Sanofi v John Terry

WIPO Case No. D2024-3919

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. John Terry

Case No. D2024-3919

1. The Parties

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

The Respondent is John Terry, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <sanofi.baby> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25,

2024. On September 25, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On September 26, 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 (Private by Design, LLC) and contact information

in the Complaint. The Center sent an email communication to the Complainant on September 27, 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 October

3, 2024.

The Center verified that the Complaint together with the amendment 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 October 4, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was October 24, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on October 25, 2024.

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The Center appointed Rebecca Slater as the sole panelist in this matter on November 5, 2024. 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 multinational pharmaceutical company headquartered in France. It engages in

research and development, manufacturing, and marketing of pharmaceutical products. The Complainant’s

principal market is prescription products, but it also develops over the counter medication. The Complainant

operates in over 100 countries and has 100,000 employees. It was formed in 2004 (as Sanofi-Aventis) and

changed its name to Sanofi in 2011.

The Complainant has a portfolio of registrations for the SANOFI word mark, including French Trade Mark

Registration No. 1482708 (registered August 11, 1988), European Union Trade Mark Registration

No. 010167351 (registered January 7, 2012), European Union Trade Mark Registration No. 004182325

(registered February 9, 2006) and International Trade Mark Registrations Nos. 1092811 and 1094854

(registered August 11, 2011) (the “Trade Mark”). The Complainant also has registrations for logo marks

incorporating SANOFI.

The Complainant is also the registrant of several domain names incorporating the Trade Mark, including

<sanofi.com> (registered October 13, 1995) and <sanofi.us> (registered May 16, 2002).

The Respondent is an individual named John Terry reportedly located in the US. The Respondent did not

submit a response, and consequently little information is known about the Respondent.

The Respondent registered the disputed domain name on August 25, 2024.

The disputed domain name does not currently resolve to an active website. At the time of filing of the

Complaint, the disputed domain name resolved to a parking page of the Registrar of the disputed domain

name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The Trade Mark is highly distinctive. The disputed domain name is confusingly similar to the Trade

Mark. The disputed domain name reproduces the Trade Mark in its entirety. The generic Top-Level Domain

(“TLD”) “.baby” should be disregarded from the assessment.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has never licensed or otherwise authorized the Respondent to use the Trade Mark or to

register the Trade Mark as a domain name. The Respondent is not using the disputed domain name in

connection with a bona fide offering of goods or services. The disputed domain name directs to a parking

website that displays sponsored listings.

- The disputed domain name was registered and is being used in bad faith by the Respondent.

The Trade Mark is well known, and the Respondent has acted in opportunistic bad faith. The Respondent is

intentionally attempting to take advantage of the Trade Mark to create confusion and gain unfair benefit.

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B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all the elements enumerated in paragraph 4(a) of the

Policy have been satisfied, namely:

- the disputed domain name is identical or confusingly similar to a trade mark or service mark in which

the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

The onus of providing these elements is on the Complainant.

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 trade mark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Trade Mark is reproduced within the disputed domain name. Accordingly, the disputed

domain name is identical to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

As the TLD “.baby” is a standard registration requirement, it is disregarded under the test for confusing

similarity. WIPO Overview 3.0, section 1.11.1.

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 disputed 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 disputed domain name such as those enumerated in the

Policy or otherwise.

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The Panel notes that the composition of the disputed domain name carries a high risk of implied affiliation.

WIPO Overview 3.0, section 2.5.1. The Complainant has not authorized the Respondent to use the Trade

Mark and there is no evidence that the Respondent has ever been commonly known by the disputed domain

name.

The Panel finds 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.

The Panel finds it highly unlikely that the disputed domain name was registered without knowledge of the

Complainant and the Trade Mark, given the longstanding reputation of the Complainant. The Respondent’s

goal in registering and using the disputed domain name appears to be to attract Internet users for taking

unfair advantage of the Complainant’s well-known Trade Mark. This amounts to “opportunistic bad faith” in

violation of the Policy.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the

doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the

Panel notes the distinctiveness and reputation of the Trade Mark, the Respondent’s failure to file a response,

and finds 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.

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 <sanofi.baby> be transferred to the Complainant.

/Rebecca Slater/

Rebecca Slater

Sole Panelist

Date: November 18, 2024