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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Kevin Murdock/Med Chem, Inc/Vessel Medical, Inc

Case No. D2013-2086

1. The Parties

The Complainant is Sanofi of Antony, France, represented by Selarl Marchais & Associés, France.

The Respondent is Kevin Murdock/Med Chem, Inc/Vessel Medical, Inc. of United States of America (“US”), represented by Timothy J. Monahan, US.

2. The Domain Name and Registrar

The disputed domain name <buysanofifluzone.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2013, the Registrar 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 December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. The Response was filed with the Center on December 31, 2013.

The Center appointed George R. F. Souter as the sole panelist in this matter on January 14, 2014. 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.

On January 16, 2013, the Panel issued a Panel Order requiring the Complainant to resolve an ambiguity in the remedy requested under Section VII of the Complaint, and an amended Complaint was submitted on January 17, 2013, which resolved this issue to the Panel’s satisfaction.

4. Factual Background

The Complainant is a multinational pharmaceutical company operating in over 100 countries, with circa 110,000 employees and global sales in 2012 of EUR 34.9 billion.

Details of geographically-extensive registrations of the Complainant’s trademark SANOFI, dating from 1988, together with details of French trademark registration No. 1648963, dating from January 16, 1991, of the trademark FLUZONE by the Complainant’s vaccine division, have been supplied to the Panel.

The disputed domain name was registered on July 28, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its trademark SANOFI is distinctive and well-known, and has provided the Panel with details of a number of prior decisions under the Policy in which the well-known status of its SANOFI trademark has been acknowledged.

The Complainant alleges that the dominant part of the disputed domain name <buysanofifluzone.com> is its trademarks SANOFI and FLUZONE conjoined, and that the disputed domain name is overall confusingly similar to these conjoined trademarks. The Complainant also draws the Panel’s attention to the decision in Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903, in which the panel held that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.

The Complainant contends that UDRP panels in prior decisions consistently held that the mere addition of descriptive words to well-known trademarks is insufficient to avoid a finding of confusing similarity, and argues that “buys” is, in the circumstances of the present case, a descriptive word which would merely suggest to Internet users that the disputed domain name is used as an on-line website to sell the Complainant’s products.

The Complainant also draws the Panel’s attention to the decision in Hoffmann-La Roche v. Chesnokov, WIPO Case No. D2013-1614, in which, inter alia, the word “buy” was held to be non-distinctive when added to the well-known trademark of the complainant in the domain name at issue in those proceedings.

The Complainant alleges that the Respondent has no rights or legitimate interest in respect of the disputed domain name, in particular that there is nothing in the Respondent’s name which could confer such rights or justification. The Complainant states that it has neither licensed nor otherwise authorized the Respondent to use its trademarks or to incorporate them in any domain name, consequently there is no relationship whatsoever between the Complainant and the Respondent which could confer rights or legitimate interest on the Respondent with respect to the disputed domain name. The Complainant also avers that the Respondent cannot take advantage of paragraph 4(c)(i) of the Policy, as the disputed domain name has not yet been taken into use.

The Complainant alleges that the Respondent had foreknowledge of the Complainant’s trademarks, and that the disputed domain name was registered in bad faith. Although the disputed domain name is not currently in use, the Complainant contends that it is being used in bad faith and that the Complainant has a legitimate concern that the disputed domain name, if taken into use, would be detrimental to its interests, and draws the Panel’s attention to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which the circumstances for regarding a passive registration as use in bad faith were laid out.

B. Respondent

The Respondent acknowledges that the disputed domain name refers to Sanofi (the Complainant’s) FLUZONE product, but argues that the Complainant does not mention in the Complaint that it conducts on-line retailing, nor has any evidence been presented that multinational pharmaceutical companies generally offer on-line retail sales. Accordingly, consumers encountering an operating website would believe that a distributor, one or more tiers removed from the Complainant, would be offering the products. Thus, there would be no likelihood of confusion between the disputed domain name and the Complainant’s trademarks and domain names.

The Respondent claims that it has been a bona fide distributor of the Complainant’s products since 2006, and that over the past five years the Respondent can account for over one million US dollars in sales of the Complainant’s FLUZONE product. A list of products which the Respondent has purchased from the Complainant has been supplied to the Panel, with the actual sales figures redacted.

The Respondent states that it has experienced rapid growth in its business, and has not yet launched its website under the disputed domain name. The Respondent states that its intention towards the website to be operated under the disputed domain name is that it would solely offer the Complainant’s product, that the website would be independent, with no links to other websites where third party products are offered, and that retail customers would be able to browse the website and place orders without having to link to another website to “checkout”.

The Respondent submits that it is a bona fide user of the disputed domain name, consistent with the criteria set out in Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the the gTLD “.com” indicator to be irrelevant in the present case.

