Sanofi v Josey Mathew

WIPO Case No. D2023-3913

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Josey Mathew

Case No. D2023-3913

1. The Parties

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

The Respondent is Josey Mathew, India.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2023. On September 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2023, 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 service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2023, 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 September 22, 2023.

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 September 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2023.

page 2

The Center appointed Andrea Mondini as the sole panelist in this matter on October 25, 2023. 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, SANOFI, is s a French multinational pharmaceutical company headquartered in Paris
(France) with operations in more than 100 countries on all 5 continents employing 100,000 people.

The Complainant owns numerous trademarks registrations for SANOFI, in many jurisdictions throughout the world, including:

- French Trademark Registration No. 3831592, SANOFI (stylized), registered onMay 16, 2011;

- French Trademark Registration No. 96655339, SANOFI, filed and registered on December 11, 1996;

- European Union Trademark Registrations No. 010167351, 004182325 and 000596023, SANOFI,
registered on January 7, 2012, February 9, 2006, and February 1, 1999, respectively;

- International Trademark Registrations No. 1092811 and 1094854, SANOFI, registered both on August 11, 2011, and designating among others Australia, Georgia, Japan, Republic of Korea, Cuba, Russian Federation, Ukraine, and Iceland.

The Complainant also holds several domain names, including the domain name <sanofi.com>.

The disputed domain name was registered on September 7, 2023.

The record shows that the disputed domain name resolves to a parking site and has been used for a pay- per-click advertising site with links.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain name is identical or confusingly similar to the SANOFI trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the geographic term “bharat”, which is the name for India in various Indian languages, is not sufficient to avoid confusing similarity. It is also well established that the generic Top-Level Domain (“gTLD”), such as “.com,” in a disputed domain name is disregarded.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The SANOFI trademark is associated with the Complainant, since the SANOFI trademark has been extensively used to identify the Complainant and its products. The Respondent has not been authorized by the Complainant to use this trademark, is not commonly known by the disputed domain name, and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods and services.

The disputed domain name was registered in bad faith because it is obvious that the Respondent was aware of both the Complainant and its famous SANOFI trademark at the time it registered the disputed domain name.

page 3

The disputed domain name was used in bad faith because it resolves to a parking page with pay-per-click advertising. The Respondent has therefore used the disputed domain name in bad faith to intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion as to the source, sponsorship or affiliation of its website in the sense of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i)      the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;

(ii)     the 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

The Panel is satisfied that the Complainant has trademark rights by virtue of the registrations it owns for its
SANOFI trademark.

The Panel notes that the disputed domain name incorporates the SANOFI trademark in its entirety. The addition of the term “bharat”, which is the name for India in various Indian languages, does not prevent a finding of confusing similarity under the Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views

on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The addition of the gTLD “.com” in the disputed domain name is a standard registration requirement and as
such is disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). See

WIPO Overview 3.0, section 1.11.1.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the

Complainant’s SANOFI trademarks.

The first element of paragraph 4(a) of the Policy has been met.

B. Rights or Legitimate Interests

The Complainant states that the Respondent is not commonly known by the dispute domain name, that it
has not authorized the Respondent to use the SANOFI trademark and that before notice of the dispute, there
is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in

good faith.

The Panel does not see any contrary evidence from the record.

In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. For its part, the Respondent did not provide a Response and thus failed to provide any explanations as to any rights or legitimate interests.

Furthermore, the nature of the disputed domain name, comprising the Complainant’s trademark and the geographic term “bharat”, which is the name for India in various Indian, carries a risk of implied affiliation.

See WIPO Overview 3.0, section 2.5.1.

page 4

Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

The Complainant has shown to the satisfaction of the Panel that its SANOFI trademarks is well known.

In the view of the Panel, noting that the Complainant’s trademark predates the registration of the disputed domain name and the nature of the disputed domain name, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well-known trademark.

In the circumstances of this case, this is evidence of registration in bad faith.

The disputed domain name resolves to a parking website, which has been used for a pay-per-click its website in the sense of paragraph 4(b)(iv) of the Policy.

advertising site with links and likely generates income for the Respondent. The Panel thus finds that by
using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain,

The Panel thus finds that the disputed domain name was registered and is being used in bad faith.

The third element of paragraph 4(a) of the Policy has been met.

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, <sanofibharat.com>, be cancelled.

/Andrea Mondini/
Andrea Mondini
Sole Panelist
Date: November 8, 2023