Sanofi v Joseph Qureshi

WIPO Case No. D2024-4407

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Joseph Qureshi

Case No. D2024-4407

1. The Parties

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

Respondent is Joseph Qureshi, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <sanofi-fr.com> is registered with One.com A/S (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on October 27, 2024. connection with the disputed domain name.

On October 29, 2024, Registrar transmitted by email to the Center its verification response disclosing
registrant and contact information for the disputed domain name that differed from that in the Complaint (the
Complaint identified “Redacted for Privacy” as Respondent). The Center sent an email communication to
Complainant on October 31, 2024, providing the registrant and contact information disclosed by Registrar
and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the

Complaint on November 7, 2024, naming Joseph Qureshi as Respondent.

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 (“Policy”), the Rules for Uniform
Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on November 29, 2024.

page 2

The Center appointed Debra J. Stanek as the sole panelist in this matter on December 4, 2024. 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

Complainant is a multinational pharmaceutical company with its headquarters in Paris, France. It primarily makes and sells prescription pharmaceutical products, but also develops over the counter medications. Incorporated in 2004, it changed its name from Sanofi-Aventis to Sanofi in 2011. Complainant is currently one of the largest pharmaceutical companies in the world.

Complainant owns numerous registrations for its SANOFI mark worldwide including:

- SANOFI for pharmaceutical and related products (European Union trademark registration

number 010167351) (registered January 7, 2012);

- SANOFI for, among other things, non-medicated skin care preparations (United States of America

trademark registration number 4178199 (registered July 24, 2012).

Since 1995, Complainant has owned the <sanofi.com> domain name and owns many numerous other domain names consisting of “sanofi” plus a Top-Level Domain, many of which it uses in connection with its operations. Of the thirteen listed in the Complaint, the most recent was registered in 2012.

The disputed domain name was registered on October 15, 2024. At the time the Complaint and amendment were filed and at the time of this Decision, the disputed domain name does not lead to an active website, instead, an “under construction” message is displayed.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

In particular:

- Complainant’s rights in the SANOFI mark, which is well known throughout the world, and its “sanofi”

domain names, long predate Respondent’s registration of the disputed domain name.

- The disputed domain name consists of the SANOFI mark followed by “-fr”, a descriptive geographic

acronym that is the country code for the country of France, where Complainant is based. The disputed
domain name suggests that it is related to Complainant’s operations in France.

- Respondent’s name bears no relationship to “sanofi” and Complainant has not authorized Respondent

to use its mark.

- Respondent is not using the disputed domain name; it leads to an inactive page. Therefore,

Respondent is not making a legitimate noncommercial or fair use or use in connection with a bona fide offering of goods or services.

page 3

- Respondent’s registration of the disputed domain name is in bad faith. The use of Complainant’s

well-known mark could not be coincidental; Respondent likely had constructive notice of the SANOFI

mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To prevail under the Policy a complainant must prove, as to the domain name at issue, that: (i) it is identical
or confusingly similar to a mark in which the complainant has rights; (ii) respondent has no rights or
legitimate interests in respect of the disputed domain name; and (iii) it has been registered and is being
used in bad faith. Policy, paragraph 4(a). A respondent’s failure to respond does not automatically result in
a finding for the complainant; the complainant continues to have the burden of establishing each element.
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,
(“WIPO Overview 3.0”), section 4.3. The Panel may, however, draw appropriate inferences from the default.

See Rules, paragraph 14(b).

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 Complainant’s trademark and the disputed domain name. See WIPO Overview 3.0, section 1.7.

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 and recognizable within the disputed domain name. Although the addition of “-fr,” may bear on assessment of the second and third elements, the Panel finds that the addition 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. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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 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 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.

page 4

The Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has neither rebutted Complainant’s prima facie showing nor 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. While the Panel subscribes to the consensus view that Complainant should be deemed to have satisfied the second element, the Panel also notes that the record does not show any such evidence.

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.

Other UDRP panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. The Panel similarly finds that the passive holding of the disputed domain name does not prevent such a finding here, taking into account the distinctiveness and reputation of Complainant’s trademark, the addition of the country code for France, the country in which Complainant is incorporated, reinforcing a connection with Complainant, Complainant’s use

of the SANOFI mark and use of “sanofi” in its domain names years before the registration of the disputed
domain name, Respondent’s failure to respond, and the implausibility of any good faith use to which the

dispute domain name could be put.

The Panel finds the third element of the Policy has been established.

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 transferred to Complainant.

/Debra J. Stanek/
Debra J. Stanek
Sole Panelist
Date: December 16, 2024