WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Finance Credit LLeida SL / Registration Private Domains by Proxy, Inc.
Case No. D2011-0567
1. The Parties
The Complainant is Sanofi-Aventis of Paris, France, represented by Patrice de Candé, France.
The Respondent is Finance Credit LLeida SL of Lleida, Spain / Registration Private, Domains by Proxy, Inc. of Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sanofi-aventisshares.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2011. On March 29, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 31, 2011, GoDaddy.com, Inc. 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 April 5, 2011 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 April 7, 2011. 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 April 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2011. No formal response was received. However two communications were received from the Respondent prior to the commencement of the Notification of Complaint on April 6 and 7, 2011. The two communications were in Spanish. The Center responded to both emails essentially stating that in accordance with paragraph 11 of the Rules the language of proceeding is the language of the registration agreement. In this case, the Center was informed by the concerned Registrar that the language of the registration agreement for the disputed domain name is English. Consequently, the language of the proceedings remains English.
The Center appointed Angela Fox as the sole panelist in this matter on May 16, 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 is a multinational pharmaceutical group based in France, formed in 2004 as the result of a merger between two French companies, Aventis SA and Sanofi-Synthelabo. It claims to be the largest pharmaceutical group in Europe and the fourth largest in the world, with consolidated net sales of Euros 30.3 billion in 2010 and a direct presence on all major world markets. It employs some 105,000 people worldwide, and describes itself as a “multinational company settled in more than 100 countries around 5 continents”.
The Complainant is a publicly traded company and its shares have been listed on Euronext Paris since May 25, 1999, and on the New York Stock Exchange since July 1, 2002. Investment information on shares in the Complainant’s company is listed on the Complainant’s website, “www.sanofi-aventis.com” on inter alia a page headed “Sanofi-Aventis Share”, an extract from which was annexed to the Complaint.
The Complainant owns numerous trademark registrations in countries around the world for SANOFI AVENTIS, both as a plain word mark and in a logo form, including International Registration nos. 849323 and 839358 (both covering inter alia Australia, Georgia, Japan, the Republic of Korea, the United States, Switzerland, the People's Republic of China, the Republic of Cuba, Romania, the Russian Federation and the Ukraine); Community Trademark registration nos. 4054193 and 4025318; French registration nos. 3309318 and 3288019; and Canadian registration no. 1235065, all covering pharmaceutical products and dating from between 2004 and 2006. Details of these registrations were also annexed to the Complaint.
The Complainant also owns numerous domain names including the element “sanofi-aventis”, namely <sanofi-aventis.eu>, <sanofi-aventis.com>, <sanofi-aventis.us>, <sanofi-aventis.biz>, <sanofi-aventis.info>, <sanofi-aventis.net> and <sanofi-aventis.org>, all obtained between 2004 and 2006. Details of these were also annexed to the Complaint.
The disputed domain name was registered on September 15, 2010. It has been used to host a pay-per-click (“PPC”) landing site featuring links to third-party websites relating to numerous topics, including finance and health.
On March 14, 2011 the Complainant wrote to the Respondent asserting its rights in the SANOFI AVENTIS trademark and demanding transfer of the disputed domain name. The Respondent replied the next day, stating:
“I cannot return this domain name if you do not pay mebefore teh [sic] cost of registration. I only wanted to analyse its financial information in this domain.
I could return it to you for 50 Euros, because I do not want any problem. Otherwise, I will use it.”
The Complainant brought the Complaint on March 29, 2011.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to its registered trademark, SANOFI AVENTIS. The element “sanofi-aventis” is essentially identical to SANOFI AVENTIS. The additional word “shares” is purely descriptive and therefore not capable of distinguishing the disputed domain name from the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise authorised the Respondent to use its SANOFI AVENTIS trademark in the disputed domain name.
Finally, the Complainant asserts that the disputed domain name was registered and has been used in bad faith. The Complainant points to the internationally high profile of its business under the SANOFI AVENTIS trademark and the fact that its shares were traded on the Paris and New York stock exchanges for 12 and 9 years respectively before the disputed domain name was registered. In the Complainant’s submission, it is inconceivable that the Respondent would not have been aware of the Complainant and its trademark before registration of the disputed domain name, and the Respondent clearly registered the disputed domain name primarily to gain unfair advantage from the Complainant’s reputation. Finally, the Complainant contends that the use of the disputed domain name for a PPC landing site hosting hyperlinks in inter alia the fields of health and finance is use in bad faith, since it amounts to a deliberate attempt to profit from the reputation of the Complainant’s trademark. The Complainant also argues that the Respondent’s refusal to transfer the disputed domain name unless the Complainant made a payment of Euros 50 further demonstrates bad faith registration and use.
No formal response was received from the Respondent. However, the Respondent sent two email communications to the Center, the first dated April 6, 2011 in which it stated:
“I am not a native english speaker. My English may be deficient. Consequently, I would desire using Spanish or Catalan in this dispute.
The Center replied by email on April 7, 2011, stating that as English was the language of the registration agreement, it would also be the language of the proceedings.
