ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. company bcde Case No. D2024-3916 1. The Parties Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. Respondent is company bcde, Viet Nam. 2. The Domain Name and Registrar The disputed domain name (“Domain Name”) is registered with Dominet (HK) Limited1 (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2024. On September 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 26, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (-) and contact information in the Complaint. The Center sent an email communication to Complainant on October 1, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Respondent sent an email communication to the Center on October 2, 2024. On the same day, the Center sent an email regarding the possible settlement to the Parties. Complainant requested to suspend the proceeding on October 2, 2024. On November 4, 2024, Complainant requested to reinstate the proceeding and filed an amendment to the Complaint on November 18, 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 Alibaba.com Singapore E-Commerce Private Limited with the Registrar IANA ID: 3775 has changed its name to Dominet (HK) Limited.
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2024. On December 10, 2024, the Center informed the Parties of the commencement of panel appointment process. The Center appointed Marina Perraki as the sole panelist in this matter on December 17, 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 According to the Complaint, Complainant is a French multinational pharmaceutical company, with presence in over 100 countries on five continents, employing 100,000 people. 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, Complainant ranks as the one of the world’s largest multinational pharmaceutical company by prescription sales. Complainant is ranked top in many worldwide surveys, including in the L2 Digital IQ Index “Pharm & Healthcare Providers” released by Scott Galloway, NYU Stern dated April 18, 2011. Complainant is the owner of numerous trademark registrations for SANOFI. These include: - European Union trademark registration No. 000596023 for SANOFI, filed on July 15, 1997 and registered on February 1, 1999 in classes 3 and 5; - International trademark registration No. 674936 for SANOFI, registered on June 11, 1997 in classes 3 and 5; and - International trademark registration No. 591490 for SANOFI (device), registered on September 25, 1992 in class 5. Complainant also owns numerous domain names, including , registered on October 13, 1995; , registered on March 12, 2006; , registered on October 10, 2006; , registered on May 16, 2002; and , registered on May 16, 2003. The Domain Name was registered on August 26, 2024 and resolves to an inactive website. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a cancellation of the Domain Name. B. Respondent Respondent did not submit a formal reply to Complainant’s contentions. However, through an email sent on October 2, 2024, Respondent stated: “I am no longer interested.”
page 3 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. 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 Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. 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 Domain Name. Accordingly, the 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 term, here, “vn”, short for “Viet Nam”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the 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 Respondent may demonstrate rights or legitimate interests in a 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. Respondent has not submitted a formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name in connection with a bona fide offering of goods or services. Indeed, upon notice of the dispute, Respondent indicated it was no longer interested in the disputed domain name. Furthermore, Respondent provided obviously false registration details.
page 4 On the contrary, as Complainant demonstrated, the Domain Name resolved to an inactive website. Accordingly, Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, which Respondent has not rebutted. 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. 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 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 distinctiveness and reputation of Complainant’s trademark, and the composition of the Domain Name, which includes Complainant’s well-known trademark in its entirety, along with an abbreviation associated with the country Viet Nam (vn), and finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy. Furthermore, the Panel considers also that Respondent provided obviously false registration details (WIPO Overview 3.0, section 3.2.1). The Panel finds that 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 Domain Name be cancelled. /Marina Perraki/ Marina Perraki Sole Panelist Date: December 27, 2024
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