WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis and Sanofi-Aventis Deutschland GmbH v. RareNames, WebReg

Case No. D2007-1676

 

1. The Parties

The Complainants are respectively Sanofi-aventis, France and Sanofi-Aventis Deutschland GmbH, Germany, both c/o Carole Tricoire, Sanofi-Aventis, France, represented by Selarl Marchais De Candé, France.

The Respondent is RareNames, WebReg, United States of America, represented by Lowrie, Lando & Anastasi, LLP, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <insuman.com> is registered with TierraNet d/b/a DomainDiscover.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 16, 2007, the Center transmitted by email to DomainDiscover a request for registrar verification in connection with the domain name(s) at issue. On November 16, 2007, DomainDiscover transmitted by email to the Center its verification response confirming that the 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”), 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 the Respondent of the Complaint, and the proceedings commenced on November 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2007. The Response was filed with the Center on December 11, 2007.

The Center appointed Philip N. Argy as the sole panelist in this matter on January 4, 2008. 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 paragraph 7 of the Rules.

 

4. Factual Background

The following facts, taken from the Complaint, are not contested:

Sanofi-aventis was formed during 2004 as a result of a merger between the two French companies AVENTIS SA and SANOFI-SYNTHELABO. Completion of the transaction created the no. 1 pharmaceutical group in Europe (no. 3 in the world), with 2006 consolidated sales of € 284 billion, in the core business and a strong direct presence on all major world markets

Employing 97,181 people worldwide, Sanofi-aventis has a sales force of 35,030 people, as well as more than 17,600 research staff. The stock market capitalization of the Complainant is 103 697 millions of euros.

Sanofi-aventis offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in 7 major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines [Panel’s emphasis].

In the field of metabolic disorders, Sanofi-aventis developed and sells throughout the world under the trademark INSUMAN a drug compounded with insulin, with demonstrated utility for the treatment of diabetes.

 

5. Parties’ Contentions

I. Complainant

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

- Sanofi-aventis and Sanofi-Aventis Deutschland GmbH are respectively the owners of the following trademarks:

- International trademark INSUMAN n° 471 549 filed on September 11, 1982 in class 5 for “Insulin preparations in injection form”, designating over 50 countries, amongst which are France, Germany, Russia, and Italy.

- American trademark INSUMAN n° 2 627 046 registered in class 5, for “antidiabetic pharmaceutical preparations, “on October 1, 2002;

- The Complainant has also registered two domain names comprising the trademark INSUMAN:

- <insuman.info> registered on September 21, 2001

- <insuman.org> registered on November 23, 2001

The Respondent registered the domain name <insuman.com> on April 9, 2002.

The domain name <insuman.com> is identical, save for the gTLD, to the trademark INSUMAN.

In comparing the Complainant’s marks INSUMAN to the Domain Name with reference to <insuman.com> the well established principle applies that the suffixes, including the generic top level domains, must be excluded from consideration as being merely a functional component of the Domain Name.

B. The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Complainant contends that the Respondent does not have any legitimate interest in respect of the disputed domain name <insuman.com>.

First, the Respondent is in the primary business of selling domain names and has been involved in many other UDRP arbitrations that have resulted in adverse panel rulings terminating and transferring domain name registrations. The Respondent thus has an established pattern of registering domain names that contain others’ marks “purely with the intent of selling such domains for profit”.

The Respondent is using the disputed domain name to link to competitor services for which Respondent receives “pay-per-click” commissions. The Respondent is not making a fair or legitimate use of the domain name and “registered it with the intent to sell it for profit”.

Secondly, the Respondent does not use the domain name in dispute in connection with a bona fide offering of goods or services.

The various links on the Respondent’s home page mostly relate to diabetes problems but without mention of Sanofi-aventis medicine, and divert the Internet user to numerous other competitors and also to unrelated websites.

“[The] sole diversion of internet traffic by the Respondent to other (unrelated) websites does not represent a use of the [disputed] domain name in connection with a bona fide offering of goods or services, rather the conduct of respondent serves the purpose of generating revenues”.

Therefore, the Respondent has no legitimate interest to justify the use of the trademark INSUMAN.

Thirdly, the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks.

There is no relationship whatsoever between the parties.

Moreover, on the home page of the Respondent’s “www.insuman.com” website, it is indicated that the domain name <insuman.com> is for sale - which is supplementary evidence of bad faith on the part of the Respondent.

The absence of use of the domain name <insuman.com> in connection with a bona fide offering of goods and services and the absence of any relevant permission from the INSUMAN trademark owner proves that the Respondent has no rights or legitimate interest in respect of the domain name.

C. The domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The Complainant contends that the disputed domain name <insuman.com> corresponds to the trademarks and domain names owned by the Complainant.

The Respondent has “obviously” registered its domain name in order to abusively take benefit from the Complainants’ notoriety.

INSUMAN is an invented word, which “as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Before registering the disputed domain name, the Respondent “must have been aware” of the existence of the previously cited Complainant’s trademark, which is world famous. This inference is especially likely where the Respondent, as here, uses it mostly to advertise anti-diabetes products and to inform on this syndrome.

Therefore, the 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 give the impression that its website, and thus even the Respondent itself, were somehow endorsed by the Complainant, when in fact they were not.

The disputed domain name was not only registered in bad faith but is also being used by the Respondent in bad faith.

