Sanofi v Sanjay Gosalia

WIPO Case No. DCC2025-0005

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Sanjay Gosalia

Case No. DCC2025-0005

1. The Parties

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

The Respondent is Sanjay Gosalia, France.

2. The Domain Name and Registrar

The disputed domain name <sanofl.cc> 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 4, 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 6, 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 13, 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 14, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 7, 2025.

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The Center appointed Elise Dufour as the sole panelist in this matter on April 14, 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

With consolidated net sales of EUR 43 billion in 2022, SANOFI is a French multinational pharmaceutical company headquartered in Paris, France, ranking 4th world’s largest multinational pharmaceutical company by prescription sales, operating in over 100 countries, across all five continents, employing 100,000 people.

SANOFI 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 owns numerous trademarks, including the following ones:

- French trademark SANOFI, registered on No. 1482708 on August 11, 1988;
- French trademark SANOFI, registered under No. 96655339 on December 11, 1996;
- European Union trademark SANOFI, registered under No. 000596023 on February 1, 1999;
- European Union trademark SANOFI, registered under No. 004182325 on February 9, 2006.

In addition, the Complainant owns various domain names that contain the trademark SANOFI and notably the domain names:

- <sanofi.com> registered on October 13, 1995;
- <sanofi.eu> registered on March 12, 2006 (Annex 9.2 to the Complaint);

- <sanofi.fr> registered on October 10, 2006.

The disputed domain name was registered on August 28, 2024 and resolves to an inactive webpage.

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.

The Complainant claims that the disputed domain name is (i) identical or confusingly similar to its earlier
trademarks, (ii) that the Respondent has no rights or legitimate interests in the disputed domain name, and

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

(i) 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 with a
substitution of the ending letter “i” in SANOFI by “l” (which is visually close to an “I”) in the mark SANOFI
which constitutes typosquatting and is intended to create confusing similarity between the Complainant’s

trademark and the disputed domain name.

(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the
disputed domain name and the Complainant has not licensed or otherwise permitted the Respondent to use
its trademark SANOFI. The Complainant stresses the fact that the word “sanofi” has no particular meaning
and is therefore highly distinctive. Furthermore, the Complainant contends that the disputed domain name is
not used in connection with a bona fide offering of goods or services, as the disputed domain resolves to an
inactive webpage.

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Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which the panel held that it was not necessary to find that the registrant had taken any affirmative action with respect to the domain name in order to find that the registrant was using the domain name in bad faith. Indeed, in circumstances of inactivity (“passive holding”), this behaviour falls within the concept of “using the domain name in bad faith”.

(iii) Due to the strong reputation and well-known character of the Complainant and its trademarks, the registering the disputed domain name. For the Complainant, the Respondent has neither prior right nor legitimate interest to justify the use of the already well-known trademarks and domain names of the Complainant. For the Complainant, the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion – or at least an impression of association – between SANOFI trademarks and the disputed domain name. The Complainant also claims that it has been established in many UDRP cases that passive holding may, in appropriate circumstances, fall within the concept of bad faith use of a domain name. The leading case in this regard is

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

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 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.

In the present case, the substitution of the ending letter “i” in SANOFI by “l” (which is visually close to an “I”), can be regarded as an intentional misspelling of the trademark.

In accordance with the WIPO Overview 3.0, section 1.9, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This is the case at present.

Finally, it has also long been held that generic or country-code Top-Level-Domains (here “.cc”) 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

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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 common, obvious, and intentional misspellings of the Complainant’s trademark cannot be considered fair as these confuse users seeking or expecting the Complainant.

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 numerous domain names containing the mark SANOFI, especially to address its company website. It is inconceivable for this Panel that the Respondent registered or has used 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 common, obvious, and intentional misspellings of the Complainant’s SANOFI mark.

Moreover, Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity (as it is in the present case) can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4

Although there is no evidence that the disputed domain name is being actively used or resolved to a website
with substantive content, 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 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.

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The distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain name (including common, obvious, and intentional misspellings of the Complainant’s SANOFI mark) 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. Furthermore, this Panel concludes that the disputed domain name is being used in bad faith, putting emphasis on the following: (i) the Complainant’s trademark SANOFI is distinctive and used as domain name to address the Complainant’s website; (ii) the disputed domain name consists of common, obvious, or intentional misspellings of the Complainant’s trademark SANOFI which is a typical case of typosquatting which in itself constitutes bad faith; (iii) the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name; (iv) there is no conceivable plausible reason for good faith use with regard to the disputed domain name.

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 <sanofl.cc> be transferred to the Complainant.

/Elise Dufour/ Elise Dufour Sole Panelist Date: April, 28 2025