Sanofi v Paulo Victor Meneghel da Silva

WIPO Case No. D2024-2265

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Paulo Victor Meneghel da Silva

Case No. D2024-2265

1. The Parties

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

The Respondent is Paulo Victor Meneghel da Silva, Brazil.

2. The Domain Name and Registrar

The disputed domain name <sanofiproduct.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2024. On June 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 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 (Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 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 June 10, 2024. Proceedings were suspended on June 10, 2024, on request of the Complainant, and reinstituted on July 4, 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 July 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2024. The Respondent sent email communications to the Center on June 7, July 22, July 24 and July 26, 2024. After the notification of panel appointment, it was received another communication from Respondent, on August 13, 2024.

page 2

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on August 13, compliance with the Rules, paragraph 7.

2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of
4. Factual Background

The Complainant is Sanofi, a global healthcare company, headquartered in Paris, France. It is one of the largest multinational companies in its sector and it operates in over 100 countries, including Brazil.

Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market.

The Complainant’s main domain name is <sanofi.com>, and it owns many other domain names with different

Top-Level Domains (“TLDs”).

The Complainant is the owner, amongst others, of the following SANOFI trademark registrations:

- French trademark number 92412574, registered on March 26, 1992, in class 5 concerning
pharmaceutical products;

- European Union trademark number 010167351, filed on August 2, 2011, and registered on January 7, 2012, in classes 3 and 5, notably concerning pharmaceutical products;

- International trademark number 591490, registered on September 25, 1992, in class 5 concerning

pharmaceutical products;

The disputed domain name <sanofiproduct.com> was registered on April 27, 2024. At the present date, the disputed domain name resolves to an inactive website. Previously , it directed Internet users to a website selling skincare products.

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 disputed domain name.

Notably, the Complainant contends that:

1. SANOFI is a major player on the worldwide pharmaceutical market, which has used its trade name for

over 40 years and invested substantial financial resources to advertise and promote the company and its
SANOFI-trademarks in countries all over the world;

2.        it is the owner, amongst others, of the trademark SANOFI;

3.        the disputed domain name <sanofiproduct.com> reproduces the SANOFI trademark, therefore it is

confusingly similar to the trademarks over which the Complainant has rights;

4.        the addition of the descriptive term “product” does not prevent the likelihood of confusion but

emphasizes it;

5. the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or

to register any domain name including the above-mentioned trademarks and there is no relationship
whatsoever between the Parties;

page 3

6.        the Respondent has neither prior right nor legitimate interest to justify the use of the already

well-known and worldwide trademarks and domain names of the Complainant;
7. the Respondent registered the disputed domain name using “Domain Admin” in order to keep the true identity of the registrant secret;

8.        the disputed domain name leads to a commercial website dealing with and selling pharmaceutical

products, Respondent is using the Complainant’s trademarks and domain names for its own use and
incorporated them into the disputed domain name;

9.        the Respondent has intentionally attempted to attract Internet users by creating a likelihood of

confusion with the Complainant’s mark and company name as to the source, sponsorship, affiliation, or
endorsement of the Respondent’s websites or other location;

10. the disputed domain name <sanofiproduct.com> has been both registered and used intentionally in bad faith without any rights or legitimate interests by the Respondent.

B. Respondent

The Respondent sent five e-mail communications, one of them beyond the deadline. It contended that:

1.        it claimed the disputed domain name cancelation when notified by the Center;

2.        it is “not interested in the domain”;

3.        it “didn’t know about the brand ‘sanofiproduct’”.

The Respondent failed to respond to the Standard Settlement Form.

6. Discussion and Findings

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 SANOFI is reproduced within the disputed domain name. Accordingly, the disputed 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 term “product” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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

page 4

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 failed to rebut 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.

Additionally, the Respondent clearly stated it requested the cancelation of the disputed domain name as soon as he was notified by the Center, and it did not have interest in 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.

In the present case, as held by previous panels, the Panel notes that the Complainant operates in a specific sector, holds a very well reputed mark and is highly distinctive in its market, including in Brazil. The Complainant is the owner of some of the most popular medicines in this country. In these circumstances, it is extremely unlikely that the Respondent was not aware of the trademark SANOFI and of the Complainant’s rights in the SANOFI trademarks by the time the disputed domain name was registered, suggesting the disputed domain name has been registered in bad faith.

The disputed domain name redirected Internet users to a website selling skincare products. This is undoubtedly related to the Complainant’s operating market. The Panel finds that this circumstances highly suggest the intention to attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant's mark. Such actions constitute evidence of use in bad faith under paragraph 4(b)(iv) of 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 <sanofiproduct.com> be transferred to the Complainant.

/Gonçalo M. C. Da Cunha Ferreira/
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: August 27, 2024