The URL “www.insuman.com” resolves to a particular parking page; the contested domain name is used as a referral portal to divert Internet users through “Related Searches” to third parties’ sites, which mostly relate to the diabetes syndrome.

For example, when one goes into the “Related Search” square and clicks on the entry “diabetes”, one is automatically referred to the online pharmacy called <healthline.com> on which one can obtain information on asthma and allergies symptoms and where competing anti-diabetes products are advertised.

On this website no information relating to the products of the Complainant is provided. Moreover, on the bottom of the page under “Popular Searches” and “Related Searches”, this homepage also contains numerous hyperlinks corresponding to websites offering such services as travel, financial planning, e-commerce, insurance, and also health product information and drugs sold by some of the Complainant’s competitors.

It is very likely that the Respondent’s purpose is to collect money on a pay-per-click basis, as already found in previous decisions such as Sanofi-aventis v. Montanya Ltd., WIPO Case No. D2006-1079 and Sanofi-aventis and Aventis Pharma SA v. Advent Innovations WIPO Case No. D2005-0377.

For these reasons it clearly appears that the domain name <insuman.com> was registered intentionally and is being used in bad faith by the Respondent.

II. Respondent

Supported by an affidavit sworn by Erik S Zilinek, the Respondent denies bad faith registration and denies having any knowledge of “Complainants’ asserted mark” at the time the disputed domain was registered.

However, the Respondent then says that the disputed domain “is not critical to Respondent’s business, and in the interest of saving the cost of defending the Respondent’s rights, Respondent stipulates for transfer of the disputed domain” to the “Complainants”.

The Respondent goes on to cite a number of panel decisions in support of its contention that, where a respondent stipulates for transfer to a complainant in this way, the panel should simply order the transfer without issuing an opinion on the merits of the case.

 

6. Discussion and Findings

The first issue is whether the Panel should proceed in the conventional way to make findings under paragraph 4(a) of the Policy on the three primary bases on which the Complaint is filed, or whether it should simply order a transfer as positively requested by the Respondent, without proceeding to make any such findings and without issuing an opinion on the merits.

In principle, if the former course is taken, it is by no means certain that a complainant would succeed, and if the latter course is taken it is possible, for example, for a pattern of bad faith conduct by a respondent to continue without formal findings that might support invocation of paragraph 4(b)(ii) of the Policy in subsequent cases.

It is clear from the most helpful index published by WIPO at “http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=12840” that many panels have followed the course sought by the Respondent in this proceeding.

One rationale for taking that course, and followed by many panels, is that summarized in Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, where the learned panel there held inter alia:

“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition”. Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.

“Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.”

Accordingly, this Panel finds that the disputed domain name can be transferred to the Complainant without determination of the elements of paragraph 4(a).

In this case there is a Respondent stipulation that the disputed domain be transferred to the “Complainants”. That almost matches the relief sought by the Complainants, that the disputed domain name be transferred to “Sanofi-Aventis Deutschland GmbH”, the second of the two named Complainants. As in the above-cited case, there is nothing before the Panel to indicate that the parties have agreed to any such formal settlement. But terminating the proceeding would plainly not achieve either the parties’ intentions or the goals of the Policy. Asking the parties to reach and record a formal agreement would thwart the Respondent’s (and the Policy’s) objective of saving costs.

In addition to the rationale set out in Williams-Sonoma, Inc. v. EZ-Port above, this Panel considers paragraph 15(a) of the Rules which states 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 applicable”. It seems to this Panel at least that proceeding to make findings that precluded the Complainants’ preferred outcome would be perverse in the face of the Respondent’s stipulation and the goals and objectives of the Policy, as well as basic principles that seek to accommodate parties’ intentions unless to do so would be against public policy or some other clearly applicable rule.

The only ‘public policy’ type of ground that seems of potential application here is that of preserving for the future a complainant’s ability to rely on paragraph 4(b)(ii) of the Policy in relation to the Respondent’s conduct if the Panel were to make findings against the Respondent in this proceeding which, when combined with similar findings in other proceedings, could support the use of that provision in a subsequent complaint. The real rather than theoretical potential for this to occur seems plausible when one considers that in Valero Energy Corporation , Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336, the Respondent in the current proceeding was the same respondent in that case, and made an apparently identical stipulation supported by similar sworn evidence to that filed in this proceeding. If panels simply continue to comply with a respondent’s stipulation when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate “cybersquatting” conduct might be perpetuated.

In this proceeding the Panel has come to the view that the 2002 date of registration of the disputed domain, the 2004 date of the merger that created the Complainants, and the sworn evidence in the form of the affidavit from Mr. Zilinek would preclude the Panel from making any relevant adverse findings against the Respondent that could support any future use of paragraph 4(b)(ii) of the Policy. This is therefore not a case where the theoretical underpinning for proceeding to make formal findings could have any utility, and the Panel therefore regards it as appropriate in this proceeding to treat the stipulation as a proper basis for awarding the relief sought by the Complainants, both under paragraphs 10 and 15(a) of the Rules and also on the basis of the general principles referred to above.

There is sufficient information in the Complaint to substantiate a transfer to either of the Complainants, so the Panel is content to make the award in accordance with the relief requested in the Complaint that the transfer be in favour of the second named Complainant.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraphs 10 and 15 of the Rules, the Panel orders that the domain name <insuman.com> be transferred to Sanofi-Aventis Deutschland GmbH.


Philip N. Argy
Sole Panelist

Dated: January 10, 2008