The Complainant is Sanofi-Aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name is <sanofiadventis.com> which is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2010. On June 11, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 15, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 6, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 9, 2010. The Center verified that the Complaint, as amended, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2010.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on August 17, 2010. This Panel finds that it was properly constituted. This 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 is a French company, formed in 2004 as a result of the merger between Aventis SA and Sanofi-Synthelabo, engaged in the production of pharmaceuticals products generally.
Complainant has rights over the trademark SANOFI-AVENTIS, which has been registered in several jurisdictions, including the following: registration No. 839358 with the World Intellectual Property Organization, registered in 2005; registration No. 4025318 with The Trade Marks and Designs Registration Office of the European Union, registered in 2005; and registration No. 3288019 with the National Institute of Industrial Property of France, registered in 2004, all in classes 01, 03, 05, 09, 10, 16, 38, 41, 42 and 44.
Further, Complainant has rights over the trademark SANOFI AVENTIS (and design) which has registered in several jurisdictions, including registration No. 4054193 with the The Trade Marks and Designs Registration Office of the European Union, registered in 2005 in classes 01, 03, 05, 10, 38 and 42.
The disputed domain name was created on November 25, 2009.
Complainant’s assertions may be summarized as follows:
Complainant is a multinational company settled in more than 100 countries around 5 continents. It offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in 7 major therapeutic areas.
Complainant is the owner of a substantial number of trademark registrations for the name SANOFI AVENTIS all over the world. The SANOFI AVENTIS name has been protected as a trademark since 2004. Complainant has also registered several domain names to present its activities and goods on the web, such as <sanofi-aventis.eu> created in 2006; <sanofi-aventis.com> created in 2004; <sanofi-aventis.info> created in 2004; and <sanofi-aventis.org> created in 2004. All of the above mentioned trademarks and domain names containing the distinctive words SANOFI-AVENTIS are prior to the registration of the disputed domain name which took place in November of 2009.
The disputed domain name is confusingly similar to the trademarks and domain names over which Complainant has rights.
The disputed domain name reproduces SANOFI-AVENTIS trademarks, which as themselves have no particular meaning and are therefore highly distinctive. The only difference between Complainant’s trademarks and the disputed domain name is the purposeful misspelling, namely the addition of the letter “d” to “Aventis” in the disputed domain name. The addition of the letter “d” to “Aventis” is not sufficient to alleviate the likelihood of confusion between the aforementioned trademarks and the domain name registered by Respondent.
Prior panel decisions have constantly admitted the likelihood of confusion between a previous trademark and a disputed domain name in case of typo squatting (Sanofi-Aventis v. Transure Enterprise Ltd, WIPO Case No. D2008-1636).
Likelihood of confusion is strengthened by the notoriety of Complainant and its trademarks. Prior panel decisions have already considered that Complainant and its trademarks are “well-known” in many jurisdictions (Sanofi-Aventis v. Naby Diaw, WIPO Case No. D2007-1619 and Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited, WIPO Case No. D2007-1641).
Respondent has no legitimate interest in respecto of the disputed domain name. Above.com Domain Privacy1 is not the real registrant but a corporation whose purpose is to register domain names on behalf of third parties in order to keep confidential the real identity of the registrant. Therefore Respondent does not justify of any prior rights and/or any legitimate interest to use the SANOFI-AVENTIS trademarks.
Complainant has never licensed or otherwise permitted to Respondent to use its trademarks or to register any domain name including the above mentioned trademarks. Therefore, there is no relationship whatsoever between the involved parties.
The lack of any permission from Complainant and the lack of reason in the use of the disputed domain name prove that Respondent has no rights or legitimate interest with respect to the disputed domain name.
Respondent registered in bad faith the disputed domain name which corresponds to the trademarks and domain names owned by Complainant.
The disputed domain name has been registered for the purpose of attracting Internet users to Respondent’s website and making unfair benefit of its reputation, by creating a likelihood of confusion between SANOFI-AVENTIS worldwide well-known trademarks and the disputed domain name.
Complainant is one of the leaders among phamaceutical companies, ranked first in Europe and fourth in the world in the pharmaceutical industry.
Respondent must have undoubtedly been aware of the risk of deception and confusion that would inevitably follow when registering the disputed domain name since it could lead Internet users searching for official SANOFI-AVENTIS websites to the disputed domain name website. Respondent has registered its domain name in order to abusively take benefit from Complainant’s notoriety.
The Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant’s website, a practice dubbed “typo squatting” and condemned in a number of UDRP panel decisions.
Under these circumstances, it is inconceivable that Respondent registered with good faith the domain name unaware of Complainant’s rights.
The domain name is being used in bad faith: Respondent is deliberately trying to gain unfair benefit of the SANOFI-AVENTIS reputation by using Complainant’s trademarks to divert users to a parking website with links to commercial websites.
