that the disputed domain name website is not used legitimately by the Respondent, as it simply refers to an inactive page. And finally, the Complainant submits that the disputed domain name has been registered and is being used in bad faith arguing that: − given the famous and distinctive nature of the SANOFI trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s trademarks at the time it registered the disputed domain name, which indicates that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it; − the disputed domain name has obviously been registered for the purpose of creating a likelihood of confusion - or at least an impression of association - between SANOFI trademarks and domain names and the disputed domain name; − the disputed domain name resolves to an inactive website and it has been established in many UDRP cases that passive holding falls within the concept of the domain name being used in bad faith; and − the lack of use of the disputed domain name particularly close to those used by the Complainant is likely to cause irreparable prejudice to its general goodwill because Internet users could be led to believe that the Complainant is not on the Internet or worse, that the Complainant is out of business, which was also upheld by previous UDRP cases as an argument for bad faith on the part of the Respondent. 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.
page 4 The Complainant has shown rights in respect of SANOFI trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the SANOFI trademark is reproduced within the disputed domain name and the addition of other terms, such as “vital role” in this case, may bear on assessment of the second and third elements, however it 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. Similarly, the gTLD of the disputed domain name is being disregarded in determining identity and confusing similarity. WIPO Overview 3.0, section 1.11.1. Accordingly, the disputed domain name is confusingly similar to the SANOFI trademark 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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Per the available record the disputed domain name resolves to an inactive page, which cannot be considered according to the Panel as bona fide offering of goods or services considering the circumstances, and the Respondent did not provide any evidence of demonstrable preparations for such use. Furthermore, the available record does not show any trademark registrations or earlier relevant rights of the Respondent corresponding to the disputed domain name, nor the fact that the Respondent is commonly known by the disputed domain name. Finally, there is no evidence to suggest that the use of the disputed domain name by the Respondent is legitimate non-commercial or fair use. The SANOFI trademark has reputation and is well-know, as repeatedly recognized by previous UDRP decisions (see for instance Sanofi v. ma li ao, startbanaer, WIPO Case No. D2024-3388, Sanofi v. ma li ao, startbanaer, WIPO Case No. D2024-3285, Sanofi v. STEVEN NGATINO, WIPO Case No. D2024-3046, Sanofi v. Sanofi SAS, WIPO Case No. D2024-3026, Sanofi v. Daniel Davies, WIPO Case No. D2024-3025, Sanofi v. 苏永佳 (Su Yong Jia), WIPO Case No. D2024-2622, and Sanofi v. 大 大, WIPO Case No. D2024-2584), thus even though there are other terms included in the disputed domain name, the disputed domain name suggests sponsorship or endorsement by the Complainant, which prevents finding of any legitimate non-commercial or fair use on the part of the Respondent. WIPO Overview 3.0, section 2.5.1.
page 5 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 first notes that the Complainant’s trademarks are registered in many jurisdictions globally, enjoy reputation and are globally well-known or famous, as recognized by numerous earlier UDRP decisions (see above), thus, it does not seem conceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademarks. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names 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. As a result, Panel is of the opinion that the Respondent has registered the disputed domain name in bad faith. At the time of filling of the Complaint, the disputed domain name resolved to an inactive page. Panels have found that the non-use of a domain name 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 (i) the distinctiveness and the above described reputation of the Complainant’s trademarks, (ii) the composition of the disputed domain name, as well as the failure of the Respondent to (a) file a response or (b) provide any evidence of actual or contemplated good-faith use and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. 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. /Peter Kružliak/ Peter Kružliak Sole Panelist Date: October 30, 2024
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