Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is Asda Casdq, Philippines.
The disputed domain name <aventis-pasteur-msd.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 16, 2020.
The Center appointed Clark W. Lackert as the sole panelist in this matter on April 14, 2020. 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.
Complainant Sanofi is a French pharmaceutical company that specializes in prescription and over-the-counter medications. Its products are designed to treat diseases and disorders of including those of cardiovascular, oncological, and metabolic natures as well as address issues related to thrombosis, internal medicine, and the central nervous system. Complainant also provides consumer medications that are designed to treat common ailments and are sold without a prescription. The record shows that Complainant generated EUR 34.463 billion in sales in 2018 while maintaining a presence in more than 100 countries around the world.
The record shows that Complainant has been granted a right to use and exploit the name “Pasteur” worldwide pursuant to an agreement between Institut Pasteur and Sanofi Pasteur that has been in place since 1999. Plaintiff owns multiple trademark registrations for pharmaceutical products including registrations for AVENTIS and SANOFI-AVENTIS in word and stylized forms. These registrations are valid in jurisdictions including the European Union, the United States of America, the Philippines, China, Switzerland, Australia, Republic of Korea, Norway, the Russian Federation, Ukraine, and Viet Nam, for example International trademark registration no. 708890 AVENTIS, registered on February 2, 1999. Complainant also owns multiple domain names that have been composed using the terms “aventis-pasteur” and “aventispasteur” including <aventis-pasteur.com> and <aventispasteur.com>. A majority of these domain names were registered in 1999.
Complainant merged with a company named Aventis to form Sanofi-Aventis in 2004. Aventis was a European agro-chemical and pharmaceutical group that was established in 1999. In May 2011, Complainant changed its name to Sanofi. The record shows that Complainant previously operated its vaccines division under the name Sanofi Pasteur, and that Complainant at one time maintained a joint venture with Merck & Co., Inc. under the names Aventis Pasteur MSD and Sanofi Pasteur MSD. The name of the joint venture was changed to Sanofi Pasteur MSD in 2005, and this name was used until the joint venture was disbanded in 2016.
Respondent is identified in WhoIs records as “Asda Casdq”. The disputed domain name was registered on January 28, 2020 and the record shows that it has been used to feature pornographic content and advertisements for third party websites that purport to offer gambling platforms.
Complainant alleges that it has operated its vaccines division under the Aventis-Pasteur name between the years of 1994-2005. It maintains that it has used its AVENTIS trademark for a wide variety of pharmaceutical products all over the world, and that the disputed domain name <aventis-pasteur-msd.com> is confusingly similar to Complainant’s AVENTIS trademark and its portfolio of domain names that combine “aventis-pasteur” and “aventispasteur” with different generic Top-Level Domain (“gTLD”) and country code Top-Level Domain (“ccTLD”) suffixes.
Complainant argues that the disputed domain name incorporates Complainant’s distinctive properties in their entireties and that its incorporation of the letters “MSD” is an attempt to suggest that the disputed domain name is related to Complainant’s former vaccines division that traded under the Aventis Pasteur MSD and Sanofi Pasteur MSD names. In addition, Complainant has submitted a selection of UDRP decisions that have acknowledged that its AVENTIS trademarks are well-known.
The Complaint speculates that the registrant name “Asda Casdq” as identified in WhoIs records for the disputed domain name does not identify a legitimate individual or entity and that this registrant name was adopted “in order to avoid disclosing [the registrant’s] true identity”. Complainant maintains that there is no relationship between its company and Respondent and that Respondent has not been licensed or authorized by Complainant to use its trademarks in a domain name. The Complaint cites the use of the disputed domain name to display pornographic content and advertisements for gambling platforms and proposes that such use is not a legitimate fair use justified by paragraph 4(c) of the Policy.
Complainant submits that the disputed domain name is an example of a registration of opportunistic bad faith because it features Complainant’s AVENTIS trademark which has been recognized as a well-known trademark. Complainant maintains that it has a worldwide reputation and notes that its SANOFI mark has been recognized by previous UDRP panels as one of the most cybersquatted trademarks; Complainant maintains that its use of the terms “Pasteur” and “msd” in conjunction with its vaccine division, combined with its worldwide reputation for its activities, contributes to a finding that Respondent must have been aware of Complainant and the likelihood that the disputed domain name would cause deception and confusion.
