WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc.
Case No. D2007-0678
1. The Parties
Complainants are Sanofi-Aventis and Aventis Inc., Gentilly Cedex, France, represented by Selarl Marchais De Candé, France (for convenience referred to collectively as “Complainant”).
Respondents are Web Advertising Corp., Nassau, Bahamas and Keyword Marketing, Inc., Charlestown, Saint Kitts and Nevis(for convenience referred to collectively as “Respondent”).
2. The Domain Names and Registrars
The domain names <allegra-relief.org>, <ambienonline.org>, <ambiensleepmedication.org>, <aventistoronto.com>, <darkambien.org>, <optima2sanofi-aventis.com> and <wwwcelnecsanofi.org> are registered with DomainDoorman, LLC. The domain names <sanofy-aventis.com> and <wwwcelnec-sanofi.org> are registered with BelgiumDomains, LLC. Each of these domain names is collectively referred to as “Disputed Domain Names” herein.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2007. On May 9, 2007, the Center transmitted by email to DomainDoorman, LLC and BelgiumDomains, LLC a request for registrar verification in connection with the Disputed Domain Names. On May 10, 2007, DomainDoorman, LLC and BelgiumDomains, LLC transmitted by email to the Center their verification response confirming that Respondent Web Advertising Corp. was listed as the registrant for all the Disputed Domain Names except <wwwcelnec-sanofi.org> and that Keyword Marketing, Inc. was the registrant thereof. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 22, 2007, adding Keyword Marketing, Inc. as a Respondent1. 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”), 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 May 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 19, 2007.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on June 27, 2007. 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
Complainant Sanofi-Aventis is the owner of the trademarks SANOFI, AVENTIS, SANOFI-AVENTIS, AMBIEN and ALLEGRA, of which some registrations are listed below (for a plurality of classes and countries, unspecified for simplicity of expression herein). As the context requires or suggests herein, these trademarks will be referred to collectively as the “Complainant Trademarks” or individually.
Community Trade Mark n° 004025318, registered on Nov. 3, 2005
Community Trade Mark n° 004054193, registered on Nov. 24, 2005
International n° 839.358, registered on Oct. 1, 2004
United States n° 3,174,254, registered on November 21, 2006
Canadian n° 668.558, registered on July 24, 2006
International n° 708 890, registered on February 2, 1999
Community Trade Mark n° 000 993 337, registered on November 18, 1998
Trademark SANOFI Community Trade Mark n° 004 182 325, registered on December 8, 2004
International n° 591 490, registered on September 25, 1992
International n° 605 762, registered on August 10, 1993
French n° 93 456 039, registered on February 19, 1993
American n° 1 808 770, registered on December 7, 1993
Community Trade Mark n° 003 991 999, registered on August 17, 2004
United States n° 2,067,728, registered on June 3, 1997;
Canadian n° TMA 492 711, registered on April 9, 1998;
South African n° 97/08358, filed on June 4. Complainant registered the following domain names and Respondent registered the Disputed Domain Names respectively per left and right columns below (on the dates specified).
<sanofi-aventis.com> on March 14, 2004
<sanofy-aventis.com> on November 27, 2005
<sanofi-aventis.org> on April 26, 2004
<Optima2sanofi-aventis.com> on March 26, 2007
<sanofi-aventis.net> on April 26, 2004
<sanofi.com> on October 13, 1995
<aventis.com> on March 27, 1998
<aventistoronto.com> on March 26, 2007
<ambien.com> on April 12, 2000
<darkambien.org> on December 4, 2006
<ambiensleepmedication.org> on October 2, 2006
<ambienonline.org> on October 2, 2006
<celnec-sanofi.org> on February 16, 2006
<wwwcelnec-sanofi.org> on March 25, 2007
<celnecsanofi.org> on February 16, 2006
<wwwcelnecsanofi.org> on March 25, 2007
<allegra.com> on June 4, 1998
<allegra-relief.org> on April 8, 2007
5. Parties’ Contentions
Complainant contends that the Disputed Domain Names are confusingly similar with the Complainant Trademarks in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Names and that Respondent registered and uses the Disputed Domain Names in bad faith.
Respondent did not reply to Complainant’s contentions and is in default.
