Sanofi v Sandra mash

WIPO Case No. D2022-3367

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Sandra mash

Case No. D2022-3367

1. The Parties

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

The Respondent is Sandra mash, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <sanofi-fr.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2022. On September 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2022, 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 September 12, 2022, 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 12, 2022.

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 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2022.

The Center appointed Erica Aoki as the sole panelist in this matter on October 26, 2022. 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.

page 2

4. Factual Background

The Complainant is a French multinational pharmaceutical company settled in more than 100 countries on all 5 continents employing 100,000 people, with consolidated net sales of EUR 37.7 billion in 2021, EUR 36.04 billion in 2020, EUR 34.46 billion in 2018, EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015 and EUR 31.38 billion in 2014.

The Complainant is ranking 4th world’s largest multinational pharmaceutical company by prescription sales and engages in research and development, manufacturing, and marketing of pharmaceutical products for sale, mainly in the prescription market and also develops over-the-counter medication.

The Complainant owns several trademark SANOFI for over 40 years and owns domain names, registered all over the world containing the distinctive word “SANOFI”.

Among others, the Complainant owns the International trademark SANOFI, registration no 1092811, and registered on August 11, 2011.

The disputed domain name <sanofi-fr.com> was registered on July 29, 2022, and resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant is a French multinational pharmaceutical company headquartered in Paris (France), ranking 4th world’s largest multinational pharmaceutical company by prescription sales. 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 under the trademark and trade name SANOFI. It has used its trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI trademarks in countries all over the world, including the United States.

The Complainant is settled in more than 100 countries on all 5 continents employing 100,000 people and owns a large portfolio of high-growth drugs. With an R&D investment of EUR 5.9 billion in 2018, SANOFI’s Research and Development portfolio includes 83 projects in clinical development, 35 of which are at advanced stages. Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in 7 major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines.

The Complainant owns trademarks and domain names, registered all over the world and containing the distinctive word “SANOFI” prior to the registration of the disputed domain name.

The Complainant contends that the disputed domain name is confusingly similar as it contains the trademark SANOFI in its entirety, combined with the additional geographical acronym “fr”, referring to “France”, which is highly descriptive considering that the Complainant is a French company, and that the Respondent has no

rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name

was registered and is being used in bad faith.

B. Respondent

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

page 3

6. Discussion and Findings

The Complainant is required to establish the requirements specified under paragraph 4(a) of the Policy:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect

of which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the facts in the present proceeding, this Panel finds that the disputed domain name identically
adopts the Complainant’s SANOFI trademarks in which the Complainant has rights under Policy, paragraph
4(a)(i). The Complainant has established its rights in the SANOFI trademarks through registration and use.

WIPO Overview 3.0”)).

The Panel further finds that there is no doubt that the disputed domain name is confusingly similar to the with the additional geographical acronym “fr”, referring to “France”, which does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“

The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name.

There is no evidence on record that the Respondent is or was commonly known by the disputed domain name as an individual, business, or other organization. See section 2.3 of the WIPO Overview 3.0.

There is no evidence on record that 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 Complainant’s trademark.

Paragraph 4(c) of the Policy indicates that a registrant may have rights or legitimate interests in a domain name if it uses the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. In this regard, the Respondent is in no way connected with the Complainant and has not received any authorization to use any of the Complainant’s trademarks in a domain name.

Furthermore, where a disputed domain name consists of a trademark plus a geographical term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel therefore finds that the Complainant has established an unrebutted prima facie case, i.e. that the
Respondent has no rights or legitimate interests in the disputed domain name, under Policy paragraph

4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent has used the disputed domain name to simply refer to an inactive webpage. The fact that the disputed domain name currently

page 4

resolves to an inactive page does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview
3.0.

The Complainant’s trademark was registered long before the registration of the disputed domain name and it is evident from the composition of the disputed domain name and the reputation of the Complainant’s SANOFI trademark that the Respondent knew of the Complainant’s SANOFI trademark when registering the disputed domain name, indicating that such registration was made in bad faith.

Moreover, the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use of the disputed domain name. Therefore, based on the evidence presented, the Panel also finds that the Respondent’s holding of the disputed domain name constitutes bad faith under the Policy.

Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith under Policy, paragraph 4(a)(iii).

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-fr.com> be cancelled.

/Erica Aoki/
Erica Aoki
Sole Panelist
Date: November 9, 2022