The homepage of the disputed domain name resolves to a referral portal to divert Internet users to concurrent sites through sponsored listings. It is very likely that Respondent’s purpose in such use is to collect money on a pay per click basis. Prior panel decisions constantly found that a domain name which reproduces a well-known trademark and which leads to a parking website is being used in bad faith.
Complianant has often been the victim of such commercial unfair behavior which has been condemned by prior panel decisions (Sanofi-Aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636 et. al.).
Complainant wrote to Above.com Domain Privacy’s administrative contact2 on May 11, 2010 and requested the immediate transfer of the disputed domain name, but never obtained a response. The lack of respondents’ reply to cease-and-desist letters have been found by prior panel decisions as indicative of bad faith registration and use (Sanofi-Aventis v. Above.Com Domain Privacy/ Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634).
There is no doubt that by using the domain name <sanofiadventis.com> as a parking website, Respondent is intentionally attempting to attract Internet users for financial gain creating a likelihood of confusion with Complainant’s trademark and domain name as to the source, sponsorship, affiliation or endorsement of the registrant’s website or location or of a product or service on Respondent’s website or location.
Consequently, the disputed domain name was registered intentionally and is being used with bad faith by Respondent.
Complainant requests that the disputed domain name be cancelled.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant3. The burden for Complainant, under paragraph 4 (a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
It is undisputed that Complainant is the holder of several SANOFI AVENTIS trademark registrations (whether as SANOFI-AVENTIS or as SANOFI AVENTIS and design), and that Complainant’s products are well-known internationally in the pharmaceutical industry under such trademark.
The noted differences between Complainant’s trademarks and the disputed domain name is the addition of the letter “d” to “Aventis” in one of them, and such addition and elimination of the dash in the other, which renders the disputed domain name almost identical to Complainant’s trademarks. Such minor differences are not enough to either avoid similarity nor prevent the likelihood of confusing similarity. Prior panel decisions support this Panel’s view (See Pfizer Inc. v. Phizer's Antiques and Robert Phizer, WIPO Case No. D2002-0410; Sanofi-aventis v. Transure Enterprise LTD, Host Master, WIPO Case No. D2008-1636).
Therefore, this Panel concludes that the disputed domain name is confusingly similar to such Complainant’s trademarks.
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Complainant is a multi-national company, and that its SANOFI AVENTIS trademarks are well-known internationally. Complainant contends that the SANOFI AVENTIS trademarks by themselves have no particular meaning and are therefore highly distinctive (besides this Panel infers that the birth of the SANOFI AVENTIS trademark comes from the merger between Aventis SA and Sanofi-Synthelabo, i.e., the combination of two different terms into a combined one, which by itself is also characteristic).
It has been established that the disputed domain name is almost identical to Complainant’s trademark.
Complainant asserts that it has never licensed, authorized or permitted Respondent to use its trademark or to register any domain name that incorporates the SANOFI AVENTIS trademarks. Likewise, Complainant asserts that there is no relationship between the involved parties.
This Panel takes note of two cases cited by Complainant which involved the Respondent: Sanofi-Aventis v. Above.Com Domain Privacy/ Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634, involving the domain name <sanofi-aventisus.com>, and Sanofi-Aventis v. Transure Enterprise Ltd, Host Master WIPO Case No. D2008-1636, involving the domain names <sanofiavents.com> and <wwwsanofi-aventis.com>.
From the documentation that is on the file there is no indication that may lead this Panel to consider that Respondent might have rights or legitimate interests on the disputed domain name, but rather the opposite may be validly inferred. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which is almost identical to Complainant’s trademarks, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name4.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
All evidence in the file indicates that Respondent should have been fully aware of the existence of Complainant and Complainant’s trademarks at the time it obtained the registration of the disputed domain name.
The use of a domain name for a parking website which may generate pay-per-click revenue is not, per se, evidence of bad faith. However, where the disputed domain name incorporates another’s well-known trademark, coupled with just a minor typpographical error variation (known as typosquatting), and where further there are precedents evidencing Respondent’s substantially similar conduct in other cases, there is no doubt that Respondent is intentionally attempting to attract internet users for financial gain creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name, when in fact there is no such connection.5
In light of all the above, this Panel concludes that the registration of the disputed domain name was, on the face of it, made in bad faith and it is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sanofiadventis.com> be cancelled.
Gerardo Saavedra
Sole Panelist
Dated: August 31, 2010.
1 Complainant refers to the person originally named as respondent, before the Registrar disclosed the underlying registrant of the disputed domain name.
2 Idem.
3 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, [r]espondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by [c]omplainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by [c]omplainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 In AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937, the Panel established: “The use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark” (added emphasis). In Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250, the Panel established: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”. See also Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568: “Typosquatting is virtually per se registration and use in bad faith” (added emphasis).