ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. Steely Black Case No. D2024-4403 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is Steely Black, China. 2. The Domain Name and Registrar The disputed domain name is registered with Sav.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2024. On October 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 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 November 7, 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 November 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2024.
page 2 The Center appointed Simone Huser as the sole panelist in this matter on December 4, 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). It engages in research and development, manufacturing, and marketing of pharmaceutical products for sale, principally in the prescription market, but also develops over-the-counter medication. Historically, the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo. It changed its name to Sanofi in May 2011. The Complainant holds several domain names containing the trademark SANOFI-AVENTIS, among them . The domain name redirects to the website at the domain name , which is used by the Complainant in connection with its activity. The Complainant owns numerous trademark registrations in several jurisdictions, including: TRADEMARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE INTERNATIONAL CLASS SANOFI-AVENTIS France 3288019 April 26, 2004 1, 3, 5, 9, 10, 16, 38, 41, 42, and 44 SANOFI-AVENTIS European Union 004025318 November 3, 2005 1, 3, 5, 9, 10, 16, 38, 41, 42, and 44 SANOFI-AVENTIS International Trademark 839358 October 1, 2004 1, 3, 5, 9, 10, 16, 38, 41, 42, and 44 Because the Respondent did not file a Response, not much is known about the Respondent. The disputed domain name was registered on October 7, 2024. According to the evidence submitted with the Complaint, the disputed domain name redirected to the Registrar’s page, as well as to a domain name aftermarket platform with an indication that it is registered, but “may still be available.”. 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. Notably, the Complainant contends as follows: The disputed domain name is confusingly similar to the SANOFI-AVENTIS trademark in which the Complainant has rights, because it comprises a similar reproduction of the Complainant’s trademark, and replacement of the letter “e” by the letter “a” in the term “aventis” is not sufficient to avoid confusing similarity.
page 3 The Respondent has no rights or legitimate interests in respect of the disputed domain name. The trademark SANOFI-AVENTIS has been extensively used to identify the Complainant and its products / services. The Respondent has not been authorized by the Complainant to use this trademark, the Respondent’s name does not bear any resemblance with “SANOFI-AVENTIS”, and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well-known trademark SANOFI-AVENTIS at the time it registered the disputed domain name. The Respondent is using the disputed domain name in bad faith, by passively holding the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; (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. 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 entirety of the mark is reproduced within the disputed domain name, with a replacement of the letter “e” with an “a” in the term “aventis”. The replacement of the letter “e” with the letter “a” in the disputed domain name is considered an intentional misspelling of the Complainant’s mark (so-called “typo squatting”); a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark . WIPO Overview 3.0, section 1.9. The addition of the generic Top-Level Domain “.com” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). See WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established.
page 4 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 for a complainant to prove that 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 that the misspelling of the Complainant’s trademark in the disputed domain name signals an intention on the part of the Respondent to confuse unsuspecting Internet users seeking or expecting the Complainant. Based on the available record, 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. In the view of the Panel, noting that that the Complainant’s trademark long predates the registration of the disputed domain name and considering that the Complainant’s trademark SANOFI is well known, the disputed domain name is a typosquatted version of the Complainant’s trademark which comprises the names of the companies that merged to form the Complainant, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademark. In the circumstances of this case, this is evidence of registration in bad faith. The disputed domain name is redirected to the Registrar’s parking page and a domain name aftermarket platform with an indication that it is registered, but “may still be available,” implying the for sale nature of the disputed domain name. Therefore, on the evidence on record, the Panel finds that the Respondent registered and is using the disputed domain name with the intention of taking unfair advantage of the Complainant’s goodwill in its SANOFI-AVENTIS trademark. Based on the available record, 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. /Simone Huser/ Simone Huser Sole Panelist Date: December 13, 2024
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