WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Sanofi, Octavio Lopez
Case No. D2010-1036
1. The Parties
The Complainant is Sanofi-Aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Sanofi, Octavio Lopez of Bogota, Colombia.
2. The Domain Name and Registrar
The disputed domain name <sanofi-aventis-az.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010. On June 23, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 23, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding further Respondent contact details, the Complainant filed an amendment to the Complaint on July 2, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 27, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on August 6, 2010. 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
The Complainant was formed in 2004 by a merger of two French companies, AVENTIS SA and SANOFI-SYNTHELABO, creating one of the world’s leading pharmaceutical companies with a presence in over 100 countries and 5 continents.
The Complainant is the registered owner of the trademark SANOFI AVENTIS in numerous jurisdictions.
The disputed domain name appears to have been created on August 26, 2009.
5. Parties’ Contentions
The Disputed Domain Name Is Confusingly Similar to the Complainant’s Trademark
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark to which the Complainant has rights.
The Complainant states that it owns the following registrations for the trademark SANOFI AVENTIS:
March 27, 2003
September 14, 2004
April 26, 2004
March 7, 2005
The Complainant also states that it owns the following international trademark registrations:
- SANOFI AVENTIS, number 839358, registered on October 1, 2004, designating among others Australia, Georgia, Japan, Republic of South Korea, United States of America, Switzerland, People’s Republic of China, Cuba, Romania, Russian Federation and Ukraine; and
- AVENTIS, number 708890, registered on February 2, 1999.
The Complainant also states that it has registered and used in connection with its business activities several domain names as follows:
<sanofiaventis.com> and <sanofi-aventis.com> registered on March 14, 2004;
<sanofiaventis.us> and <sanofi-aventis.us> registered on April 26, 2004;
<sanofiaventis.biz> and <sanofi-aventis.biz> registered on April 26, 2004;
<sanofiaventis.info> and <sanofi-aventis.info> registered on April 26, 2004;
<sanofiaventis.net> and <sanofi-aventis.net> registered on April 11, 2004;
<sanofiaventis.org> and <sanofi-aventis.org> registered on April 26, 2004.
The Complainant contends that the terms “sanofi aventis” have no particular meaning and are highly distinctive.
The Complainant asserts that the disputed domain name fully reproduces the Complainant’s trademarks and domain names, which is sufficient to create confusion between the disputed domain name and the trademarks in which the Complainant has rights. Moreover, it asserts that the only difference between the Complainant’s trademarks and the disputed domain name is the addition of the letters “az”, which could refer to the geographical abbreviation of the state of Arizona in the United States, where the Complainant is well established. As such the Complainant contends that the addition of the letters “az”, a descriptive geographic indication, does not distinguish the Respondent’s domain name from the Complainant’s trademarks since these letters are a descriptive geographical reference to the state of Arizona and thus is not sufficient to eliminate the likelihood of confusion between the Respondent’s domain name and the complainant’s trademarks and domain names.
Alternatively, the Complainant asserts that the letters “az” could refer to the company name of the Complainant’s competitor, AstraZeneca, a pharmaceutical firm commonly designated as “AZ”. As such, the Complainant contends that the conjunction of the two trademarks of competing pharmaceutical companies is confusing in the eyes of the public.
The Respondent Has No Rights Or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known trademark SANOFI AVENTIS.
The Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks or to apply for domain names incorporating its trademarks. Therefore, there is no relationship whatsoever between the Complainant and the Respondent. Moreover, the Complainant asserts that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant also contends that the registrant does not have any legitimate interest in using the disputed domain name since the name “Octavio Lopez” has no resemblance with the words “sanofi aventis” and it asserts that the use of the trademark SANOFI in the Registrant’s contact details is fraudulent. The Complainant also states that the Respondent failed to reply to the cease and desist letter sent by the Complainant and did not try to justify a legitimate interest to use the term SANOFI.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and used in bad faith.
The Complainant states that it is one of the world’s leading pharmaceutical companies, pointing to the following:
- it is ranked first in Europe and ranked fourth in the world in the pharmaceutical industry;
- it is the owner of different domain names using the terms SANOFI AVENTIS;
- the “notoriety” of SANOFI AVENTIS has been recognized by other WIPO UDRP panels;
- it is well-known in the Colombian market.
Hence, the Complainant contends that that Respondent must have 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 his website, and thus even the Respondent himself, were somehow endorsed by the Complainant, when in fact they were not.
According to the Complainant the disputed domain name leads to an inactive website, constituting passive use of the domain name, and the Respondent uses the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
The Complainant states that on February 19, 2010, it sent a cease and desist letter to the Respondent informing the Respondent of the Complainant’s trademark rights and asking for the transfer of the disputed domain name. The Complainant did not receive a reply.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademark SANOFI AVENTIS in numerous jurisdictions. Compared to the trademark name, the disputed domain name completely reproduces the Complainant’s trademark with the only difference being the mere addition of the term “az”. However, this term is insufficient to differentiate the domain name from the trademark. Instead, the addition of the term “az” could be more misleading in that Internet users are more likely to believe the sites linked with the domain name are the official sites of the Complainant’s in Arizona, where in fact they are not.
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s SANOFI AVENTIS trademark has been registered in multiple jurisdictions worldwide. The Panel accepts the Complainant’s contention that the trademark SANOFI AVENTIS is internationally famous.
The Respondent’s passive holding of the disputed domain name, which incorporates a famous trademark and where no other plausible explanation for doing so is provided in the record is indicative of bad faith. Such circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of possible selling, renting, or otherwise transferring the domain name registration for valuable consideration.
The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith and has met the requirements of 4(a)(iii) of the Policy.
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 <sanofi-aventis-az.com> be cancelled.
Date: August 18, 2010