Sanofi v wang lao

WIPO Case No. D2024-4408

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. wang lao

Case No. D2024-4408

1. The Parties

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

The Respondent is wang lao, Hong Kong, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2024.
On October 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 29, 2024, 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 (Redacted for Privacy, Super Privacy Service LTD c/o Dynadot)
and contact information in the Complaint. The Center sent an email communication to the Complainant on
October 29, 2024, 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 November 7, 2024.

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 November 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2024.

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The Center appointed Simone Huser as the sole panelist in this matter on December 3, 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

The Complainant is a French multinational pharmaceutical company headquartered in Paris, France. It 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.

The Complainant holds several domain names containing the mark SANOFI, among them <sanofi.com>, which is used by the Complainant in connection with its activity.

The Complainant owns numerous trademark registrations in several jurisdictions, including:

TRADEMARK JURISDICTION REGISTRATION INTERNATIONAL

REGISTRATION DATE

NUMBER	CLASS
01, 03, 05, 09, 10, 35,

SANOFI	France	96655339	December 11, 1996	40, 42
01, 03, 05, 09, 10, 16,
SANOFI	France	3831592	May 16, 2011	35, 38, 40, 41, 42, 44
SANOFI	European Union	010167351	January 7, 2012	03, 05
International	01, 09, 10, 16, 38, 41,
SANOFI	1092811	August 11, 2011
Trademark	42, 44

Because the Respondent did not file a Response, not much is known about the Respondent.

The disputed domain name was registered on September 29, 2024. According to the evidence submitted with the Complaint, the disputed domain name resolves to an inactive page.

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.

Notably, the Complainant contends as follows:

The disputed domain name is confusingly similar to the SANOFI trademark in which the Complainant has rights, because it incorporates this trademark in its entirety. The addition of the descriptive term “hr”, suggesting a human resource dedicated website, and a hyphen, is not sufficient to avoid confusing similarity.

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The Respondent has no rights or legitimate interests in respect of the disputed domain name. The trademark SANOFI has been extensively used to identify the Complainant and its products / services. The Respondent has not been authorized by the Complainant to use this trademark, is not commonly known by the disputed domain name, and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods and services.

The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well-known trademark SANOFI at the time it registered the disputed domain name.

The Respondent is using the disputed domain name in bad faith, by passively holding the disputed domain name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the
complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

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 Panel finds the entirety of the mark is reproduced within the disputed domain name, preceded by the letters “hr”, which may be seen as an acronym standing for “human resources”.

Although the addition of other terms such as here “hr” may bear on assessment of the second and third elements, the Panel finds that in the present case 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 addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). See WIPO Overview 3.0, section 1.11.1.

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

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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 for a complainant to prove that 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 Panel considers that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

Based on the available record, 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 view of the Panel, noting that that the Complainant’s trademark predates the registration of the disputed domain name and considering that the Complainant’s trademark is well known, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well-known trademark. In the circumstances of this case, this is evidence of registration in bad faith.

The disputed domain name currently resolves to an inactive website. Panels have found that the non-use of a domain name (including a blank or “coming soon” 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.

WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes:

- the distinctiveness and reputation of the Complainant’s trademark SANOFI,

- the failure of the Respondent to submit a response or to provide any evidence of actual or

contemplated good-faith use, and

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- the Respondent’s use of false contact details as evidenced by the inability of the courier service to deliver the Center’s written communication to the address disclosed by the Registrar for the Respondent.

Therefore, the Panel 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 with regard to the disputed domain name.

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 <hr-sanofi.com> be transferred to the Complainant.

/Simone Huser/
Simone Huser
Sole Panelist
Date: December 12, 2024