Sanofi v Domain Privacy, Domain Name Privacy Inc

WIPO Case No. D2024-3116

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Domain Privacy, Domain Name Privacy Inc.

Case No. D2024-3116

1. The Parties

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

The Respondent is Domain Privacy, Domain Name Privacy Inc., Cyprus.

2. The Domain Name and Registrar

The disputed domain name <sanofi.site> (the “Domain Name”) is registered with Communigal

Communications Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 August 21, 2024. In accordance with the Rules, paragraph
5, the due date for Response was September 10, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 12, 2024.

The Center appointed Ian Lowe as the sole panelist in this matter on September 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.

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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 the firm also develops over-the-counter medication. The Complainant was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo and changed its name to Sanofi in May 2011.

Sanofi had consolidated net sales of EUR 43 billion in 2022 and is established in more than 100 countries on all five continents, employing 100,000 people.

The Complainant is the proprietor of many registered trademarks in respect of SANOFI, including French trademark number 96655339 stylised word mark “sanofi” registered on December 11, 1996; European Union trademark number 010167351 SANOFI registered on January 7, 2012; and International trademark number 1092811 SANOFI, registered on August 11, 2011.

The Complainant is also the owner of a number of domain names comprising SANOFI, including
<sanofi.com> registered on October 13, 1995.

The Domain Name was registered on July 1, 2024. It resolves to a parking page comprising dynamic links to webpages of pay-per-click (“PPC”) links to a number of third-party websites, including providers of biotechnology and pharmaceutical services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its SANOFI trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i)        the 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 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 the 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.

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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.

Ignoring the generic Top-Level Domain “.site”, the Domain Name is identical to the Complainant’s SANOFI mark (the “Mark”).

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. Accordingly, 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.

The Domain Name has been used to resolve to a webpage of PPC links comprising in turn click through links to third party websites including the websites of providers of biotechnology and pharmaceutical services. So far as the Panel can determine, “sanofi” is not a dictionary term and is likely only to be taken as a reference

to the Complainant. In the Panel’s view, therefore, it is difficult to conceive a legitimate purpose for
registering a domain name identical to the Complainant’s Mark or any possible justification for the
Respondent having registered the Domain Name.

Having reviewed the available evidence, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the 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 Domain Name such as those enumerated in the Policy or

otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

In light of the nature of the Domain Name, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. 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.

Since the Domain Name comprises the entirety of the Mark, the obvious inference is that the Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s Mark. Its aim was to confuse Internet users into believing that the Domain Name was being operated by or authorized by the Complainant.

In the Panel’s view, using the Domain Name for a website comprising competing PPC links to third party
websites amounts to paradigm bad faith registration and use for the purposes of paragraph 4(a) of the
Policy.

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Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.

The Panel finds that the 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 <sanofi.site> be transferred to the Complainant.

/Ian Lowe/
Ian Lowe
Sole Panelist
Date: October 1, 2024