Sanofi v Blingorf Steven

WIPO Case No. DCO2024-0020

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Blingorf Steven

Case No. DCO2024-0020

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Blingorf Steven , Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <sanoffi.co> is registered with Hosting Concepts B.V. d/b/a Registrar.eu.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2024.

On March 14, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On March 15, 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 March 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 March 18, 2024.

The Center verified that the Complaint [together with the amendment to the Complaint/amended 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 March 19, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was April 8, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 17, 2024.

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The Center appointed Peter Burgstaller as the sole panelist in this matter on April 23, 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 worldwide leading French multinational pharmaceutical company headquartered in

Paris (Annex 5 and 6 to the Complaint). It owns numerous SANOFI trademark registrations around the

world, inter alia:

-	European Union Trademark Registration No. 004182325, registered February 9, 2006;
-	European Union Trademark Registration No. 010167351, registered January 7, 2012;
-	International trademark Registration No. 1092811, registered on August 11, 2011, designating among
others Australia, Georgia, Japan, South Korea, Cuba, Russia, Iceland, Ukraine;
-	United States of America Trademark Registration No 85396658, registered July 24, 2012 (Annex 8 to
the Complaint).

Moreover, the Complainant is the owner of several domain name registrations containing the mark SANOFI,

e.g. <sanofi.com>, <sanofi.eu>, <sanofi.us> <sanofi.fr>, <sanofi.biz> and <sanofi.info>, all of them were

registered long before the registration of the disputed domain name (Annex 9 to the Complaint); it uses the

domain name <sanofi.com> to address its primary website (Annex 6 to the Complaint).

The disputed domain name was registered on February 26, 2024 (Annex 1 to the Complaint); at the time of

filing of the Complaint, the disputed domain name referred to a parking page provided by “Hostinger”

(Annex 11 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for cancelling

of the disputed domain name.

Notably, the Complainant contends that the SANOFI trademark is highly distinctive and well-known around

the world; it notes that the disputed domain name contains the SANOFI trademark in its entirety and simply

using a double “f” in the mark SANOFI which clearly constitutes typosquatting and is intended to create

confusing similarity between the Complainant’s trademark and the disputed domain name.

The Complainant submits that it is therefore inconceivable that the Respondent would not have been aware

of the Complainant’s trademark when registering the disputed domain name, or that there would be any

legitimate use for the disputed domain name. Further, the Complainant has never assigned, granted,

licensed, sold, transferred or in any way authorized the Respondent to register or use the SANOFI trademark

in any manner.

Finally, the Complainant notes that the disputed domain name does not resolve to an active website and is

therefore not used for a bona fide offering of goods or services. Moreover, the passive holding of a domain

name may amount to bad faith when it is difficult to imagine any plausible future active use of the disputed

domain name by the Respondent that would be legitimate and not infringing the Complainant’s well-known

mark.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(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 with respect to 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.

Based on the available record, the Panel finds the Complainant has shown rights in respect of the mark

SANOFI for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

In the present case the disputed domain name is confusingly similar to the SANOFI mark in which the

Complainant has rights since it only adds the letter “f” in the middle.

It has long been established under UDRP decisions that such misspellings of a trademark or where the

relevant trademark is recognizable within the disputed domain name the mere addition of a letter will not

prevent a finding of confusing similarity under the first element of the Policy (WIPO Overview 3.0,

section 1.9). This is the case at present.

Finally, it has also long been held that generic or country-code Top-Level-Domains (here “.co”) are generally

disregarded when evaluating the confusing similarity of a disputed domain name. WIPO Overview 3.0,

section 1.11.1.

Based on the available record, 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 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 Complainant focuses on

the fact that its trademark is highly distinctive and well known and provides suitable evidence of its

reputation, adding that it is inconceivable that the Respondent would not have been aware of this when

registering the disputed domain name. The Complainant also notes that the disputed domain name is not

being used for a bona fide offering of goods or services.

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The nature of the disputed domain name, comprising the Complainant’s distinctive mark together with

common, obvious, and intentional misspellings of the Complainant’s trademark cannot be considered fair as

these confuse users seeking or expecting the Complainant.

The Respondent did not reply to the Complainant’s contentions and hence has not rebutted the

Complainant’s prima facie showing.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

As stated in paragraph 4(a)(iii) pf the Policy, the Complainant must show registration and use of the disputed

domain name in bad faith. These are concurrent requirements.

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:

(i) In the present case the Complainant has rights and is the owner of the distinctive and globally well-known

mark SANOFI, which is registered and used in many jurisdictions around the world long before the

registration of the disputed domain name. Moreover, the Complainant registered and is using the numerous

domain names containing the mark SANOFI, especially <sanofi.com> to address its company website.

It is inconceivable for this Panel that the Respondent registered or has used the disputed domain name

without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This

finding is supported by the fact that the disputed domain name incorporates the Complainant’s distinctive

trademark SANOFI together with common, obvious, and intentional misspellings of the Complainant’s

SANOFI mark.

Further, it is well-settled case law that the practice of typosquatting may in itself be evidence of a bad faith

registration of a domain name (see, e.g., Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case

No. D2004-1069; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; Compagnie Générale des

Etablissements Michelin v. Super Privacy Service LTD c/o Dynadot / Reed Mueller, WIPO Case

No. D2021-1771; Philip Morris Products S.A. v. Rohan Mubbashir Khan, WIPO Case No. D2022-4582;

Sopra Steria Group v. Sopra Steria, soprasteria, WIPO Case No. D2023-2397; Ferm Living ApS v.

Theresa Chavez, WIPO Case No. D2024-0041; Equifax Inc. v. Domain Administrator / Fundacion Privacy

Services LTD, WIPO Case No. D2023-5147)

Moreover, Panels have consistently found that the mere registration of a domain name that is identical or

confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by

an unaffiliated entity (as it is in the present case) can by itself create a presumption of bad faith.

WIPO Overview 3.0, section 3.1.4.

(ii) The disputed domain name is also being used in bad faith: Although there is no evidence that the

disputed domain name is being actively used or resolved to a website with substantive content, Panels have

found that the non-use of a domain name (including a blank or “coming soon” or “parking” page) would not

prevent a finding of bad faith under the doctrine of passive holding.

Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not

prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the

totality of the circumstances in each case, factors that have been considered relevant in applying the passive

holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the

failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-

faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in

breach of its registration agreement). WIPO Overview 3.0, section 3.3.

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The distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed

domain name (including common, obvious, and intentional misspellings of the Complainant’s SANOFI mark)

support the finding 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.

Furthermore, this Panel concludes that the disputed domain name is being used in bad faith, putting

emphasis on the following:

-	the Complainant’s trademark SANOFI is distinctive and used as domain name to address the
Complainant’s website, e.g., <sanofi.com>;
-	the disputed domain name consists of common, obvious, or intentional misspellings of the
Complainant’s trademark SANOFI which is a typical case of typosquatting which in itself constitutes
bad faith;
-	the Respondent has failed to present any evidence of any good faith use with regard to the disputed
domain name;
-	there is no conceivable plausible reason for good faith use with regard to the disputed domain name.

Based on the available record, the Panel finds that the third element of the Policy has been established.

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 <sanoffi.co> be cancelled.

/Peter Burgstaller/

Peter Burgstaller

Sole Panelist

Date: May 7, 2024