WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Contactprivacy.com / Domain Management
Case No. D2011-0574
1. The Parties
The Complainant is Sanofi-aventis of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.
The Respondent is Contactprivacy.com of Ontario, Canada / Domain Management of New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sanofigenzyme.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2011. On March 30, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 30, 2011, Tucows 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 1, 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 4, 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 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2011.
The Center appointed Mauricio Jalife Daher as the sole panelist in this matter on May 25, 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
Sanofi-aventis has been formed during the year 2004 as a result of merger between the two French companies Aventis SA and Sanofi-Synthelabo. Completion of the transaction created the nº 2 pharmaceutical group in Europe, n° 4 in the world, with consolidated net sales of € 30.384 billion in 2010, in the core business and a strong direct presence on all major world markets.
Sanofi-aventis is a multinational company settled in more than 100 countries around 5 continents. The new group benefits from a large portfolio of high-growth drugs. Sanofi-aventis' Research and Development portfolio includes 55 projects in clinical development, 13 of which are at advanced stages.
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.
The Complainant owns registered trademarks for SANOFI and SANOFI AVENTIS in several countries of the world including in major markets, and also owns a family of domain names to reflect its trademark and business activities on the Internet.
The trademark SANOFI is registered in Canada, the European Union through a Community Trademark, and in several countries through an International Registration.
Additionally, the trademark SANOFI AVENTIS is registered, among other countries, in Australia, Georgia, Japan, Republic of South Korea, United States of America, Switzerland, China, Cuba, Romania, Russian Federation and Ukraine, through an International Registration, as well as in the European Union through a Community Trademark, as well as in France and Canada.
As evidenced by the Complainant with the material provided in the Complaint as Annexes, on July 23, 2010, the public press announced an informal approach of Sanofi-aventis to buy Genzyme Corporation. On February 16, 2011, Sanofi-aventis and Genzyme Corporation announced that both agreed for the acquisition of Genzyme by Sanofi-aventis.
The Complainant filed the Complaint with the Center on March 30, 2011, the administration of which has been carried out in accordance with the UDRP as described in the previous section. Previously, the Complainant had sent a cease and desist letter to the Respondent, which was responded with an offer to sell the domain name for a price considered by the Panel higher that the acquisition price of the same.
The disputed domain name was registered on July 29, 2010.
The Respondent did not file any response or documents in accordance with this proceeding, as noted by this Panel.
5. Parties’ Contentions
The Complainant is requesting the cancellation of the disputed domain name <sanofigenzyme.com>, based on its rights to the trademarks SANOFI and SANOFI AVENTIS, along with the use of its trademark in the pharmaceutical business. Also the Complainant has shown a legitimate connection with the additional word included in the disputed domain name, that is, Genzyme, since Genzyme became a part of the Sanofi-aventis group (as is evidenced in the file), and it was just after the possibility of this business acquisition became public that the Respondent registered the disputed domain name.
The Complainant states that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant contends that the Respondent does not have any prior right to the Complainant’s SANOFI trademark nor the mark GENZYME, has not been licensed by the Complainant to use its trademarks, and has no relationship whatsoever with the Complainant. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, and is therefore not making a legitimate noncommercial or fair use of the domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. In particular, the Complainant contends that the Respondent’s bad faith registration of the disputed domain name is evidenced by the fact that the registration occurred soon after publication of a rumor that the Complainant would acquire Genzyme Corporation, this being opportunistic cybersquatting. Further, the Complainant contends that the Respondent’s bad faith use of the disputed domain name is additionally evidenced by the fact that the same leads to a parking website and has been registered only for the purpose of selling it, as is mentioned on the web page displayed for the domain name and which is further reinforced by the response to the cease and desist letter sent by the Complainant to the Respondent, in which the latter offered to sell the domain name to the Complainant for the amount of €750.00.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <sanofigenzyme.com> is, in its main part, identical to the Complainant’s trademark SANOFI, which is duly registered, as evidenced by the Complainant, in an important number of jurisdictions throughout the world. In addition, it is also a proven fact in the case that there is a business connection between the Complainant, Sanofi-aventis, and the last word in the disputed domain name, Genzyme.
The Complainant has precisely and very importantly cited several precedents of decisions issued by other Panels that have found that the inclusion of the Complainant’s trademarks as the main and most important element of domain names constitutes the existence of identity or confusing similarity between the trademarks and the domain names, which this Panel has determined should also apply in this case.
In conclusion, the disputed domain name is identical, in the main part, to a registered trademark of the Complainant and also includes a commercial name linked to the Complainant’s business group.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the Respondent may lack a right or a legitimate interest in the domain name.
The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s trademarks SANOFI or SANOFI AVENTIS. The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name that incorporates the Complainant’s mark.
The Respondent has not filed a reply to the Complaint and has therefore not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The Respondent is not affiliated in any manner to the Complainant, but is using the Complainant’s trademark to divert Internet users to a parked website, which further offers the domain name for sale.
The use of the domain name as a parked website is not a bona fide noncommercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website available at the disputed domain name is not developed by the Respondent but provided by the Internet Service Provider.
Further, nothing in the record suggests that the Respondent is making any other legitimate noncommercial use of the domain name or registered the domain name as a descriptive, non-source identifying domain name in order to inform about the Complainant’s products or related matters.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
Given the substantial use and wide recognition of the Complainant’s SANOFI and SANOFI AVENTIS trademarks, it is almost impossible to believe that the Respondent was unaware of the Complainant’s trademark when the disputed domain name was registered. Indeed, the fact that registration of the disputed domain name followed soon after publication of a rumor that the Complainant would acquire Genzyme Corporation puts beyond doubt that the Respondent intentionally included the Complainant’s SANOFI trademark and the trade name Genzyme in the disputed domain name.
The Panel considers that the Respondent has registered and used the domain name <sanofigenzyme.com> in bad faith. Both sections of the domain name sanofi and genzyme are obviously connected with a well-known entity that its very use by someone with no connection to the Complainant suggests opportunistic cybersquatting, especially when the domain name registration was effected within days of an announcement concerning the acquisition of Genzyme Corporation by Sanofi-aventis.
Additionally, it is important to note that, from the Panel’s analysis of the case documents, specifically regarding the “WhoIs” information verification provided by the Registrar, the Panel noted that the Administrative Contact for the domain name is S [.] Hussain1. The information is relevant to the case when considering that Mr. Hussain has been respondent in at least 11 cases filed before the Center, which would allow the Panel to deem the Respondent as a reiterated cybersquatter as regards the names of well-known entities. Based on the previous adjudications against him indicating bad faith, the Panel finds that the domain name was registered and is used in bad faith in this case as well.
Finally, the failure of the Respondent to respond to the Complaint further supports an inference of bad faith Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787 (<bmwdealer.com>).
In conclusion, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sanofigenzyme.com> be cancelled.
Mauricio Jalife Daher
Dated: June 8, 2011
1 Both the Respondent and the Administrative Contact for the domain name share the same postal address.