The Panel accepts that SANOFI is a well-known trademark, and that SANOFI FLUZONE is the predominant part of the disputed domain name.

The test of paragraph 4(a)(i) is whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The question arises whether SANOFI FLUZONE can be regarded as “a trademark” within the meaning of paragraph 4(a)(i). It is common practice for a “house mark” and a “product mark” to be used conjointedly, although perhaps registered separately. Conjoint use of a house mark and a product mark, such as AUDI QUATTRO, for example, gives rise to common law rights in the combination of the two marks. The Complainant referred in the Complaint to its registration of the domain name <fluzone.com>. The Panel has examined the website operated under this domain name, and the house mark SANOFI is clearly visible in addition to the product mark FLUZONE, although not juxtaposed. The Panel considers it not unreasonable to regard SANOFI FLUZONE as satisfying the term “a trademark” as set out in paragraph 4(a)(i), and, accordingly, finds that SANOFI FLUZONE can be regarded as “a trademark”, as set out in paragraph 4(a)(i) of the Policy.

It is quite clear in the present case that the disputed domain name is not identical to the SANOFI FLUZONE trademark.

The remaining question is whether the disputed domain name is confusingly similar to the Complaint’s trademark. It has been the invariable practice of panels in UDRP proceedings, so far as the Panel is aware, to attempt to answer this question by comparison of the disputed domain name and the trademark invoked side by side, to determine whether confusion would be likely to arise if a representative member of the consumer group most likely to attempt a purchase of the trademarked product or service was confronted with the disputed domain name in his purchase search. The Panel is aware that it is well-established in prior decisions under the UDRP that the mere addition of a descriptive element to a trademark is insufficient to avoid a finding of confusing similarity, and generally agrees with this proposition. In the particular circumstances of the present case, however, the Respondent argues that, in view of the Respondent’s intended use of the disputed domain name, and in the absence of evidence that pharmaceutical companies generally offer on-line retail sales of their products, no confusion is likely to arise. In its Complaint however, the Complainant lists a significant number of domain names including the trademark SANOFI, and one including the trademark FLUZONE, and states that most of these are registered and used by the Complainant in connection with its activity. The “activity” of the Complainant in connection with such use clearly involves, in the Panel’s view, the sale of its products through e-commerce. This, the Panel concludes, is sufficient for him not to depart from the position well-established in prior decisions under the UDRP that the mere addition of a descriptive element to a trademark is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case he finds that the word “buy” is a non-distinctive descriptive element, and that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. To have found differently, in the Panel’s view, would have been to open the door to unauthorized use of trademarks, which is clearly contrary to the intent of the UDRP.

B. Rights or Legitimate Interests

The Respondent referred to the criteria set out in Oki Data Americas Inc. v. ASD Inc, WIPO Case No. D2001-0903 as to bona fide use, and claimed to have met these criteria. However, the only evidence presented was details of purchases of products from the Complainant. In the Oki Data case (supra) minimum requirements were set out for use to be bona fide, but these depended on the use of the disputed domain name to be authorized by the complainant. No evidence of authorization was presented by the Respondent, and the Complainant specifically stated it has neither licensed nor otherwise authorized the Respondent to use its trademarks or to incorporate them in any domain name, consequently there is no relationship whatsoever between the Complainant and the Respondent which could confer rights or legitimate interests on the Respondent with respect to the disputed domain name. In the absence of sight of evidence attesting to authorization by the Complainant to use of its trademarks by the Respondent in connection with the disputed domain name, the Panel considers that the Respondent cannot rely on the so-called “Oki Data criteria”. In any event, the Respondent is not currently using the disputed domain name, and the Oki Data case included in the minimum requirements for bona fide use that the Respondent must actually be offering the goods or services at issue under the disputed domain name, and the panel in that case referred to the prior decision in World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306, where the respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering, and was held to lack rights or legitimate interests in the disputed domain names at issue in the case. The Panel, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Respondent has openly admitted to being aware that SANOFI and FLUZONE were trademarks of the Complainant, as making it appropriate for him to find that the disputed domain name was registered in bad faith.

In the Panel’s opinion, the Complainant has a legitimate concern that the disputed domain name could simply be activated at any time, and in the circumstances outlined by the Respondent, to its detriment.

Such legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the panel’s reasoning in that case, and, accordingly, finds in the circumstances of the present case, in which the Respondent’s stated intention as to future use of the disputed domain name would, in the Panel’s opinion, clearly not be legitimate in view of the Complainant’s rights in the trademarks SANOFI FLUZONE, that the disputed domain name is being used in bad faith and that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <buysanofifluzone.com> be cancelled.

George R. F. Souter
Sole Panelist
Date: January 29, 2014

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