Sanofi v Name Redacted

WIPO Case No. D2022-4280

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Name Redacted

Case No. D2022-4280

1. The Parties

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

Respondent is Name Redacted.1

2. The Domain Name and Registrar

The disputed domain name is <todaysanofi.com> which is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2022. On November 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on November 10, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from those in the Complaint. The Center sent an email communication to Complainant on November 15, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 16, 2022.2

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 Respondent of the Complaint,
and the proceedings commenced on November 21, 2022. In accordance with the Rules, paragraph 5, the
due date for Response was December 11, 2022. The Center received an informal email communication

from a third party on December 1, 2022, which the Center reported to the Parties on December 9, 2022.

1 Respondent’s name has been concealed as discussed in section 6 below.

2 The original Complaint was filed against “Privacy service provided by Withheld for Privacy ehf”, which appeared as registrant in the

corresponding WhoIs report. The amendment to the Complaint was filed against Respondent, as per the information disclosed by the
Registrar.

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On December 10, 2022, the Center received another informal email communication from that third party. Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment on December 16, 2022.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 23, 2022. This Panel finds that it was properly constituted. This 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

Complainant is a French company engaged in research and development, manufacturing and marketing of pharmaceutical products.

Complainant has rights over the SANOFI mark for which it holds several mark registrations in a number of
jurisdictions, such as United States Registration No. 4178199, registered on July 24, 2012, in classes 5, 16,
41, 42, and 44; International registration No. 1094854, registered on August 11, 2011, in classes 3 and 5;
European Union Trade Mark No. 004182325, registered on February 9, 2006, in classes 1, 9, 10, 16, 38, 41,
42, and 44; and French registration No. 1482708, filed on August 11, 1988, in classes 1, 3, 4, 5, 10, 16, 25,
28, and 31.

Complainant is the registrant of several domain names which contain the SANOFI mark, including <sanofi.eu> registered on March 12, 2006; <sanofi.us> registered on May 16, 2002; <sanofi.info> registered on August 24, 2001; and <sanofi.com> registered on October 13, 1995.

The disputed domain name was registered on September 18, 2022. At the time the Complaint was filed the website linked to the disputed domain name showed, among others, a logo of a lion’s head and hands with “IPTV LIONS” at the bottom, “IPTV SUBSCRIPTION”, “VERIFIED PREMIUM IPTV PROVIDER SINCE

2017”, “$52.00 6 Months Package”, and “ORDER NOW”.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows.

Complainant is a French multinational pharmaceutical company settled in more than 100 countries on five continents, employing 100,000 people and with consolidated net sales of EUR 37.7 billion in 2021. Complainant has been ranked as the 4th world’s largest multinational pharmaceutical company by prescription sales.

Complainant is the rightful owner of several marks and domain names containing SANOFI, registered all over the world and whose registrations predate the registration of the disputed domain name. Complainant has used its SANOFI mark and trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI marks and domain names all over the world. SANOFI has no particular meaning and is therefore highly distinctive. Several UDRP decisions have already considered that Complainant’s marks are “well-known” in many jurisdictions.3

3 Among others, Complainant relies on Sanofi v. Bo Li, WIPO Case No. D2013-1971; Sanofi v. Whois Agent, Whois Privacy Protection

Service, Inc. / Jim Moretta, WIPO Case No. D2016-0096; Sanofi v. HUANG GUANGJIN aka HUANGGUANGJIN, WIPO Case No.
D2020-0814; and Sanofi v. Domain Admin, Whoisprotection.cc / Jose Flora, Waeco mart ltd, WIPO Case No. D2021-1857.

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The disputed domain name is confusingly similar to the marks over which Complainant has rights. The disputed domain name comprises as its dominant part an exact reproduction of Complainant’s SANOFI mark, combined with the descriptive word “today”. The addition of such word remains insufficient to avoid

confusing similarity. It is well-established that where a domain name wholly incorporates a distinctive mark
in its entirety, it is confusingly similar to that mark despite the addition of a word or a descriptive term.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has neither prior right nor legitimate interest to justify the use of the marks and domain names of Complainant. Respondent’s name has no resemblance with SANOFI or “todaysanofi”. There is no relationship between the Parties, and Complainant has never licensed or otherwise authorized Respondent to use its marks or to

register any domain name including such marks.

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is Respondent using it in connection with a bona fide offering of goods or services. The disputed domain name leads to a website offering IPTV (Internet Protocol television) services, namely the provision of a streaming service by an entity under the name IPTV LIONS. Thus, Respondent is using the disputed domain name to obtain indirect commercial gain by misleading consumers. Since SANOFI enjoys a great reputation and is well known all around the world, the disputed domain name has been registered only for the purpose of unfairly attracting Internet users to Respondent’s webpage; that is, Respondent wanted to provide a good ranking for the disputed domain name and related website on search engines.