6. Discussion and Findings
Complainant contended in its Amendment to Complaint, that the two Respondents, Web Advertising Corp. and Keyword Marketing, Inc., were one and the same entity for the purpose of domain name holding, the former having transferred the Disputed Domain Name <wwwcelnec-sanofi.org> to the latter on May 7, 2007, the date of the filing of the Complaint. In support, the Complainant referred to Edmunds.com, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc., WIPO Case No. D2006-1380, which decided that the two Respondents therein were the same domain name holder. Although the facts of the earlier WIPO Case do not, or may not, exactly mirror those of the current proceedings and although no finding of fact or mixed fact and law therein binds the Panel of the current proceedings, the Panel finds attractive the reasoning of that earlier WIPO case. Especially considering that neither Respondent submitted any arguments or evidence on Complainant’s contention, the Panel is prepared to treat the Respondents as one (although obviously as a practical matter, the two registrars will carry out the Panel’s decision (see below Section 7, Decision) on the Disputed Domain Names, each as held by one of the two Respondents).
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall 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 appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.
In accordance with paragraph 4(a) of the Policy, to succeed in this UDRP proceeding, Complainant must meet three requirements that will be considered in turn below.
A. Identical or Confusingly Similar
Complainant contends (and the Panel accepts as uncontroverted) that it has rights in the Complainant Trademarks and that the Disputed Domain Names are confusingly similar thereto.
Complainant has a very large stature in the international pharmaceutical marketplace2. Based on that very large stature and the legal status (registrations) of the Complainant Trademarks (see above section 4, Factual Background), the Panel concludes that Complainant has very substantial rights (in the marketplace and in trademark registration regimes worldwide) in the Complainant Trademarks and each of them. The Panel accepts Complainant’s characterization of at least some of them, as “famous”.
On the issue of confusing similarity, the Disputed Domain Names will be considered below, grouped for ease and clarity of analysis.
<sanofy-aventis.com> and <optima2sanofi-aventis.com>
The Disputed Domain Name <sanofy-aventis.com>, except the substitution of the letter “i” with the letter “y”, reproduces entirely the famous trademark SANOFI-AVENTIS of Complainant. In some languages, the pronunciation of “Sanofi” and “Sanofy” is identical. The large marketplace stature of Complainant and the marketplace strength and trademark registration strength of its business name makes confusion very likely.
The Disputed Domain Name <optima2sanofi-aventis.com> reproduces entirely the trademark SANOFI-AVENTIS. That trademark has no particular meaning and is therefore highly distinctive as also being the famous business name of Complainant. The addition of the term OPTIMA and the number “2” is not sufficient to avoid the likelihood of confusion with the trademark SANOFI-AVENTIS.
<wwwcelnecsanofi.org> and <wwwcelnec-sanofi.org>
Each of these Disputed Domain Names comprises the generic “www” prefix, the term “celnec” and Complainant’s trademark SANOFI in its entirety.
According to the Complaint, the term “celnec” corresponds to the name that Complainant intends to brand its weight-loss products. The addition of the term “celnec” does not reduce the likelihood of confusion as it clearly makes reference to Complainant’s products. The Panel finds that the likelihood of confusion increases with the addition of the term “celnec”. The prefix “www” is generic in the context of the Internet and commerce therein.
Thus the Panel finds this Disputed Domain Name is confusingly similar to Complainant’s trademark SANOFI.
The Disputed Domain Name <aventistoronto.com> reproduces in its entirety Complainant’s trademark AVENTIS and then adds the geographical term “Toronto”.
Toronto is a Canadian city and thus is not apt to influence significantly the overall impression. Actually, considering the fame of the trademark AVENTIS and the fact that Complainant has an office in Toronto (see Annex 40 of the Complaint), an Internet use, especially a Canadian one, would likely infer a connection with Complainant.
Complainant relies on The British Broadcasting Corporation v. Jaome Renteria, WIPO Case No. D2000-0050, which considered the domain name <bbcdelondres.com> and held that: “The addition of the words de Londres in the domain name does not distinguish the use of the letters bbc from the association with the Complainant that these letters have in the mind of consumers. In fact the use of these words serve to confirm such an association in the mind of consumers.”
Thus the Panel finds this Disputed Domain Name is confusingly similar to Complainant’s trademark AVENTIS.
