Sanofi v Robert Lacere

WIPO Case No. D2025-0846

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Robert Lacere

Case No. D2025-0846

1. The Parties

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

The Respondent is Robert Lacere, France.

2. The Domain Name and Registrar

The disputed domain name <sanofj.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 March 3, 2025. On March 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2025, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 5, 2025, 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 March 12, 2025.

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 March 13, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 2, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 3, 2025.

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The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on April 9, 2025. 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

The Complainant is a French multinational pharmaceutical company headquartered in Paris, France, ranking
4th world’s largest multinational pharmaceutical company by prescription sales.

It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication.

The Complainant is a full member of the European Federation of Pharmaceutical Industries and Associations
(EFPIA). Historically, the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and
Sanofi-Synthélabo and changed its name to Sanofi in May 2011.

The Complainant is a multinational company settled in more than 100 countries on all 5 continents employing around 100,000 people.

The Complainant is a major player in the worldwide pharmaceutical market.

The Complainant is the owner of the following trademarks:

- French semi-figurative trademark SANOFI number 3831592, registered on May 16, 2011 in classes 1; 3; 5; 9; 10; 35; 38 ; 40; 41; 42 and 44 notably concerning pharmaceutical products;

- French trademark SANOFI number 96655339, registered on December 11, 1996 in classes 1; 3; 5; 9; 10; 35; 40; 42 notably concerning pharmaceutical products;

- European Union trademark SANOFI number 010167351 filed on August 2, 2011, registered on

January 7, 2012 in classes 3 and 5, notably concerning pharmaceutical products;

- European Union trademark SANOFI number 000596023, filed on July 15, 1997, registered on

February 1, 1999 in classes 3; 5 notably concerning pharmaceutical products.

The Complainant relies as well on domain names consisting of the SANOFI trademark, for example,

<sanofi.com>.

The disputed domain name was registered on December 3, 2024. The disclosed data provided by the

Registrar shows that it was registered in the name of an individual domiciled in France.

This disputed domain name does not resolve to an active 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 disputed domain name.

Notably, the Complainant contends that the disputed domain name reproduces the SANOFI trademark, which is highly distinctive.

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The SANOFI trademark has been used for over 40 years and the Complainant has invested substantial resources over the years to advertise and promote the company and its SANOFI trademark all over the world.

The imitation of the SANOFI trademark as the attack and unique part of the disputed domain name is an intentional misspelling of the trademark, replacing the final letter “I” by a “J”, which is visually close to the letter “I”.

This is indicative of the practice known as typosquatting.

The disputed domain name is therefore confusingly similar to the SANOFI well-known trademark.

On the absence of rights or legitimate interests, the Complainant contends that:

The Respondent does not have any legitimate interest to justify the use of the well-known SANOFI trademark.

The Respondent has no prior rights and/or legitimate interests to justify the use of the well-known and worldwide protected SANOFI trademark.

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.

The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is he using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy given that the disputed

domain name is not used legitimately by the Respondent. Indeed, the website connected to the disputed

domain name simply resolves to an inactive page.

On the bad faith registration and use:

The Complainant contends that panel decisions regularly recognize opportunistic bad faith in cases in which the contested domain name appears confusingly similar to a Complainant’s well-known trademarks.

It relies on prior UDRP cases concerning the SANOFI trademark and deciding on bad faith.

Registering the disputed domain name without indicating one’s identity should serve as an indicator of bad faith.

It should be considered that, given the famous and distinctive nature of the mark 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 he registered the disputed domain name. This suggests that the Respondent acted with

opportunistic bad faith in registering the domain name in order to make illegitimate use of it.

The disputed domain name has been obviously registered for the purpose of creating a likelihood of confusion, or at least an impression of association between the disputed domain name and the SANOFI trademark.

The Complainant is one of the world leaders in the pharmaceutical industry, ranking number one in Europe and number four in the world.

The Respondent was therefore undoubtedly aware of the risk of confusion between the disputed domain name and the SANOFI trademark at the time of the registration.

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This suggests that the respondent acted with opportunistic bad faith in registering the disputed domain name, in order to make an illegitimate use of it.

It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith.

The Complainant relies on the leading case in this regard, which is Telstra Corporative Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which the panelist found that in order to establish that the Respondent was using a domain name in bad faith it was not necessary to find that he had undertaken any

positive action in relation to the domain name.

The lack of apparent genuine use of the disputed domain name particularly close to those used by the led to believe that Complainant is not on the Internet or worse, that Complainant is out of business.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

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 SANOFI trademark is recognizable within the disputed domain name. The only difference is the final letter, the “I” being replaced by “J”. These letters are visually and phonetically very close. This typo is meant to confuse users seeking or expecting the Complainant. This is a typical typosquatting practice.

The Panel finds the disputed domain name consists of an obvious misspelling of the SANOFI trademark. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use,

the disputed domain name or a name corresponding to the disputed domain name in connection with a bona
fide offering of goods or services; or

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(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii)      the Respondent is making a legitimate noncommercial or fair use of the disputed domain name,

without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service
mark at issue.

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.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of the disputed domain name.

It provides that:

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered, or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the

domain name; or

(ii) the respondent has 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 the respondent has engaged

in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

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In the present case, the Panel is of the opinion that the Respondent, who is an individual domiciled in
France, was well-aware of the Complainant’s rights on the well-known SANOFI trademark when it decided to
register the disputed domain name, which amounts to registration in bad faith. WIPO Overview 3.0, section
3.2.2.

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 disputed domain resolves to the landing page of the registrar, informing the Internet users that the disputed domain name is using its name servers.

It cannot be regarded as an active website.

The current non-use of the disputed domain name does not prevent a finding of bad faith use.

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 finds the non-use of the disputed domain name does not prevent a finding of bad faith in the

circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a
response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s
concealing its identity or use of false contact details (noted to be in breach of its registration agreement) and
(iv) the implausibility of any good faith use to which the domain name may be put. In this case, the Panel
notes the distinctiveness and the reputation of the Complainant’s trademark, the composition of the disputed
domain name consisting of a typosquatted version of the Complainant’s mark, and the unlikeliness of any
good faith use of the disputed domain name by the Respondent, 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.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds the third element of the Policy has been established.

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 <sanofj.com> be transferred to the Complainant.

/Marie-Emmanuelle Haas/
Marie-Emmanuelle Haas
Sole Panelist
Date: April 25, 2025