Sanofi v Keshav Dabi

WIPO Case No. D2022-4530

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Keshav Dabi

Case No. D2022-4530

1. The Parties

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

The Respondent is Keshav Dabi, United States of America.

2. The Domain Name and Registrar

The disputed domain name <recrutement-sanofi.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, an amendment to the Complaint on December 6, 2022.

2022. On November 28, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 29, 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 (Contact Privacy Inc. Customer
7151571251) and contact information in the Complaint. The Center sent an email communication to the
Complainant on December 5, 2022, providing the registrant and contact information disclosed by the
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 December 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2023.

The Center appointed Peter Wild as the sole panelist in this matter on January 13, 2023. 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.

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4. Factual Background

The Complainant is owner of the well-known trademark SANOFI, which it uses almost worldwide for a pharmaceutical company and its products. The Complainant is a major player in the pharmaceutical business worldwide, allegedly the world’s 4th largest multinational pharmaceutical company by prescription

e.g., French Registration No. 3831592, registered December 9, 2011, and SANOFI (word) French	sales. The Complainant owns a large number of trademarks for SANOFI, such as SANOFI (and device), registered August 11, 2011, claiming protection in a wide range of countries. The Complainant also owns a considerable number of Domain Names, including <sanofi.com>, registered on October 13, 1995.
The Disputed Domain Name was registered on October 30, 2022. At the time of writing this decision, the Disputed Domain Name resolves to an error page.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it is the owner of a number of trademarks consisting of its name “Sanofi” and that it has a strong reputation for the goods and business under this trademark. It has a worldwide presence. The Complainant asserts that the Disputed Domain Name is confusingly similar to the above- mentioned SANOFI trademark. The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name, which was registered and used in bad faith. Finally, the Complainant refers to a number of previous panel decisions where the well-known status of its trademark was confirmed.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns registered rights in the trademark SANOFI. The trademark is fully integrated in the Disputed Domain Name. The trademark SANOFI is recognizable in the Disputed Domain Name. There is however one element in the Disputed Domain Name which differ from the Complainant’s trademark:
-	in the beginning, the word “recrutement”.

Further to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.

Accordingly, the Disputed Domain Name, consisting of the SANOFI mark in its entirety, is confusingly similar to the Complainant’s trademark regardless of the added terms.

Therefore, the Panel is satisfied that the first element of the Policy is met.

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B. Rights or Legitimate Interests

The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

The Respondent is not commonly known under the Disputed Domain Name and claims no connection with
or authorisation from the Complainant. The Respondent shows no activity at all under the website to which
the Disputed Domain Name resolves. The Respondent therefore cannot show a bona fide offering or use of
the Disputed Domain Name. See, e.g., Instagram, LLC v. Asif Ibrahim, WIPO Case No. D2020-2552.

Moreover, the construction of the Disputed Domain Name, consisting of the SANOFI mark along with a term which is purely descriptive, carries a risk of implied affiliation that cannot constitute fair use since it effectively impersonates or suggests sponsorship or endorsement by the Complainant contrary to the fact. WIPO

Overview 3.0, section 2.5.1.

In the absence of any explanation by the Respondent, the Complainant’s establishment of the prima facie case is sufficient.

With the evidence on file, this Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Disputed Domain Name is not used. However, from the inception of the UDRP, 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. Taking into account the strength and fame of the Complainant’s

trademark SANOFI, which was confirmed by a number of previous UDRP panels in recent UDRP decisions, famous trademark, particularly noting that the Complainant’s trademark predate the Disputed Domain Name.

e.g., Sanofi v. Aamir Hitawala, WIPO Case No. D2021-1781; Sanofi v. Yansheng zhang, GNAME.COM
PTE. LTD, WIPO Case No. D2021-1751; Sanofi v. Contact Privacy Inc. Customer 0161263426 / Mike
Willis, Sanofi Pasteur, WIPO Case No. D2021-1320, and taking into account the context which the Disputed
In this Panel’s view, this establishes bad faith registration of the Disputed Domain Name. Moreover, UDRP
panels have found that the mere registration of a domain name that is identical or confusingly similar
(particularly domain names comprising typos or 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 3.3.

Furthermore, given the Respondent’s lack of participation in this proceeding and use of a privacy service to masks its details, the Panel finds that the non-use of the disputed domain name does not prevent a finding of bad faith under the circumstances of this proceeding.

This Panel therefore comes to the conclusion that the third element of the Policy is met.

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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 <recrutement-sanofi.com> be cancelled.

/Peter Wild/
Peter Wild
Sole Panelist
Date: January 27, 2023