ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. ma li ao, startbanaer Case No. DCC2024-0029 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is ma li ao, startbanaer, United States of America (the “US”).1 2. The Domain Name and Registrar The disputed domain name is registered with Gname.com Pte. Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2024. On October 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 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 October 22, 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 October 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2024. 1The Panel notes that the registration details for the disputed domain name provided by the Registrar include both “United States of America” and “Canada” as part of the Respondent’s address which, therefore, seem to be faulty.
page 2 The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 25, 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 France, ranking 4th world's largest multinational pharmaceutical company by prescription sales. The Complainant is present in more than 100 countries on all five continents and employs over 100,000 people. The Complainant 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. The Complainant has submitted evidence that it is the owner of a large number of trademark registrations, including the following: SANOFI, French trademark with registration number 1482708, registered on August 11, 1988. SANOFI, International trademark with registration number 591490, registered on September 25, 1992. SANOFI, United Kingdom trademark with registration number UK00001483425, registered on January 15, 1993. SANOFI, European Union trademark with registration number 000596023, registered on February 1, 1999. SANOFI, US trademark with registration number 85396658, registered on July 24, 2012. The Respondent registered the disputed domain name on August 6, 2024. The disputed domain name resolves to an error page. 5. Parties’ Contentions A. Complainant The Complainant’s SANOFI trademarks and SANOFI domain names are registered all over the world prior to the Respondent’s registration of the disputed domain name . According to a large number of UDRP panel decisions, the SANOFI trademarks are considered “well-known” in many jurisdictions. The disputed domain name reproduces the SANOFI trademark, which does not have any particular meaning in itself and is therefore highly distinctive. The disputed domain name is an intentional misspelling of the trademark since the difference is limited to the addition of the ending letter “s”. From a phonetic and typographical point of view, the addition of the letter “s” at the end of the trademark must be considered as merely insignificant as it will be read and understood as the genuine trademark or as the plural version of it. Consequently, the addition of the letter “s” at the end of the trademark is undoubtedly insufficient to alleviate the likelihood of confusion between the Complainant’s trademark and the disputed domain name. There exists an inevitable risk that the disputed domain name will cause confusion, as it could lead average consumers to believe that the disputed domain name is related to the Complainant’s official websites. Indeed, the disputed domain name can be perceived as one of the Complainant’s special websites designed to provide details on SANOFI activities, which is bound to create a likelihood of confusion between the disputed domain name and the Complainant’s trademarks and domain names.
page 3 The Respondent’s name does not bear any resemblance with the Complainant’s trademark. Consequently, the Respondent has no prior rights and/or legitimate interests to justify the use of the Complainant’s trademark in the disputed domain name. Furthermore, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the SANOFI trademarks. Consequently, there is no relationship whatsoever between the Parties. The disputed domain name currently refers to an inactive webpage. Hence, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is he using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer any rights or legitimate interests in it in accordance with paragraph 4(c)(i) of the Policy given that the disputed domain name website is not used legitimately by the Respondent. The absence of legitimate interests somewhat induces the absence of good faith. The Complainant’s trademark is a well-known trademark which the Complainant used and registered many years before the Respondent registered the disputed domain name. It should be considered that, given the famous and distinctive nature of the Complainant’s trademark, the Respondent is likely to have had, at least, constructive notice, if not actual notice, as to the existence of the Complainant’s trademarks at the time he registered the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make illegitimate use of it. The Respondent registered the disputed domain name for the purpose of creating a likelihood of confusion, or at least an impression of association, between the SANOFI trademarks and the disputed domain name. As noted above, the disputed domain name resolves to an inactive website. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in which the Panel found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that he had undertaken any positive action in relation to the domain name. Indeed, circumstances of passive holding may fall within the concept of the domain name being used in bad faith. The lack of apparent genuine use of the disputed domain name, particularly close to those used by the Complainant, is likely to cause irreparable prejudice to their general goodwill because Internet users could be led to believe that the Complainant is not on the Internet or worse, that Complainant is out of business. This argument has already been upheld by previous panel decisions. See M. Antonino Amaddeo (Reminiscence Diffusion Internationale) v. Gas Bijoux SAS / GAS Olivier, WIPO Case No. D2012-1831. Consequently, the disputed domain name has been registered and used intentionally in bad faith without any rights or legitimate interests by the Respondent B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove each of the following: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
page 4 A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing 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 is, according to the submitted evidence, the owner of the registered trademark SANOFI. The disputed domain name incorporates the SANOFI trademark in its entirety with the addition of the common plural signifier “s”. Given that the SANOFI trademark is recognizable in the disputed domain name, the addition of the letter “s” does not prevent a finding of confusing similarity for the purposes of the Policy. It is standard practice to disregard the generic Top-Level Domain under the confusingly similar test. Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ trademark SANOFI and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (i) that the Respondent uses or has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or (ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. 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. From the submitted material in the Complaint and its annexes, it is clear that the Complainant’s trademark registrations predate the Respondent’s registration of the disputed domain name. The Complainant has not licensed, approved, or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name. The disputed domain name does not resolve to an active website. There is no evidence in this case indicating that the Respondent has used or made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie showing. The Respondent has not submitted any evidence indicating that it is the owner of any trademark or that it is commonly known by the
page 5 disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. In this regard, the Panel finds that the composition of the disputed domain name comprising the Complainant’s trademark and the additional letter “s” indicates an awareness of the Complainant and carries a risk of Internet user confusion (that seemingly being the Respondent’s aim). The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel finds that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation: (i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or (ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or (iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location. As previously mentioned, the Complainant’s trademark registrations for SANOFI predate the registration of the disputed domain name. The Panel notes that the Complainant’s trademark is considered well known according to a number of UDRP decisions cited by the Complainant. This and the fact that the disputed domain name comprises the Complainant’s trademark in its entirety with the addition of the letter “s”, make it inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks. Hence, the Panel concludes that the Respondent knew or should have known the existence of the Complainant’s trademarks when registering the disputed domain name. It has been argued by the Complainant that the Respondent registered the disputed domain name for the purpose of creating a likelihood of confusion, or at least an impression of association, between the Complainant’s trademarks and the disputed domain name. The evidence submitted by the Complainant demonstrates that the disputed domain name resolves to an error page. Panels have found that the non-use of a domain name, including a blank page, does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, the composition of the disputed domain name, the Respondent’s failure to provide any evidence of actual or contemplated good-faith use. Accordingly, under these circumstances, the Panel is convinced that the Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith.
page 6 Hence, in the absence of any evidence to the contrary, the Panel is persuaded on the balance of probabilities that the Respondent registered and used the disputed domain name with the Complainant’s trademark and business in mind. Another factor to weigh in the balance is the fact that the Respondent has not responded to the Complainant’s contentions. There is no evidence in this case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and used in bad faith. 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 shall be transferred to the Complainant. /Johan Sjöbeck/ Johan Sjöbeck Sole Panelist Date: December 9, 2024
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