Sanofi v Gabriel Anderson, Sanofi Roblox

WIPO Case No. D2023-3895

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Gabriel Anderson, Sanofi Roblox

Case No. D2023-3895

1. The Parties

Complainant is Sanof i, France, represented by Selarl Marchais & Associés, France.

Respondent is Gabriel Anderson, Sanof i Roblox, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sanof irblx.com> (the “Domain Name”) is registered with Wix.com Ltd. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2023. On September 19, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Name. On October 3, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which dif fered from the named Respondent and contact information in the Complaint (“Redacted for Privacy”). The Center sent an email communication to Complainant on October 4, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant f iled an amendment to the Complaint on October 4, 2023.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 Respondent of the Complaint, and the proceedings commenced on October 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2023. Respondent did not submit any response. Accordingly, the Center notif ied Respondent’s default on October 27, 2023.

The Center appointed Marina Perraki as the sole panelist in this matter on November 10, 2023. The Panel f inds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant is a French multinational pharmaceutical company, with presence in over 100 countries,
employing 100,000 people. With Research and Development investment of EUR 5.9 billion in 2019, and
consolidated net sales of EUR 37,7 billion in 2021, EUR 36.04 billion in 2020, EUR 34.46 billion in 2018,
EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in
2014, it ranks as the 4th world’s largest multinational pharmaceutical company by prescription sales.

Sanof i Pasteur is the vaccines division of Complainant, which produces more than 1 billion doses of vaccines every year, including a rabies vaccine. With over EUR 500 million invested every year in Research and Development expenditures, Sanofi Pasteur employs nearly 15,000 people worldwide and generated EUR 5,118 million in revenue in 2018. Complainant has a worldwide consent of use of the name Pasteur f rom its rights holder.

Complainant is the owner of SANOFI trademark registrations worldwide including, inter alia:

- the French trademark registration no. 96655339 for SANOFI (f igurative), filed and registered on December

11, 1996, for goods and services in international classes 01, 03, 05, 09, 10, 35, 40, and 42;

- the European Union Trade Mark registration no. 000596023 for SANOFI, f iled on July 15, 1997, and
registered on February 1, 1999, for goods in International classes 03 and 05;

- the French trademark registration no. 3831592 for SANOFI (f igurative), f iled and registered on May 16, 2011, for goods and services in international classes 01, 03, 05, 09, 10, 16, 35, 38, 40, 41, 42, and 44, and

- the International trademark registration no. 1092811 for SANOFI, registered on August 11, 2011, for goods
in international classes 03 and 05.

Complainant is also the owner of domain name registrations for SANOFI, including <sanofi.com>, registered on October 13, 1995; <sanofi.eu>, registered on March 12, 2006; <sanof i.f r>, registered on October 10, 2006; and <sanof i.net>, registered on May 16, 2003.

The Domain Name was registered on August 26, 2023, and resolved to a website at the time of f iling of the Complaint which seemed to be a presentation of Complainant, its values, careers, etc and which used also the same graphics as the official site of Complainant (the Website). At the bottom of the page it was written “Sanof i Roblox is Not Af f iliated with the real Sanof i”.

Currently the Domain Name leads to a website of a purported education provider under the name Coefficient with address at “Robloxia Lane, Roblox, RO“using “Roblox environments”, which in the About Us section leads to a Facebook page entitled “EditorX”.

5. Parties’ Contentions

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the

Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant

has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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 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 f inds the entirety of the mark is reproduced within the Domain Name. Accordingly, the disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms [here, the term “rblx” which per Complaint is short for Roblox, which is a popular computer game platform] may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

Based on the available record, the Panel f inds the f irst 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 Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While 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 often impossible 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. 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.

prima facie

Having reviewed the record, the Panel f inds Complainant has established a case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted

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Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name resolved to the Website and currently it resolves to a dif ferent website of a purported education provider.

The Panel considers also the fact that the Website contained a wording stating that “Sanof i Roblox is Not Af filiated with the real Sanofi” however the Panel finds that because of the size of the letters and position of this phrase at the bottom of the Website as well as its unclear meaning, this wording is not enough to indicate that Respondent’s use is unauthorized by Complainant, nor does it change the fact that Respondent is using Complainant’s marks to increase traffic in its own Website. In addition, the Panel notes that such disclaimer is under Respondent’s control who may delete it at any time.

Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing of f , or other types of f raud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Last, the Domain Name incorporates in its entirety Complainant’s mark which increases the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name.

Based on the available record, the Panel f inds 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.

UDRP panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel f inds Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy.

In the present case, the Panel notes that Respondent has registered and used the Domain Name in bad faith.

Because Complainant’s mark had been widely used and registered by Complainant before the Domain Name registration and noting the worldwide notoriety of the SANOFI trademark and the purported disclaimer in the Website, it is clear that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As regards bad faith use, Complainant demonstrated that the Domain Name is employed to host a website which appeared falsely to be that of Complainant or authorised by Complainant. The Domain Name has been operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business. This supports the finding of bad faith use (Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388; and WIPO Overview 3.0, sections 3.1.4 and 3.2.1).

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Based on the available record, the Panel f inds 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 Domain Name, <sanof irblx.com>, be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: November 24, 2023