The Respondent’s second communication of April 7, 2011 read as follows:
“ Muy bien, entiendo que yo firmé esa cláusula y debo aceptarla, pero es evidente que nadie se lee todas las cláusulas que firma o acepta. En cualquier caso me parece abusivo que no estéis dispuestos a usar un lenguaje cómodo para mí, con todos los recursos de los que dispone una farmacéutica como Sanofi-Aventis, pues como se ve en este caso, está dispuesta a malbaratar una considerable suma de dinero en esta disputa, cuando yo les ofrecía una solución muy equitativa, que haré pública más adelante probablemente. Así que me considero indefenso. Una empresa está dispuesta a tirar una cantidad de dinero ingente tal como demostraré en contestaciones posteriores, y no es capaz de cambiar la lengua del procedimiento... ya sabía que jugaban sucio la mayoría de las farmacéuticas, pero tanto no. Priorizan los recursos de una forma incomprensible para mi intelecto, o puede que no necesiten ni priorizar sus recursos. Ahora bien, sus clientes sí que los saben priorizar o discriminar (en sentido económico)...”
“Okay, I understand that I signed that clause and should accept it, but it is clear that no one reads all the terms one signs or accepts. In any case it seems unfair that you are not willing to use a language comfortable for me, with all the resources that a pharmaceutical company like Sanofi-Aventis has, which as seen in this case, is willing to throw away a considerable sum of money in this dispute, when I offered a very equitable solution, which I will probably later make public. So I feel helpless. A company is willing to throw a huge amount of money as I will show in subsequent responses, and is not able to change the language of proceedings ... I knew that most pharmaceutical companies played dirty, but not this dirty. They prioritize resources in a manner incomprehensible to my intellect, or maybe they do not even need to prioritize their resources. However, their clients do know how to prioritize or discriminate (in a financial way)…”
The Center replied again by email on April 11, 2011, reiterating that as English was the language of the registration agreement, it would also be the language of the proceedings.
In the absence of any formal reply by the Respondent to the Complainant’s contentions, the Respondent is in default. In the absence of any exceptional circumstances explaining the default, in accordance with paragraphs 14(a) and (b) of the Rules the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s effective default.
6. Language of Proceedings
The Complaint was filed in English and all correspondence between the Center and the parties in this case, apart from the Respondent’s email of April 7, 2011 has been in that language.
Under Paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In this case, the registration agreement as annexed to the Complaint is in English. The parties have not agreed any other language between them. It is clear from Paragraph 11(a) of the Rules that the Panel has a discretion to order the proceedings to be conducted in another language, having regard to the circumstances of the proceeding. However, in exercising this discretion the Panel has an obligation to act with care, taking into account factors such as the parties’ command of the relevant language, time and costs, with the aim of ensuring fairness to both parties (see inter alia Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Respondent is clearly able to understand at least basic English since its communications dated March 15, 2011 to the Complainant and April 6, 2011 to the Center were both in that language. The Respondent claims that it would be prejudiced by the use of English in the proceedings, but it has given no information on the extent of the prejudice that it would suffer. Given that the Respondent accepted English as the language of any future administrative proceedings when it registered the disputed domain name and has willingly used English in communications, the extent of any prejudice arising from the use of that language in this proceeding is questionable. In its email of April 7, 2011 to the Center, the Respondent did not, moreover, attempt to develop its claim to likely prejudice following notification that the proceedings would be in English, instead choosing to criticize the Complainant for not being willing to change the language of proceedings despite being a large corporation with the financial resources to proceed in another language (it should be noted, however, that there is no evidence that the Respondent actually asked the Complainant to consider the use of a different language).
In the Panel’s view, the mere fact that the Complainant is a large and well-funded adversary that might be able to afford the cost of translating the Complaint and supporting documents into the Respondent’s preferred language is not sufficient justification for an order that the proceedings should be conducted in a language other than that of the registration agreement. As indicated above, the Respondent appears to understand at least some English and has made no effort, even in Spanish, to elaborate on the nature and extent of the disadvantage he claims he would be under if the proceedings are conducted in English. The Complainant is French and, were the Panel to require the proceedings to take place in Spanish or Catalan, would incur significant translation costs, a burden that does not appear to be appropriate in circumstances where the Respondent has accepted English as the relevant language in its registration agreement and has shown its ability to communicate in English in correspondence. Taking all these factors into account, there is no evidence that the Respondent would be seriously prejudiced by the proceedings taking place in English rather than Spanish or Catalan, and that, on the contrary, to require the Complaint to be conducted in one of those two languages would impose an additional burden of costs on the Complainant and would result in delay in the proceedings, consequences which do not, for the reasons already given, appear to be justified by the circumstances of the case.
The Panel is therefore content that the proceedings have been brought in the appropriate language. The Panel will therefore consider and decide the Complaint in English.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns registered trademark rights in SANOFI AVENTIS in countries throughout the world dating from as early as 2004.
