Sanofi v Mannie Catinga, San Ofi Inc

WIPO Case No. D2025-0821

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Mannie Catinga, San Ofi Inc

Case No. D2025-0821

1. The Parties

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

The Respondent is Mannie Catinga, San Ofi Inc, Netherlands (Kingdom of the).

2. The Domain Name and Registrar

The disputed domain name <sanofi-health.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27,
2025. On February 27, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On February 27, 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 (Withheld for Privacy Purposes) and contact
information in the Complaint. The Center sent an email communication to the Complainant on February 28,
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 7, 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 March 3, 2025.

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The Center appointed Torsten Bettinger 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 France, ranking 4th world’s largest multinational pharmaceutical company by prescription sales. The Complainant is present in more than 100 countries on all five continents and employs over 100,000 people. The Complainant engages

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

The Complainant has submitted evidence that it is the owner of a large number of trademark registrations, including the following:

- SANOFI, French trademark with registration number 1482708, registered since August 11, 1988;

- SANOFI, International trademark with registration number 591490, registered on September 25, 1992;

- SANOFI, United Kingdom trademark with registration number UK00001483425, registered on January

15,1993;

-	SANOFI, European Union trademark with registration number 000596023, registered on February 1,
1999;
-	SANOFI, United States of America trademark with registration number 85396658, registered on July

24, 2012.

The Respondent registered the disputed domain name <sanofi-health.net> on November 16, 2024.

The disputed domain name resolves to an inactive 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.

With regard to the requirement of “identity or confusing similarity between the trademark and the domain name” pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that:

- the disputed domain name reproduces the SANOFI trademark, which does not have any particular

meaning in itself and is therefore highly distinctive;

- the addition of the generic and descriptive term “health” remains insufficient to avoid confusing

similarity and will merely suggests to Internet users that the disputed domain name leads to a website that

sells the Complainant’s goods to enhance health;

- it is well established that the generic Top-Level Domain designation used as part of a domain name

should be disregarded as it does not serve to distinguish the domain names.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the

Complainant submits that:

- the Respondent does not have any rights or legitimate interests regarding the disputed domain name;

- the word “sanofi” has no particular meaning and is therefore highly distinctive;

- the Respondent has neither prior rights nor legitimate interests to justify the use of the already well- known and worldwide trademarks and domain names of the Complainant;

- the Respondent is not making a legitimate noncommercial or fair use of the disptued domain name nor

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is it 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 on the Respondent in accordance with paragraph 4(c) of the Policy.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the
Complainant argues that:

- it is obvious that the Registrant does not have any legitimate interests in using the disputed domain names since the name of the Respondent is “Mannie Catinga”;

- the word “sanofi” has no particular meaning and is therefore highly distinctive;

- it is inconceivable that the Respondent registered the disputed domain name unaware of the

Complainant’s rights and reputation, making unfair benefit of the Complainant’s trademarks’ reputation;

- 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 that in order to establish
that the respondent is using a domain name in bad faith it is not necessary to find that it had undertaken any

positive action in relation to the domain name;

- in cases in which the well-known status of a complainant’s trademarks is well-established, numerous
panel decisions constantly acknowledge that this consideration is, in itself, indicative of bad faith registration

and use.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

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

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 is reproduced within the disputed domain name. Accordingly, the mark is recognizable in the disputed domain name. Although the addition of the descriptive term “health” may bear on the assessment of the second and third elements, the Panel finds the addition of this additional 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.

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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 material in the Complaint and its annexes, it is clear that the Complainant’s trademark registrations predate the Respondent’s registration of the disputed domain name. The Complainant has not licensed, approved, or in any way consented to the Respondent’s registration and use of the trademark in

the disputed domain name.

The disputed domain name does not resolve to an active website. There is no evidence in this case indicating that the Respondent has used or made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. Although given the opportunity, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name.

Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel finds that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.

The Respondent has not submitted any evidence indicating that it is the owner of any trademark or that it is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make 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.

The Panel therefore 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, the Panel notes that the Complainant has provided evidence of multiple trademark registrations for the SANOFI mark that predate the registration of the disputed domain name.

The Panel also notes that the Complainant’s trademark is considered well known according to a number of UDRP decisions cited by the Complainant. This and the fact that the disputed domain name comprises the Complainant’s trademark in its entirety with the addition of the descriptive term “health” closely related to the Complainant’s area of business make it inconceivable that that the Respondent coincidentally selected the

disputed domain name without any knowledge of the Complainant and its trademarks. Hence, the Panel
concludes that the Respondent knew or should have known the existence of the Complainant’s trademarks

when registering the disputed domain name.

As it has been established “the mere registration of a domain name that is identical or confusingly similar
(particularly domain names […] 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”. WIPO Overview 3.0.,
section 3.1.4 and Carrefour SA v. Domain Administrator, See PrivacyGuardian.org / Zhiqiang Chen, WIPO
Case No. D2022-1851.

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The fact that there is no evidence that the disputed domain name has been actively used does not prevent a finding of bad faith use.

Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the relevant in applying the passive holding doctrine include:
Respondent, it is by now well accepted that the passive holding of a domain name, in certain circumstances,
can constitute bad faith use under the Policy. (See, e.g., Teachers Insurance and Annuity Association of
America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Telstra Corporation Limited v.

Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”); see also WIPO Overview 3.0, section 3.3.)

(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
(iv) the implausibility of any good faith use to which the domain name may be put.

The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.

As noted above, based on the record in this proceeding, the Panel is satisfied that the Complainant’s SANOFI mark is well known in many countries. The Respondent not only includes the Complainant’s mark in the disputed domain name but also adds a term that is closely related to the Complainant’s area of business, which may mislead Internet uses into believing that the disputed domain name is somehow connected to the Complainant. Furthermore, the Respondent has not replied to the Complaint nor provided any evidence of actual or contemplated good faith use of the disputed domain name.

The Panel therefore finds that the circumstances, as described above, show that the Respondent’s registration and passive holding of the disputed domain name equals a bad faith registration and use of the disputed domain name and therefore the Complainant has also 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 <sanofi-health.net> be cancelled.

/Torsten Bettinger/
Torsten Bettinger
Sole Panelist
Date: April 28, 2025