<darkambien.org>, <ambiensleepmedication.org> and <ambienonline.org>
These three Disputed Domain Names reproduce Complainant’s trademark AMBIEN with the addition of descriptive terms such as “dark”, “sleep medication” and “online” that do not distinguish and thus do not prevent Internet users from inferring a link between those Disputed Domain Names and Complainant’s trademark AMBIEN.
Thus the Panel finds this Disputed Domain Name is confusingly similar to Complainant’s trademark AMBIEN.
This Disputed Domain Name reproduces Complainant’s trademark ALLEGRA in its entirety, with the addition of the descriptive term “relief”. The term “relief” generically describes the intended feature of many, if not all, pharmaceuticals and thus does not serve to distinguish. Thus the Panel finds this Disputed Domain Name is confusingly similar to Complainant’s trademark ALLEGRA.
In conclusion, the Panel accepts Complainant’s contentions that it has rights in the Complainant Trademarks and that the Disputed Domain Names are confusingly similar thereto, and so concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends (and the Panel accepts as uncontroverted) that Respondent has no rights or legitimate interests in the Disputed Domain Names. As Complainant notes, Respondent has no relationship with Complainant and is not using the Disputed Domain Names or any one of them, in connection with a bona fide offering of goods or services.
Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal (registration) status of the Complainant Trademarks, and Complainant’s contentions about its very large stature in the international pharmaceutical marketplace with the Complainant Trademarks, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Names. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of legitimate interest by Respondent in the Disputed Domain Names, likely do not exist.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the Disputed Domain Names in bad faith.
Complainant contends (and the Panel accepts as uncontroverted) that Respondent registered the Disputed Domain Names in bad faith because Respondent was very likely aware, when it so registered, of the Complainant Trademarks. The Panel finds this to be so for at least two reasons. First, the fame of the Complainant Trademarks in the international pharmaceutical marketplace (as described in Discussion and Findings - Identical or Confusingly Similar, Section 6A above) predate Respondent’s registration of the Disputed Domain Names. Secondly, only after Complainant registered its domain names did Respondent register a “corresponding” version thereof, being the Disputed Domain Names (see above Section 4, Factual Background, and the Panel’s chart that compares the respective registration dates of the Disputed Domain Names and some of Complainant’s domain names).
Complainant further contends (and the Panel accepts as uncontroverted) that Respondent is using the Disputed Domain Names in bad faith to misleadingly divert Internet traffic away from Complainant’s website to those containing numerous hyperlinks corresponding to websites offering among other things, travel services, financial services and also health product information and drugs sold by some of Complainant’s competitors.
The Panel concludes that the third requirement of the Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names:
<allegra-relief.org>, <ambienonline.org>, <ambiensleepmedication.org>, <aventistoronto.com>, <darkambien.org>, <optima2sanofi-aventis.com>, <wwwcelnec-sanofi.org>, <wwwcelnecsanofi.org> and <sanofy-aventis.com>
be transferred to Complainant.
Mark Ming-Jen Yang
Dated: July 4, 2007
1 For reasons explained below in Section 6, the Panel considers both Respondents to be the same entity and refers to both as “Respondent” for simplicity of expression herein.
2 Excerpted from the Complaint: “During summer of 2004, Sanofi-Synthelabo, a French pharmaceutical company, announced the success of its offer for Aventis shares. The name of the parent company adopted in August 20, 2004, is Sanofi-Aventis thus preserving the brand heritage of each of the constituent companies. Completion of the transaction created the n° 1 pharmaceutical group in Europe, n° 3 in the world, with consolidated net sales of € 27,311 billion in 2005, in the core business and a strong direct presence on all major world markets, and € 4 billion Research and Development expenditure. Sanofi-Aventis, of which Aventis Inc is the American affiliate company, is now a multinational company present in more than 100 countries across 5 continents. Employing 97 181 people worldwide, Sanofi-Aventis has a sales force of 35 030 persons, as well as more than 17 600 research staff with 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development….The stock market capitalization of Sanofi-Aventis is 103 697 millions of Euros….The new group benefits from a large portfolio of high-growth drugs, with 8 blockbusters pharmaceuticals in 2005:…Allegra, Lantus….In the field of central nervous system, Sanofi-aventis developed and sells throughout the word a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN….Under the trademark ALLEGRA, sanofi-aventis markets a drug which treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat. ALLEGRA was launched, before the merger, by AVENTIS.”