ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanofi v. Felipe Agudelo, asegurance qs Case No. D2025-0822 1. The Parties The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France. The Respondent is Felipe Agudelo, asegurance qs, Colombia. 2. The Domain Name and Registrar The disputed domain name 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 12, 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 21, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2025. The Respondent did not submit any formal response. However, on April 10, 2025, the Respondent sent an email communication to the Center. Following the Center’s possible settlement email to the Parties dated April 11, 2025, the Complainant submitted a suspension request to the Center on April 16, 2025. On the same date, the Center notified the Parties of the suspension of the proceedings. The proceedings were further suspended by the Center pursuant to the
page 2 Complainant’s request for an extension dated May 17, 2025. On June 16, 2025, the Complainant submitted its request for reinstitution. Accordingly, the Center notified the parties about the reinstitution of the proceeding on June 16, 2025. The Center appointed Mehmet Polat Kalafatoglu as the sole panelist in this matter on June 30, 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, Sanofi, is a French multinational pharmaceutical company headquartered in Paris, France. The Complainant was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo and changed its name to Sanofi in May 2011. The Complainant is one of the world’s largest multinational pharmaceutical companies by prescription sales, had consolidated net sales of EUR 43 billion in 2022, and engages in research and development, manufacturing, and marketing of pharmaceutical products. The Complainant operates in more than 100 countries and employs more than 100,000 employees worldwide. The record shows that the Complainant owns several registered trademarks in different jurisdictions consisting of or containing the word SANOFI, including: - the French trademark registration No. 1482708 for SANOFI, registered on August 11, 1988, in classes 1, 3, 4, 5, 10, 16, 25, 28, and 31; - the European Union trademark registration No. 000596023 for SANOFI, registered on February 1, 1999, in classes 3 and 5; and - International Trademark Registration SANOFI No. 674936, registered on June 11, 1997, designating several countries for goods in classes 3 and 5. In addition, several prior UDRP decisions recognized that the SANOFI trademark is well-known (including, Sanofi v. Privacy service provided by Withheld for Privacy ehf/ SANOFI INDIA, WIPO Case No. D2022-2140; and Sanofi v. Cooper Wilson, WIPO Case No. D2021-3348). The Complainant notes that it owns several domain names incorporating its SANOFI trademark, such as the domain name registered on October 13, 1995. The disputed domain name was registered on November 11, 2024. At the time of filing the Complaint and this Decision, it does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the cancellation of the disputed domain name. The Complainant’s contentions regarding the three elements under the Policy can be summarized as follows. First, the Complainant contends that the disputed domain name reproduces its highly distinctive and well-known SANOFI trademark with the addition of geographic and descriptive terms. The Complainant asserts that the addition of the geographic term “egypt” and the descriptive term “health” is undoubtedly insufficient to alleviate the likelihood of confusion between the Complainant’s trademark and the disputed domain name. On the contrary, the Complainant claims that the addition of this generic term increases the inherent risk of confusion. Therefore, the disputed domain name is confusingly similar to the SANOFI trademark.
page 3 Second, the Complainant submits that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant contends, inter alia, that the Respondent has neither authorization, prior rights, nor legitimate interests to justify the use of the already well-known trademarks and domain names of the Complainant. The Complainant adds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, nor is he using it in connection with a bona fide offering of goods or services. Third, the Complainant submits that the disputed domain name was registered and is being used in bad faith. In this regard, the Complainant asserts that the Respondent acted in opportunistic bad faith in registering the disputed domain name, which is confusingly similar to the well-known SANOFI trademark, in order to make illegitimate use of it. Given the famous and distinctive nature of the SANOFI trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s trademark rights at the time of registration. The Complainant claims that the Respondent acted with the purpose of creating a likelihood of confusion or at least an impression of association between the SANOFI trademark and the disputed domain name. The reproduction of the well-known SANOFI trademark in the disputed domain name is, in itself, indicative of bad faith registration and use. The Complainant adds that the passive holding of the disputed domain name indicates bad faith use under the circumstances of the case. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent sent an email communication on the due date for the Response. In this email, the Respondent simply noted that he bought the disputed domain name to perform an academic task (which ended some time ago), he does not use it for any other purpose, and he has no problem delivering the disputed domain name to anyone who requests it. He also noted that the disputed domain name was available to register, and therefore, the Registrar is responsible for selling it. He noted that he is waiting for the steps to follow to transfer the disputed domain name and invited the Center to contact the Registrar for a return of his money. 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 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 disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “egypt” and “health”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.
page 4 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 available 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 Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Complainant affirmed that it did not authorize the Respondent to use its well-known and distinctive SANOFI trademark. There is no indication in the record that the Respondent is commonly known by the disputed domain name and has a business name corresponding to the disputed domain name. In particular, the Panel considers that the disputed domain name reproduces the well-known SANOFI trademark with the addition of the geographic term “egypt” and the descriptive term “health”, the latter being directly connected to the Complainant’s field of industry. Accordingly, the Panel determines that the composition of the disputed domain name carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates or suggests endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. In addition, the Respondent has failed to provide any convincing explanation or evidence of why he chose the disputed domain name. The Respondent merely asserted that he registered the disputed domain name to perform an academic task without providing any supporting evidence of such use. The Respondent also noted that he does not intend to use the disputed domain name as it was only for academic research, which ended some time ago. The Panel finds that these explanations are merely conclusory and are not convincing, and the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Therefore, the Panel 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the Complainant’s well-known and distinctive SANOFI trademark largely predates the registration of the disputed domain name, and the disputed domain name reproduces this trademark with the addition of the geographic term “egypt” and the descriptive term “health”, which is directly connected to the Complainant’s field of activity. Therefore, the Panel finds that the Respondent must have had knowledge of the Complainant’s trademark at the time of registering the disputed domain name
page 5 and he knew or should have known that this registration would be confusingly similar to the SANOFI trademark. Considering also the Respondent’s failure to provide any convincing explanation together with evidence of why he chose the disputed domain name, the Panel finds it very likely that the Respondent registered the disputed domain name with the objective of exploiting the reputation of the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant or the SANOFI trademark. The Panel also finds that the mere registration of the disputed domain name that is confusingly similar to the well-known SANOFI trademark by the Respondent, who has no affiliation with the Complainant, creates a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds 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 Complainant has 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 be cancelled. /Mehmet Polat Kalafatoglu/ Mehmet Polat Kalafatoglu Sole Panelist Date: July 14, 2025
Full & Egal Universal Law Academy