WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Contact Privacy Inc. Customer 0129138820 / ICS INC.
Case No. D2012-1314
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Contact Privacy Inc. Customer 0129138820 of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, British Overseas Territory of United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <sanofi-avenits.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2012. On June 27, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 27, 2012, 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 June 28, 2012, 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 June 28, 2012.
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 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2012.
The Center appointed Fabio Angelini as the sole panelist in this matter on July 26, 2012. 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
Briefly summarized, the Complainant is a French pharmaceutical multinational headquartered in Paris (France). It was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. With consolidated net sales of EUR 33.3 billion in 2011, with commercial presence in more than 100 countries on all 5 continents and employing 110,000 people, it ranks as the 4th world's largest multinational pharmaceutical company by prescription sales. The Complainant holds an impressive number of domain names as well as trademark registrations for SANOFI-AVENTIS - which the Complainant holds to be a famous and well known mark - among which national registrations, French and Canadian registrations, as well as Community Trademark registrations and International registrations extended to a large number of countries like United States, although admittedly not to the Cayman Islands where allegedly the Respondent resides.
All of the above-mentioned trademarks and domain names were registered prior to the registration of the disputed domain name <sanofi-avenits.com> on October 17, 2011.
5. Parties’ Contentions
As for the first element, the Complainant argues that the disputed domain name is confusingly similar with the Complainant's trademarks since the only difference between the Complainant's trademarks and the disputed domain name <sanofi-avenits.com> is in a purposeful misspelling, namely, the inversion of the letter “i” with the letter “t” in the word “aventis”. From a visual and typographical point of view, this inversion must be considered as merely insignificant given that the two letters and the words themselves have a very similar appearance. The Respondent's registration of the disputed domain name, which varies from the Complainant's trademark by only one letter, appears to be indicative of the practice referred to as “typosquatting”.
As for the second element, the Complainant argues that the Respondent does not have any rights or legitimate interests in using the disputed domain name since its name does not bear any resemblance with the words “Sanofi-Aventis”, which have no particular meaning and are therefore highly distinctive. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant. In addition, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. Consequently, there is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainant’s trademarks and domain names for its own use and incorporated them into the disputed domain name without the Complainant’s authorization. Finally, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer rights or legitimate interests in it since the disputed domain name is used for a parking website and has been registered only for the purpose of selling it, as it is clearly mentioned on the Respondent’s web page.
As for the third element, the Complainant argues that in light of the preceding circumstances and the fact that its trademarks are well-known and famous, the Respondent registered and is using the disputed domain name in bad faith, since the Respondent must have been undoubtedly aware of the rights that Complainant had over the trademarks SANOFI-AVENTIS and must have been as well aware of the risk of deception and confusion that would inevitably arise among Internet users worldwide from the registration of the disputed domain name and yet continues to use it as a portal where third parties' services are advertised.
Based upon the foregoing the Complainant requests the cancellation of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel agrees with the Complainant that since the only difference between the Complainant trademarks and the disputed domain name <sanofi-avenits.com> is in a misspelling, namely the inversion of the letter “i” with the letter “t” in the word “aventis”, there is a high similarity which may easily lead Internet users into confusion and therefore the Panel is satisfied that the first element has been proven.
B. Rights or Legitimate Interests
While under the UDRP rules the burden of proof on the existence of the second element should be satisfied by the Complainant, panels have recognized the difficulty of proving a negative fact which requires information that normally the respondent possesses. Therefore, panels have held that once a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. (De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
The Panel finds that the Complainant has made a sufficiently convincing prima facie case that the Respondent lacks rights or legitimate interests, given that the Respondent's name is not and does have any resemblance with “Sanofi-Aventis”, that there does not appear to be a relationship between the parties and the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer rights or legitimate interests in it since the disputed domain name is used for a parking website and appears to have been registered for the purpose of selling it, as it is mentioned on the Respondent’s web page.
In light of the foregoing and in absence of any contrary argument by the Respondent, the Panel is satisfied that the second element has been proven.
C. Registered and Used in Bad Faith
In order for the panel to find that a domain name was registered and is being used in bad faith, the panel must examine separately two issues: 1) whether or not bad faith existed when the domain name was registered; and 2) whether or not the domain name is being used in bad faith.
It is not always easy to draw a clear line between these two circumstances, given that the former requires the evaluation of a static event, while the latter requires examining the dynamics of a conduct during a period of time and the Panel is also aware that many instances it is quite difficult to keep these two circumstances separated.
That said, as for the first condition, the Panel must preliminary note that the Complainant argued that the Respondent had registered the disputed domain name in bad faith because it “had in 2011 already attempted to typosquat on Complainant’s trademarks, leading to a UDRP proceeding No. D2011-0574, Sanofi-aventis v. Contactprivacy.com / Domain Management, dated June 8th 2011” and being “recidivist” in UDRP proceedings is normally considered prima facie evidence of bad faith.
However, Contact Privacy appears to be merely the Privacy Service the registrant of the disputed domain name, namely, ICS INC., has used for registration purposes. The Panel notes that no evidence has been proffered to indicate the latter have ever been “recidivist”.
In the absence of evidence which might have been construed to directly allow the Panel to find bad faith at registration date, the Panel must look at a combination of factors which, put together, might support a reasonable inference of bad faith a registration date.
The Complainant also argues, in essence, that since its trademark is well known throughout the world the Respondent “should have known it”. The Complainant argues that “the domain name has been registered for the purpose of attracting Internet users to the Respondent’s website and making unfair benefit of its reputation and goodwill, by creating a likelihood of confusion between SANOFI and SANOFI-AVENTIS trademarks and domain names and the domain name <sanofi-avenits.com>”.
The Panel notes that previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
In the present case, the Panel, on the basis of the evidence provided and in the absence of any contrary argument by the Respondent, finds it reasonable to agree with the Complainant's argument that the Respondent was in bad faith at the time of registration.
As to the second factor, the Panel is persuaded that the Respondent is using the disputed domain name in bad faith since the disputed domain name is used as a referral portal which contains a number of hyperlinks offering various kinds of services concerning the pharmaceutical field offered by third parties. Since Internet users may land to website corresponding to the disputed domain name only by mistyping the Complainant's trademark, such cannot be held to correspond to a bona fide commercial or noncommercial use. The Respondent's use of the disputed domain name is deliberately trying to gain unfair benefit from the renowned and widespread knowledge of the Complainant's trademark.
As a result, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sanofi-avenits.com> be cancelled.
Date: August 7, 2012