Sanofi v Privacy Department, IceNetworks Ltd

WIPO Case No. D2024-3656

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Privacy Department, IceNetworks Ltd.

Case No. D2024-3656

1. The Parties

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

Respondent is Privacy Department, IceNetworks Ltd., Iceland.

2. The Domain Name and Registrar

The disputed domain name <online-stilnox.com> (the “Domain Name”) is registered with Internet Domain

Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10,

2024. On September 10, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the Domain Name. On September 11, 2024, the Registrar transmitted by

email to the Center its verification response disclosing registrant and contact information for the Domain

Name which differed from the named Respondent (Domain Admin, Whois Privacy Corp.) and contact

information in the Complaint. The Center sent an email communication to Complainant on September 19,

2024, 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 September

24, 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 Respondent of the Complaint,

and the proceedings commenced on September 25, 2024. In accordance with the Rules, paragraph 5, the

due date for Response was October 15, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on October 20, 2024.
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The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 23, 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 7.

4. Factual Background

Complainant, a French pharmaceutical company, conducts research and development, manufacturing and

marketing of pharmaceutical products, for sale, in the prescription market, and over-the-counter. It has

consolidated net sales of 43 billion Euros in 2022, 37.7 billion Euros in 2021, 36.04 billion Euros in 2020,

34.46 billion Euros in 2018, 35.05 billion Euros in 2017, 33.82 billion Euros in 2016, 34.06 billion Euros in

2015 and 31.38 billion Euros in 2014. Complainant was formed as Sanofi-Aventis in 2004 by the merger of

Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. Complainant is a multinational

company with operations in more than 100 countries over 5 continents, employing 100,000 people and has a

large portfolio of high-growth drugs, and a Research and Development investment of 6,7 billion Euros in

2022.

In the field of treatment of the central nervous system, Complainant developed and sells, throughout the

world a drug for treating insomnia under the trademark STILNOX. It owns numerous registered trademarks

throughout the world for the STILNOX mark, including:

− Mexican registered trademark number 546603 for the STILNOX word mark, registered on April 24, 1997;

− International registered trademark number 485741 for the STILNOX word mark, registered on

December 21, 1984; and

− Australian registered trademark number 434381 for the STILNOX word mark, registered on

October 9, 1985.

Complainant also owns several domain names, including:

− <stilnox.net> registered on November 8, 2000;

− <stilnox.com> registered on December 2, 1998;

− <stilnox.org> registered on November 8, 2000;

− <stilnox.info> registered on August 24, 2001; and

− <stilnox.it> registered on April 3, 2003.

The Domain Name was registered on January 12, 2024, and resolves to an online commercial website

featuring the STILNOX trademark, with commercial links which direct Internet users to a website purportedly

offering pharmaceutical goods, including Complainant’s products, at a discount.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks;

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

and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for STILNOX and that Respondent

registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide

and well-known STILNOX products and services.

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Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use

the Domain Name, which includes Complainant’s trademark, and that Respondent has no rights or legitimate

interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent

has acted in bad faith in registering and setting up the Domain Name, when Respondent clearly knew of

Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

Complainant has rights;

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

(iii)      the Domain Name was registered and are being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself

mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an

admission that the complainant’s claims are true.

Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains

with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the

evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite

rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1.

Complainant provided evidence of its rights in the STILNOX trademarks, as noted above. Complainant has

also submitted evidence, which supports that the STILNOX trademarks are widely known and a source

identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite

rights in the STILNOX trademarks.

With Complainant’s rights in the STILNOX trademarks established, the remaining question under the first

element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in

which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark.

See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case

No. D2010-0842.

Here, the Domain Name is confusingly similar to Complainant’s STILNOX trademarks. The use of

Complainant’s trademark in this entirety, with the addition of the term “online” followed by the addition of a

hyphen “-” before Complainant’s STILNOX trademarks, does not prevent a finding of confusing similarity

between the Domain Name and the trademark as it is recognizable in the Domain Name.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

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B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent

possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad

v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a

prima facie showing, the burden of production shifts to the respondent, though the burden of proof always

remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or

legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its

STILNOX trademarks, and does not have any rights or legitimate interests in the Domain Name.

Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or

licensed to use the STILNOX trademarks or to seek registration of any domain name incorporating the

trademarks. Respondent is also not known to be associated with the STILNOX trademarks, and there is no

evidence showing that Respondent has been commonly known by the Domain Name.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or

services or a legitimate noncommercial or fair use. Rather, it reverts to a website that prominently displayed

Complainant’s SANOFI trademark, with links to a competing website purportedly offering pharmaceutical

products. Such use does not constitute a bona fide offering of goods or services or a legitimate

noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or

legitimate interests in the Domain Name.

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any

rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence

of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does

not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under

paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain

Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration

and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the

purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is

the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from

reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet

users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or

service on your website or location.”

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The Panel finds that Complainant has provided ample evidence to show that registration and use of the

STILNOX trademarks predate the registration of the Domain Name. Complainant is also well established

and known. Indeed, the record shows that Complainant’s STILNOX trademarks and related products and

services are widely known and recognized. Moreover, the addition of the term “online” followed by a hyphen

“-” before Complainant’s trademark in the Domain Name suggests activities potentially related to engaging in

Complainant’s industry and activities online. Therefore, Respondent was likely aware of the STILNOX

trademarks when he registered the Domain Name, or knew or should have known that the Domain Name

was confusingly similar to Complainant’s trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT

Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of

registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO

Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs

Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v.

Serena, Axel, WIPO Case No. D2006-0007.

Further, the registration of the Domain Name incorporating Complainant’s STILNOX trademark in its entirety

suggests Respondent’s actual knowledge of Complainant’s rights in the STILNOX trademarks at the time of

registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the

Domain Name. Further, UDRP 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. See section 3.1.4 of the WIPO Overview 3.0. Here, the addition of the term

“online-” to Complainant’s trademark in the Domain Name suggests activities potentially related to engaging

in Complainant’s industry and activities.

Respondent registered and is using the Domain Name to confuse and mislead Internet users looking for

well-known STILNOX products and services of Complainant or authorized partners of Complainant. The use

of the STILNOX trademarks in the Domain Name is intended to capture Internet traffic from Internet users

who are looking for Complainant’s products and services. The use of the Domain Name to divert users to

the webpage with links to a website purportedly offering pharmaceutical products, for commercial gain, by

creating a likelihood of confusion with Complainant’s mark is in bad faith. Such activities may result in

tarnishing Complainant’s reputation.

Finally, the Panel also notes the reputation of the STILNOX trademarks, and the failure of Respondent to

submit a response to the Complaint or to provide any evidence of actual or contemplated good-faith use.

Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and

Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name <online-stilnox.com> be transferred to Complainant.

/Kimberley Chen Nobles/

Kimberley Chen Nobles

Sole Panelist

Date: November 6, 2024