The disputed domain name was registered and is used in bad faith.

Respondent’s registration of the disputed domain name can in no way be the result of a mere coincidence. Given the famous and distinctive nature of SANOFI, Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of Complainant’s marks at the time it registered the disputed domain name, which suggests that Respondent acted with opportunistic bad faith in registering it in order to make an illegitimate use of it. Further, a quick Google search would have shown that SANOFI is very well known, and would have revealed to Respondent that all the search results are strictly related to Complainant and its marks and domain names. It is therefore inferred that Respondent was aware, or should have been aware, of Complainant’s businesses.

The disputed domain name has been registered for the purpose of attracting Internet users to Respondent’s website by creating a likelihood of confusion – or at least an impression of association – between Complainant’s marks and domain names and the disputed domain name. The disputed domain name leads to a website offering IPTV services and, therefore, Respondent is using it to obtain indirect commercial gain by misleading consumers, which makes it clear that Respondent is trying to take advantage of Complainant’s reputation.

Numerous UDRP decisions have recognized the reputation of Complainant’s marks. In cases in which the well-known status of a complainant’s marks is well-established, several UDRP decisions constantly acknowledge that this consideration is, in itself, indicative of bad faith registration and use.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

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On December 1 and 10, 2022, the Center received email communications from a third party named the
same as Respondent. In essence, such person stated her concerns about a possible fraud attempt and her
identity being compromised since she was not the owner of the disputed domain name and thus could not be
deemed as Respondent in this proceeding. About the contact information provided with the notification of
the Complaint, such person affirmed that her street address was slightly incorrect, and that the telephone
number and the email address shown therein were not hers. This Panel is satisfied that, on the balance of
probabilities, registration of the disputed domain name was obtained by someone that used the name and
street address of an individual alien to said registration. In view of such potential identity theft, this Panel
decided to have Respondent’s name redacted from this decision.4 Thus, this Panel has attached as Annex 1
to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which
includes Respondent’s name, and has authorized the Center to transmit said Annex 1 to the Registrar as
part of the order in this proceeding. This Panel hereby establishes that such Annex 1 shall not be published

due to the exceptional circumstances of this case (see paragraph 4(j) of the Policy and paragraph 16(b) of

WIPO Case No. D2009-1788).	the Rules; see also Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corporation v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of 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 undisputed that Complainant has rights over the SANOFI mark.
Since the addition of a generic Top-Level Domain (i.e. “.com”) after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the SANOFI mark, albeit preceded by the term “today”. It is clear to this Panel that said mark is recognizable in the disputed domain name and that the addition of such term in the disputed domain name does not avoid a finding of confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0).
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is uncontested that Complainant and its SANOFI mark are well known. Complainant contends that Respondent’s name has no resemblance with said mark or the disputed domain name, that it has no relationship with Respondent, and that it has not authorized Respondent to use such mark or to register the
disputed domain name.5 The evidence in the file shows that Respondent seems to have been commercially
4 See Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890: “this appears to be a case of
identity theft […] the Panel has decided that no useful purpose is to be served by referring to the name of the individual against whom the Complaint was filed and has therefore not included its name in the heading or body of this Decision.” See also The Hearst Foundation, Inc. and Hearst Communications, Inc. v. Name Redacted, WIPO Case No. D2016-2479. 5 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no
evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent.”

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operating the website linked to the disputed domain name to feature some IPTV services, without showing the identity of the operator thereof, and there appears to be no disclaimer as regards Complainant and its SANOFI mark. All that demonstrates neither a bona fide offering of goods or services nor a legitimate

noncommercial or fair use of the disputed domain name.

This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.

Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.

Taking into consideration that Complainant’s registration and use of the SANOFI mark preceded the creation the existence of Complainant and its SANOFI mark at the time it obtained the registration of the disputed domain name.

of the disputed domain name by a number of years, the international recognition of said mark, and

Complainant provided screenshots of the website linked to the disputed domain name, from which it is clear that Respondent has used the disputed domain name for commercial purposes. It seems to this Panel that Respondent sought to divert Internet traffic looking for Complainant or its SANOFI products in order to

commercially benefit therefrom, which denotes bad faith.6

Further, Respondent’s use of a name and street address that, based on the evidence in the file, indicates that Respondent misappropriated the identity of a third party, coupled with the fact that Respondent used a privacy service to hide its name and contact details, reinforces the above bad faith finding.

Thus, the overall evidence shows that Respondent registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s name and mark, which denotes bad faith.

In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <todaysanofi.com> be transferred to Complainant.

/Gerardo Saavedra/
Gerardo Saavedra
Sole Panelist

Date: January 6, 2023

6 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “registration of a domain name in order to utilize

another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith.”