The Complainants are Sanofi, France (the “First Complainant”), and Genzyme Corporation, United States of America (the “Second Complainant” and “United States” respectively), represented by Selarl Marchais & Associés, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Genzyme Pharm, Canada.
The disputed domain name <genzymepharminc.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 19, 2020, 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 23, 2020.
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 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 4, 2021. 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.
The First Complainant is a French multinational pharmaceutical company headquartered in Paris. It has operations in more than 100 countries and employs 100,000 people. Its consolidated net sales in 2018 amounted to EUR 34.46 billion.
The Second Complainant is a biotechnology company founded in 1981 in the United States. It is owned by the First Complainant. In 2010, the Second Complainant was the world’s third-largest biotechnology company, employing more than 11,000 people in 65 countries.
The Second Complainant is the owner of the following trademarks (the “GENZYME trademark”):
− the United States trademark GENZYME with registration No. 1859429, registered on October 25, 1994, for goods in International Class 5;
− the European Union trademark GENZYME with registration No. 002348852, registered on April 17, 2003, for goods and services in International Classes 1, 5 and 42; and
− the Chinese trademark GENZYME with registration No. 3160697, registered on June 21, 2003, for goods in International Class 5.
The Second Complainant is also the owner of the domain names <genzyme.cn>, registered on June 11, 2004, <genzyme.com>, registered on August 14, 1996, <genzyme.net>, registered on August 5, 2000, <genzyme.org>, registered on August 5, 2000, and <genzyme.us>, registered on August 21, 2008.
The disputed domain name was registered on February 20, 2020. It resolves to a short webpage with the heading “Welcome to Genzyme Pharmaceutical Inc, Canada” which states that “This site is under maintenance”.
The Complainants state that they have a sufficient common interest in the disputed domain name, as it corresponds to the GENZYME trademark that belongs to them and was illegitimately registered and used by the Respondent.
The Complainants maintain that the disputed domain name is confusingly similar to their GENZYME trademark, because it contains as its dominant element an exact reproduction of this trademark, combined with the descriptive terms “pharm” and “inc”, which are abbreviations for “pharmaceutical” and “incorporated” to designate a corporation. These additional elements suggest that the disputed domain name is related to the Complainants’ activities in the pharmaceutical field. The Complainants note that the GENZYME trademark is distinctive and has no particular meaning, and that the Second Complainant has used its GENZYME trade name for over 40 years and has invested substantial financial resources over the years to advertise and promote itself and the GENZYME trademark all over the world.
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainants have not authorized it to use the GENZYME trademark or to register a domain name containing it, and there is no relationship between the Parties. The Complainants further state that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is not using it in connection with a bona fide offering of goods or services, as it refers to an inactive webpage. They maintain that the Respondent has incorporated the GENZYME trademark into the disputed domain name in order to confuse Internet users into believing that the Respondent is affiliated to the Complainants.
The Complainants contend that the disputed domain name was registered and is being used in bad faith. According to them, the Respondent’s behavior cannot be the result of a mere coincidence. The name “Domain Admin” does not resemble the word “GENZYME”, and the Respondent has no prior rights or legitimate interests to justify the registration or use of the already well-known GENZYME trademark of the Complainant. According to the Complainants, given the notoriety and distinctiveness of the GENZYME trademark, the Respondent is likely to have known it at the time when it registered the disputed domain name, and it has acted with opportunistic bad faith in registering it with an intent to use it illegitimately. They maintain that the disputed domain name was registered for the purpose of attracting Internet users searching for official information about GENZYME pharmaceutical products to the Respondent’s website by creating a likelihood of confusion or an impression of association between the well-known GENZYME trademark and the disputed domain name.
The Complainants point out that the disputed domain name resolves to an inactive website, but its passive holding falls within the concept of use in bad faith, without it being necessary to establish that the Respondent has undertaken a positive action. They submit that the lack of use of the disputed domain name is likely to cause irreparable prejudice to the Complainants’ general goodwill because Internet users may be led to believe that the Complainants are not on the Internet or are out of business.
The Respondent did not reply to the Complainants’ contentions.
Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
The Respondent however did not submit a Response in this proceeding.
The Complainants have provided evidence that the Second Complainant is the registrant of the GENZYME trademark. They have also submitted that the First Complainant is the owner of the Second Complainant and that the GENZYME trademark belongs to them. This is sufficient for a finding that the Complainants have rights in the GENZYME trademark for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “genzymepharminc”. It consists of the elements “genzyme”, “pharm” and “inc”. The “genzyme” element is identical to the GENZYME trademark and dominates in the disputed domain name, while the addition to it of the elements “pharm”, representing a widely-used short form of “pharmaceutical” and “inc”, being an abbreviation of “incorporated”, does not prevent the GENZYME trademark from being clearly recognizable in the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the GENZYME trademark in which the Complainants have rights.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it has no relationship with them and was not given permission to use the GENZYME trademark, and the Respondent has not used the disputed domain name actively. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not disputed the statements of the Complainants.
The disputed domain name incorporates the GENZYME trademark in combination with the words “pharm” and “inc”, which makes it confusingly similar to the trademark and to the trade name and business of the Second Complainant, both of which predate the registration of the disputed domain name by many years. According to the information in the case file, the Respondent is not available at the address provided for the registration of the disputed domain name, and the disputed domain name resolves to an inactive website that is under construction. There is no evidence that an entity under the name “Genzyme Pharmaceutical Inc” or “Genzyme Pharm” actually exists and is carrying out any activity.
In view of the above, and in the absence of any evidence to the contrary and of any plausible alternative explanation by the Respondent, it appears to the Panel that it is more likely than not that the Respondent, being aware of the goodwill of the GENZYME trademark, has registered the disputed domain name by indicating a false name that contains the same trademark to exploit its goodwill. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent has registered the disputed domain name many years after the registration of the GENZYME trademark and of the Complainants’ domain names, and after the Second Complainant started using it for its business. The disputed domain name incorporates the GENZYME trademark in combination with the words “pharm” and “inc”, and this combination directly refers to the Complainants’ pharmaceutical business carried out under the GENZYME trademark and to the name of the Second Complainant. In view of this and of the scope of protection of the GENZYME trademark and of the global extent of the jurisdictions in which it is registered, the Panel cannot conceive of any good faith use of the disputed domain name that would be legitimate without the consent of the Complainants.
As evident from the case file, it also appears that the Respondent has used a false name for the registration of the disputed domain name, and there is no evidence of the existence and activities of an entity under the name “Genzyme Pharmaceutical Inc” or “Genzyme Pharm”, which is listed as registrant of the disputed domain name.
Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent was aware of the Complainants’ GENZYME trademark and of its goodwill when it registered the disputed domain name, and that the Respondent has registered and used the disputed domain name targeting the GENZYME trademark and the name of the Second Complainant in an attempt to exploit the goodwill of the Complainants and of the GENZYME trademark to mislead Internet users. The fact that the disputed domain name resolves to a webpage which states that “This site is under maintenance” does not prevent a finding of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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 <genzymepharminc.com> be transferred to the Complainants.
Assen Alexiev
Sole Panelist
Date: January 20, 2021