The use of the disputed domain name to display pornographic images is cited by Complainant as evidence of bad faith use because such use is likely to tarnish Complainant’s existing trademarks. Furthermore, Complainant cites the promotion of gambling and related commercial transactions as evidence that Respondent is using the disputed domain name to attract consumers for commercial gain.
Complainant also maintains that Respondent did not clearly denote its identity when registering the disputed domain name based upon the content available in WhoIs records.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
The Panel finds that the requirements of the Policy have been satisfied as follows:
The Complaint establishes prior rights in the mark AVENTIS based upon trademark registrations and evidence of use of this mark for pharmaceutical products. These rights have not been contested. Moreover, the record includes evidence of Complainant’s right to use and exploit the name “Pasteur” worldwide pursuant to an agreement between Institut Pasteur and Sanofi Pasteur that has been in place since 1999. This right has not been contested. Finally, Complainant has provided evidence that it was previously involved in a joint venture with Merck & Co., Inc., the owner of the MSD trademark, and that this venture traded under the Aventis Pasteur MSD and Sanofi Pasteur MSD names. Complainant’s use of these names and resulting commercial recognition for its joint venture has also not been contested.
The disputed domain name <aventis-pasteur-msd.com> incorporates Complainant’s AVENTIS mark in its entirety. The presence of MSD and PASTEUR, third party marks, does not avoid a finding of confusing similarity. See section 1.12 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Complainant has submitted multiple UDRP decisions that acknowledge the fame of its AVENTIS trademarks. In addition, Complainant has submitted evidence of its domain name registrations that combine its AVENTIS trademarks with the term “Pasteur”, including the domain names <aventis-pasteur.com> and <aventispasteur.com> which are nearly identical to the disputed domain name <aventis-pasteur-msd.com> which has been composed by adding the letters “msd”.
The disputed domain name is confusingly similar to the well-known AVENTIS trademark because it incorporates this well-known trademark in its entirety. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
There is evidence that Complainant has prior rights in its AVENTIS trademark and that it has a history of trading under the name Aventis Pasteur. In addition, Complainant has owned multiple domain name registrations that combine “aventis-pasteur” and “aventispasteur” with various gTLD and ccTLD extensions since 1999 including registrations for <aventis-pasteur.com> and <aventispasteur.com>.
There is no evidence in the record indicating that Respondent has any rights or legitimate interests in the terms “Aventis Pasteur MSD” or that Respondent has been known by these terms. In addition, there is no evidence that Respondent has a legitimate interest in these terms or has a legitimate need to use these terms as a domain name registration.
In view of the above and the default by Respondent in this proceeding, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
The Complaint contends that Respondent registered the disputed domain name in bad faith because it was likely aware of Complainant, Complainant’s reputation, and Complainant’s rights in its AVENTIS and SANOFI-AVENTIS trademarks. The Panel accepts this as uncontroverted, and notes that the record illustrates a history of use of the terms “Aventis” and “Pasteur” by Complainant and its predecessors that supports a likelihood that consumers will recognize these terms and associate them with Complainant and its pharmaceutical business. In this case, the additional elements of the disputed domain name enhance the likelihood of confusion because they include the term “Pasteur”, a name that the record establishes as associated with Complainant’s pharmaceutical company, and the term MSD, a well-known trademark of another pharmaceutical company. In addition, it should be noted that the disputed domain name mimics Complainant’s existing domain name registrations such as <aventis-pasteur.com> and <aventis-pasteur.net>. The Panel also notes that Complainant owns registered trademark rights in its SANOFI-AVENTIS mark in the Philippines, the country identified as Respondent’s residence.
The record shows that the disputed domain has been used to display pornographic content, a factor that has been sufficient to support a finding of bad faith use in and of itself. See VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631 and Coral Trademarks, Ltd. v. Eastern Net, Inc., > WIPO Case No. D2000-1295 (“the posting of pornographic contents on a website under a domain name that corresponds to a third party’s mark is a bad faith use of the Domain Name”). Respondent’s bad faith is further confirmed by the advertisements for third party websites that have been displayed at the website resolving from the disputed domain name. The record shows that these advertisements have included commercial offerings, and Respondent’s failure to reply to Complainant’s objections supports an inference of bad faith. See, e.g., Bayerische Motor Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
The record also shows that the WhoIs information for the disputed domain name is incomplete. It does not include a city name or postal code, and the legitimacy of the physical address provided for the Philippines is questionable.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <aventis-pasteur-msd.com> be transferred to Complainant.
Clark W. Lackert
Sole Panelist
Date: April 28, 2020