The disputed domain name contains the whole of the Complainant’s registered trademark, differing only in the addition of a hyphen between “sanofi” and “aventis”, the generic word “shares”, and the domain name suffix “.info”. The hyphen is a non-distinctive element commonly used to denote spaces between words in domain names, and the domain name suffix “.info” is also non-distinctive. The remaining element, the word “shares”, is descriptive of a common form of investment in publicly-traded companies like the Complainant. It is apparent from the annexes to the Complaint that the Complainant provides information relating to shares in its company on its own website, and it is common experience that many other publicly-traded companies do the same, since their financial well-being depends in part on stock performance and attracting investors. Taking all this into account, it is likely that some Internet users will assume that the disputed domain name is that of, or is in some way connected to, the Complainant and that it links to information about shares in the Complainant’s company.
Numerous other panel decisions have also found that the combination in a disputed domain name of a complainant’s trademark and generic or descriptive words, particularly those which are in some way relevant to a complainant’s business, does not avoid a finding of confusing similarity with a complainant’s mark (see e.g. ALSTOM v. Stockmarket Domains, WIPO Case No. D2008-1542; ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117; and American Automobile Association, Inc. v AAA-Vacationsunlimeted, WIPO Case No. D2009-0373).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered SANOFI AVENTIS trademark.
B. Rights or Legitimate Interests
Although the Respondent filed no formal response, its email of March 15, 2011 to the Complainant stated that the Respondent had registered the disputed domain name because it “only wanted to analyse its financial information in this domain”. This vague assertion does not, however, provide a basis for finding that the Respondent has a right or legitimate interest in using a domain name that is confusingly similar to the Complainant’s trademark.
The Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain name. That is not, however, the end of the matter. Under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. This paragraph is relevant here because although the Respondent has filed no formal response, it is nonetheless clear from the Complaint that the Respondent has been using the disputed domain name to link to a generic PPC landing page hosting commercial links to third-party websites in various fields, including health and finance. If this use amounts to a bona fide offering of goods or services pre-dating notice to the Respondent of the dispute, then the Complaint will fail under the second arm of the Policy.
Panels have recognised that the provision of pay-per-click links through a landing site may amount to a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy, where the domain names consist of dictionary words and their value as links to PPC landing sites is linked to the dictionary meanings, rather than to any trademark significance (see inter alia mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-0141).
In this case, however, the disputed domain name consists of an element essentially identical to the Complainant's trademark, which has no dictionary meaning, coupled with the descriptive word, “shares”. In the Panel’s view, the value of attraction in the disputed domain name does not reside in the mere generic word, “shares,” but rather in the presence of the Complainant’s distinctive trademark, which modifies the descriptive term. That the landing site contains links related to health, which broadly encompasses the Complainant's field of activity, as well as to finance, which is relevant to investment in publicly-traded companies like the Complainant, supports this conclusion.
Panels have frequently found that landing pages using domain names whose value as attractors is linked to trademark meaning are in themselves evidence of cybersquatting behaviour (see inter alia mVisible Technologies, Inc. supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-0448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; and Brink's Network, Inc. v. Asproductions, WIPO Case No. D2007-0353).
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name is confusingly similar to the Complainant's SANOFI AVENTIS trademark, and the Respondent has used it to host PPC links to third-party websites on topics including health, the field in which the Complainant trades, and finance, in which the Complainant is also active in the provision of share information for investors.
The Complainant asserts, and the Respondent has not denied, that the SANOFI AVENTIS brand is internationally well-known in the pharmaceuticals field as the name of the largest pharmaceutical company in Europe, where the Respondent is based, and the fourth largest in the world. When contacted by the Complainant before these proceedings began, the Respondent claimed to have registered the disputed domain name because it “only wanted to analyse its financial information in this domain”. If the Respondent had not been aware of the Complainant, it is highly unlikely that it would have thought to register the disputed domain name nor perceived it as potentially valuable.
The Panel concludes that the Respondent was aware of the Complainant's SANOFI AVENTIS trademark at the time that it registered the disputed domain name, and that such awareness prompted the registration.
Under paragraph 4(b)(iv), the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on it.
In this case, the Respondent deliberately set out to derive PPC revenue from Internet users by creating a likelihood of confusion with the Complainant's trademark. It adopted a confusingly similar domain name and has used it to host PPC links to third-party websites including sites relating to health, the Complainant's own field of activity, and finance, in which the Complainant is active through the provision of information on Sanofi-Aventis shares. As such, the Respondent stood to gain financially from Internet users drawn to its website under the mistaken belief that the disputed domain name linked to a website provided or endorsed by the Complainant for the promotion of investment in its company. Upon arrival at the Respondent’s website some Internet users would no doubt perceive that it was probably not related to or endorsed by the Complainant, but that does not deflect from the fact that traffic to the site is most likely to have arisen as the result of confusion, and once at the Respondent’s site the only options available were links to websites of third parties including in the fields of health and finance. Conduct like this is inherently misleading, and panels have previously found that the use of a confusingly similar domain name to lure Internet users to a site hosting links to third-party websites, and in particular to websites providing information on competing products or services, is evidence of bad faith (see inter alia mVisible Technologies, Inc. supra; Mudd, (USA) LLC v. Unasai, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).
The Panel finds that the Respondent both registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) 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-aventisshare.info>, be transferred to the Complainant.
Dated: May 30, 2011