Sanofi v hao li
WIPO Case No. D2024-4530
•19-12-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Sanofi v. hao li
Case No. D2024-4530
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is hao li, China.
2. The Domain Name and Registrar
The Domain Name <fondation-sanofi-espoir.com> is registered with DropCatch.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2024. On November 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 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 November 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2024.
The Center appointed Marina Perraki as the sole panelist in this matter on December 5, 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
page 2
4. Factual Background
According to the Complaint, Complainant is a French multinational pharmaceutical company, with presence in over 100 countries in all five continents, employing 100,000 people. With Research and Development investment of 6,7 billion EUR in 2022 and consolidated net sales of 43 billion EUR in 2022, 37.7 billion EUR in 2021, 36.04 billion EUR in 2020, 34.46 billion EUR in 2018, 35.05 billion EUR in 2017, 33.82 billion EUR in 2016, 34.06 billion EUR in 2015 and 31.38 billion EUR in 2014, Complainant ranks as the 4th world’s largest multinational pharmaceutical company by prescription sales. Complainant is ranked top in many worldwide surveys, including in the L2 Digital IQ Index “Pharm & Healthcare Providers” released by Scott Galloway, NYU Stern dated April 18, 2011.
Complainant is the owner of numerous trademark registrations for SANOFI. These include:
- European Union trademark registration No. 000596023 for SANOFI, registered on February 1, 1999 in
classes 3 and 5;
- International trademark registration No. 674936 for SANOFI, registered on June 11, 1997 in classes 3 and
5; and
- International trademark registration No. 591490 for SANOFI (device), registered on September 25, 1992 in
class 5, designating, inter alia, China.
Complainant also owns numerous domain names, including <sanofi.com> registered on October 13, 1995,
<sanofi.eu> registered on March 12, 2006, <sanofi.fr> registered on October 10, 2006, <sanofi.us>
registered on May 16, 2002 and <sanofi.net> registered on May 16, 2003.
The Domain Name was registered on September 14, 2024 and resolves to an online gambling website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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 and is being used in bad faith.
page 3
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.
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.
The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms here, “fondation”, “espoir” and two hyphens between them, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding 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 also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are generally required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
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 available record, the Panel finds 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.
Panels have held that the use of a domain name for illegitimate activity here, claimed passing off, or other
types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section
2.13.1.
The Panel finds the second element of the Policy has been established.
page 4
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.
Panels have held that the use of a domain name for illegitimate activity, here, claimed passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy.
In particular, Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of
bad faith (WIPO Overview, section 3.1.4).
| Sanofi v. Aamir Hitawala, WIPO Case No. D2021-1781, Sanofi v. Contact Privacy Inc. Customer | In the present case, the Panel notes Complainant’s mark is well-known (as repeatedly recognized, e.g. his Domain Name, along with non distinctive terms (“foundation” which is French for “foundation” and “espoir” which is French for “hope”) both alluding to Complainant’s business in the field of pharmaceuticals, therapy and hope against health problems. |
| The term “sanofi” does not have any meaning and it is highly distinctive inherently. The Respondent’s name has no connection with the word “sanofi”. In addition, the Complainant had registered the SANOFI trademark in a number of countries and regions and the trademark registration in several countries preceded the Respondent's registration of the Domain Name. In the absence of a reasonable explanation, the Panel holds that it is not possible for the Respondent to select and register the Domain Name which includes the trademark of Complainant without knowing the Complainant's trademark. Respondent did not make any claim or provide any evidence to prove that the Domain Name was filed and held with legitimate interests. In view of all the above the Panel finds that Respondent has registered and is using the Domain Name to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark, therefore acting 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 disputed domain name <fondation-sanofi-espoir.com> be transferred to the Complainant. | |
| /Marina Perraki/ Marina Perraki Sole Panelist Date: December 19, 2024 |
0
0
0