Sanofi v Islam Apon

WIPO Case No. D2025-2070

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Islam Apon

Case No. D2025-2070

1. The Parties

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

The Respondent is Islam Apon, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <sanofi-company.com> is registered with GMO Internet, Inc. d/b/a

Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2025.

On May 26, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 (Whois Privacy Protection Service by onamae.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 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 amendments to the Complaint on June 10,

2025, and June 11, 2025.

The Center verified that the Complaint together with the amendments 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 June 12, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was July 2, 2025. The Respondent did not submit any formal response.
The Respondent sent the email communication to the Center on July 8, 2025.

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The Center appointed Peter Burgstaller as the sole panelist in this matter on July 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 one of the worldwide leading French multinational pharmaceutical companies headquartered in Paris (Annex 5 - 7 to the Complaint). It owns numerous trademark registrations consisting of the word SANOFI around the world, inter alia

- French Trademark (word), Registration No. 1482708, registered August 11, 1988;

- European Union Trademark (word), Registration No. 004182325, registered February 9, 2006;

- European Union Trademark (word), Registration No. 010167351, registered January 7, 2012;

- International Trademark (word), Registration No. 1092811, registered on August 11, 2011, designating

among others Australia, Cuba, Georgia, Iceland, Japan, Korea (Republic of), Russian Federation, and
Ukraine;

- United States of America Trademark (word), Registration No 85396658, registered July 24, 2012 (Annex 8 to the Complaint).

Moreover, the Complainant is the owner of several domain name registrations containing the mark SANOFI,
e.g. <sanofi.com>, <sanofi.eu>, <sanofi.us> <sanofi.fr>, <sanofi.net>, <sanofi.tel>, <sanofi.mobi> or
<sanofi.ca>, all of them were registered long before the registration of the disputed domain name (Annex 9
to the Complaint); it uses the domain name <sanofi.com> to host its primary website (Annex 6 to the

Complaint).

The disputed domain name was registered on January 15, 2025 (Annex 1 to the Complaint). At the time of
filing of the Complaint, the disputed domain name resolved to a website with no content (Annex 11 to the

Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for cancellation of the disputed domain name.

Notably, the Complainant contends that the SANOFI trademark is highly distinctive and well known around the world; it notes that the disputed domain name contains the SANOFI trademark in its entirety and simply

adding a hyphen and the term “company” which cannot eliminate the confusing similarity between the

Complainant’s trademark and the disputed domain name.

The Complainant submits that especially because of the fame of the Complainant and its trademark it is

inconceivable that the Respondent would not have been aware of the Complainant’s trademark when

registering the disputed domain name, or that there would be any legitimate use for the disputed domain
name. Further, the Complainant has never assigned, granted, licensed, sold, transferred or in any way
authorized the Respondent to use the SANOFI trademark in any manner.

Finally, the Complainant notes that the disputed domain name does not resolve to an active website and is therefore not used for a bona fide offering of goods or services. Moreover, the passive holding of a domain name may amount to bad faith.

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B. Respondent

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

However, on July 8, 2025 the Respondent sent an email communication to the Center asserting that it is a

domain reseller provider and “not the direct owner” of the disputed domain name; the Complaint should

therefore be filed against a third party, the direct owner of the disputed domain name.

6. Procedural Issue – Respondent’s Identity

The Respondent sent the email communication asserting that it is not the direct owner of the disputed domain name and therefore the administrative proceedings should be brought against the beneficial holder.

On June 5, 2025, the Registrar transmitted by email to the Center its verification that “Islam Apon” is the

registrant of the disputed domain name.

Under paragraph 1 of the Rules, the “Respondent” means “the holder of a domain-name registration against which a complaint is initiated”.

Since “Islam Apon” in this case is the registrant of the disputed domain name and it did not present any

evidence on the existence and nature of any relationship between the listed registrant and the beneficial
holder (who has also not come forward in these proceedings) which would allow the Panel to consider that

the beneficial holder should be treated as a (further) Respondent, the Panel decides to continue with these

proceedings against “Islam Apon”, as the Registrar-confirmed Respondent.

7. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainants must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii)       the Respondent has no rights or legitimate interests with respect to 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 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.

Based on the available record, the Panel finds the Complainant has shown rights in respect of the mark

SANOFI for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

In the present case, the disputed domain name is confusingly similar to the mark SANOFI in which the

Complainant has rights since it incorporates the entirety of the mark and only adds the term “company”

together with a hyphen between the SANOFI mark and “company”.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms does not prevent a finding of confusing similarity under the first element of the Policy. This is the case at present. WIPO Overview 3.0, section 1.8.

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Finally, it has also long been held that generic Top-Level Domains (“gTLDs”) (in this case “.com”)

are generally disregarded when evaluating the confusing similarity of a disputed domain name.

WIPO Overview 3.0, section 1.11.1.

Based on the available record, 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 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 Complainant focuses on the fact that its trademark is highly distinctive and well known and provides suitable evidence of its reputation, adding that it is inconceivable that the Respondent would not have been aware of this when registering the disputed domain name. The Complainant also notes that the disputed domain name is not being used for a bona fide offering of goods or services.

The nature of the disputed domain name, comprising the Complainant’s distinctive mark together with the descriptive term “company” cannot be considered fair use as these, in the Panel’s view, signal the

Respondent’s intention to confuse users seeking or expecting the Complainant and its company.

The Respondent did not reply to the Complainant’s contentions and hence has not rebutted the

Complainant’s prima facie showing.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

As stated in paragraph 4(a)(iii) pf the Policy, the Complainant must show registration and use of the disputed domain name in bad faith. These are concurrent requirements.

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 the Complainant has rights and is the owner of the distinctive and globally well-known mark SANOFI, which is registered and used in many jurisdictions around the world long before the registration of the disputed domain name. Moreover, the Complainant registered and is using the numerous domain names containing the mark SANOFI, especially <sanofi.com> to host its company website.

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It is inconceivable for this Panel that the Respondent registered the disputed domain name without

knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is

supported by the fact that the disputed domain name incorporates the Complainant’s distinctive trademark

SANOFI together with the term “company” which even strengthens the impression that the Respondent must

have been aware of the Complainant, its mark and company when registering the disputed domain name.

Finally, a simple online search for “sanofi” would have shown the Complainant and its marks.

WIPO Overview 3.0, section 3.2.3.

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the
Respondent.

Although there is no evidence that the disputed domain name is being actively used or resolved to a website with substantive content, UDRP panels have found that the non-use of a domain name (including a blank or

“coming soon” or “parking” page) would not prevent a finding of bad faith under the doctrine of passive

holding.

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 these proceedings. 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). WIPO Overview 3.0, section 3.3.

The distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed

domain name support the finding 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.

Based on the available record, the Panel finds that the third element of the Policy has been established.

8. 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-company.com> be cancelled.

/Peter Burgstaller/

Peter Burgstaller

Sole Panelist
Date: July 23, 2025