Sanofi and Sanofi-Aventis Deutschland GmbH v Goran Gichevski

WIPO Case No. D2022-4018

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi and Sanofi-Aventis Deutschland GmbH v. Goran Gichevski

Case No. D2022-4018

1. The Parties

The Complainant is Sanofi, France, and Sanofi-Aventis Deutschland GmbH, Germany, represented by Selarl

Marchais & Associés, France.

The Respondent is Goran Gichevski, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <buylantusonline.com> is registered with Stork R, informacijske storitve, d.o.o.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2022. On October 27, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on October 28, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amendments to the Complaint on November 2 and November 7, 2022 respectively.

The Center verified that the Complaint together with the amendments 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, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2022.

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The Center appointed Knud Wallberg as the sole panelist in this matter on December 6, 2022. 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, Sanofi, is a company incorporated in Paris, France, and is a leading French multinational pharmaceutical company, one of the largest multinational pharmaceutical companies by prescription sales. The Complainant is settled in more than 100 countries on all five continents employing 100,000 people.

The Complainant, Sanofi-Aventis Deutschland GmbH, is a subsidiary of Sanofi, and is the owner of several registrations of the trademark LANTUS worldwide, including the European Union trademark registration No. 018181027, filed on January 15, 2020 and registered on June 10, 2020 for goods in international class 5.

The Complainant also owns and operates several domain names which contain the LANTUS mark in its entirety, such as <lantus.com>, <lantus.net>, <lantus.info>, and <lantus.org>.

The disputed domain name was registered on February 9, 2022 and resolves to a website that purportedly offers sale of pharmaceutical goods bearing the LANTUS trademark and other alternative generic medications.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the trademark LANTUS in which the Complainant holds rights. The adjunction of the terms “buy” and “online” placed before and after the trademark LANTUS in the disputed domain name is thus insufficient to alleviate the likelihood of

confusion with the Complainant’s LANTUS mark.

The Complainant further asserts that the Complainant has never licensed or otherwise authorized the Respondent to use its trademark LANTUS or to register any domain name that includes the mark. It is also clear that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name, nor that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, since the proposed drugs seem to be counterfeit products and hence, potentially dangerous products.

The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The Respondent must undoubtedly have been aware of the Complainant’s highly distinctive LANTUS trademark, and of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it. Furthermore, since the disputed domain name directs Internet users to a website which is not the official website of the Complainant’s products, it is evident that the circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of trying to gain unfair benefit of the Complainant’s goodwill and reputation by using a domain name that creates a likelihood of confusion with the Complainant’s trademarks and domain names as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the products that are advertised for sale on it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i)           that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii)          that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)         that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraphs 14(a) and (b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark LANTUS, since the disputed domain name contains this mark in its entirety. The addition of the terms “buy” and “online” does not prevent a finding of confusing similarity. See

section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO
Overview 3.0”).

The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the
Respondent to use the trademark LANTUS.

Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this. Furthermore, the way the Respondent uses the confusingly similar disputed domain name for a website that appears to purportedly offer LANTUS products as well as other alternative generic medications, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.

Moreover, the nature of the disputed domain name carries a risk of an implied affiliation as it effectively
impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO

Overview 3.0.

Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.

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C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:

(i)           circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii)          the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)         the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted 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 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.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

Given the circumstances of the case, including the coined nature of the Complainant’s trademark LANTUS and the way that the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name in bad faith.

The disputed domain name is being used for a website, inter alia reproducing the Complainant’s trademark and logo and displaying a message “Buy online genuine brand name and alternative equivalent generic medications today at discount” which gives Internet users the impression that the website offers genuine LANTUS products and other alternative generic medications. However, the Complainant asserts that the goods that are offered for sale on the website at the disputed domain name may be counterfeit LANTUS products, which has not been rebutted by the Respondent. The Panel therefore finds that there can be no doubt that the disputed domain name is being used in bad faith to intentionally 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 mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Noting that the disputed domain name incorporates the Complainant’s distinctive trademark LANTUS; that the Respondent has not replied to the Complainant’s contentions; and that there appears to be no conceivable good-faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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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 <buylantusonline.com> be transferred to the Complainant.

/Knud Wallberg/
Knud Wallberg
Sole Panelist
Date: December 22, 2022