World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Chinex Johnswill, Chynex Consulting

Case No. D2011-0148

1. The Parties

The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.

The Respondent is Chinex Johnswill, Chynex Consulting of Owerri, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <sano-fiaventis.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2011. On January 27, 2011, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On January 31, 2011, OnlineNic, Inc. d/b/a China-Channel.com 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” 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 January 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2011.

The Center appointed John Katz QC as the sole panelist in this matter on March 1, 2011. 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 from the merger of two French companies Aventis and Sanofi-Synthelabo. The new company emerged as one of the largest pharmaceutical companies in the world. In 2009 it had consolidated net sales of EUR 29.3 billion for core business activities and EUR 4.6 billion in research and development expenditure.

The Complainant is a true multinational company with a presence in over 100 countries on five continents. Its website “www.sanofi-aventis.com” discloses that it has an active presence in Nigeria, the place of residence of the Respondent.

The Complainant employs over 105,000 people worldwide with 49 products under development, 17 of which are at advanced stage. Its pharmaceutical portfolio is extensive and appears to cover all medical indications for treatment of the human body.

The Complainant has a number of registered trade marks worldwide and community trade marks. These are for the word mark SANOFI-AVENTIS and the word mark and device. It also has some seven domain names all of which are <sanofi-aventis> with various “.com”, “.biz”, “.net” and related suffixes.

The Respondent registered the disputed domain name on October 23, 2010, well after the Complainant’s trade mark and domain name registrations.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its name, being invented or with no particular meaning, is highly distinctive. It is not therefore in any way generic or descriptive of its business, location or products and services. The Complainant also contends that the disputed domain name is confusingly similar to its trade mark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and used in bad faith.

It is a world leader in pharmaceuticals with an enormous presence and resultant worldwide knowledge of its existence and activities.

B. Respondent

Because the Respondent has defaulted it has not put before the Panel evidence. There is therefore nothing to which reference can be made to learn anything about the activities of the Respondent.

The Respondent appears to have registered and “parked” the disputed domain name. It does not appear to be used for any activities. It is therefore a squatting domain name and site.

6. Discussion and Findings

The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.

As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.

Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:

(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The respondent’s domain name has been registered and is being used in bad faith.

Each of three elements must be established by a complainant to warrant relief.

A. Identical or Confusingly Similar

As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.

The Complainant must establish that it has such rights either to unregistered or registered trade marks or service marks.

It can immediately be seen that the only difference between the Complainant’s name and its various trade marks and domain names is the misplacement of the hyphen so that it is placed two letters before where it should otherwise be. Beyond that it is identical to the Complainant’s trade mark.

There have been many decisions of other panels on such subtle and minor misspellings or variations in type, print or punctuation. This Panel addressed these same issues in a series of decisions concerning the multinational company BHP Billiton, which similarly was a merger of two earlier corporate entities. See for example the decisions in BHP Billiton Innovation Pty Ltd v ND Invest LTD, Name Admin, WIPO Case No. D2010-0672; BHP Billiton Innovation Pty Ltd v Whois Privacy Protection Service, Inc./Demand Domains, Inc., WIPO Case No. D2010-0657; BHP Billiton Innovation Pty Ltd v Whois Privacy Services Pty Ltd/Disco.Names 1, WIPO Case No. D2010-0684; BHP Billiton Innovation Pty Ltd v Whois Privacy Services Pty Ltd/Pertshire, Pertshire Marketing, WIPO Case No. D2010-0658.

As for the rights of the Complainant, there can be no question whatsoever of its right in the trade mark. Nothing more needs to be said on this point.

There is a considerable body of case law in relation to what constitutes the same or identical mark in trade mark jurisprudence and under the Policy.

In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.

The Panel considers this statement equally applicable to the facts of the present Complaint. If one looks at the disputed domain name from the viewpoint of whether or not when viewed as a whole contains differences so insignificant that they go unnoticed by the average consumer, it must follow that the disputed domain name incorporates the identical mark to that for which the Complainant has rights.

However, even if that was not so there can be absolutely no quarrel with the argument that the disputed domain name is confusingly similar. This must especially be so where the difference is of such a minor nature that to most people it would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.

The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.

B. Rights or Legitimate Interests

As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the mark.

Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.

Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests, or can claim none.

The Complainant contends that the disputed domain name bears no resemblance to the name of the Respondent. That is clearly so.

As no independent check can be made on the activities of the Respondent it is simply not possible to see what might be put up by the Respondent as to any rights or legitimate interests in the disputed domain name.

In any event, in cases such as the present, it is appropriate to draw inferences from established facts. In light of the Respondent’s default and the matters set out in section A. above this Panel finds that the Respondent has no rights or legitimate interests.

The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.

C. Registered and Used in Bad Faith

As to the third ground, this requires that the domain name be registered and used in bad faith. As has previously been said in other panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.

In the Panel’s view, any person who came across the Respondent’s disputed domain name would immediately assume that it was a domain name owned and operated by the Complainant, contrary to the fact.

Having regard to the clear and undoubted rights the Complainant has in its name as at October 2010 (the date of the Respondent’s registration of the disputed domain name) the inference is simply unavoidable to the Panel that the Respondent must have known the Complainant at the time it registered the disputed domain name and that the disputed domain name was registered in bad faith. Given the circumstances of this case, the fact that the disputed domain names exists but is passively held does not avoid a finding of use in bad faith (Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003).

Moreover, there can be no question of the worldwide reputation of the Complainant so much so that its name and trademarks can be regarded as famous or well-known in trade mark terminology.

The large number of earlier panel decisions on and in favour of the Complainant with respect to other respondents is testimony to this.

The actions of the Respondent can therefore be seen as typo-squatting. That the difference between <sanofi-aventis.com> and <sano-fiaventis.com> is so minor and virtually indiscernible lends support, if any was needed, to a finding of registration and use in bad faith.

There can therefore be but no dispute in this Panel’s view that this Respondent has registered and is using the disputed domain name in bad faith.

The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.

7. Decision

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 <sano-fiaventis.com> be transferred to the Complainant.

John Katz QC
Sole Panelist
Dated: March 15, 2011

 

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