WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi, Genzyme Corporation v. Domain Privacy
Case No. D2016-1193
1. The Parties
The Complainants are Sanofi of Paris, France and Genzyme Corporation of Cambridge, Massachusetts, United States of America (“US”), both represented by Selarl Marchais & Associés, France.
The Respondent is Domain Privacy of Karachi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <genyzme.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2016. On June 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2016.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 5, 2016. 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 Complainants are Sanofi and Genzyme Corporation, the latter being the registered owner of numerous trademark registrations for GENZYME. In particular, US trademark No. 1859429 filed on September 27, 1993 and registered on October 25, 1994 for goods in class 5, namely pharmaceutical preparation for use as an enzyme replacement and for the prevention of adhesions during surgery.
The Respondent registered the disputed domain name <genyzme.com> on October 10, 2015. It results from the Complainants’ documented allegations that no content is displayed on the website to which the disputed domain name resolves.
5. Parties’ Contentions
The Complainants allege that Sanofi is a French multinational pharmaceutical company headquartered in Paris, France, ranking as the world’s fourth largest multinational pharmaceutical company by prescription. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale. Sanofi is settled in more than 100 countries on all five continents employing 110,000 people. In addition, the Complainants state that Genzyme Corporation is an American biotechnology company founded in 1981 and owned by Sanofi. In 2010, Genzyme Corporation was the world’s third-largest biotechnology company employing more than 11,000 people around the world. As a subsidiary of Sanofi, it has a presence in approximately 65 countries, including 17 manufacturing facilities and nine genetic-testing laboratories; its products are sold in 100 countries. Additionally the Complainants hold domain name registrations for <genzyme.fr>, <genzyme.com>, <genzyme.cn>, <genzyme.net>, <genzyme.org>, <genzyme.com.cn> which were registered long before the disputed domain name (i.e., <genyzme.com> was registered on October 10, 2015). Most of these domain names are registered and used by the Complainants in connection with their activities.
On January 7, 2016, the Complainants sent a cease-and-desist letter by email to the Respondent in which they explained that the use of the disputed domain name constituted a breach of the Complainants’ prior rights over the trademark GENZYME and requested the immediate transfer of the disputed domain name. The Respondent did not answer to this letter.
The Complainants contend that the disputed domain name is confusingly similar to the GENZYME trademark, domain names and corporate name. In particular, the disputed domain name reproduces or at least imitates GENZYME trademark and domain names, which as themselves do not have any particular meaning and are therefore highly distinctive. In addition, Sanofi, the parent company of Genzyme Corporation, has used its trademark and trade name Sanofi for over 40 years and promotes it in countries all over the world. In the Complainants’ view, the GENZYME trademark benefits therefore from an uncontested reputation as induced in Sanofi-aventis v. Contactprivacy.com / Domain Management, WIPO Case No. D2011-0574. Moreover, the only difference between the disputed domain name <genyzme.com> and the trademark GENZYME is the purposeful inversion of the letters “y” and “z”, which is insignificant to alleviate the likelihood of confusion between the trademark and the disputed domain name and is a fortiori indicative of the practice referred as “typosquatting”.
The Complainants further contend that the Respondent has no prior rights or legitimate interests in the disputed domain name, since the name “Domain Privacy” does not bear any resemblance with the term “Genzyme” which has no meaning and is highly distinctive. Furthermore, “Domain Privacy” is not the real registrant. The Complainants have not licensed otherwise authorized the Respondent to use the trademark GENZYME or to register any domain name including that trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is it using it in connection with a bona fide offering of goods or services. In fact, the disputed domain name simply refers to an inactive page.
Finally, the Complainants contend that the Respondent registered and uses the disputed domain name in bad faith. In particular, they contend that the disputed domain name has been registered in bad faith for the primary purpose of gaining unfair benefit of the Complainants’ reputation. The absence of legitimate interests induces the absence of good faith. Furthermore, the Complainants hold that in view of the GENZYME trademark’s distinctiveness the Respondent is likely to have known of the existence of the trademark when registering the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use thereof. Furthermore, according to the Complainants, the disputed domain name has been registered for attracting Internet users to the Respondent’s website by creating a likelihood of confusion, or at least an impression of association, between the trademark and domain names GENZYME and the disputed domain name. In this regard, the Complainants hold that Sanofi is one of the world leading pharmaceutical companies and Genzyme Corporation as well as the GENZYME trademark enjoys a worldwide reputation. According to the Complainants the Respondent must therefore have been aware of the risk of deception and confusion that would arise from the registration of the disputed domain name, since it could lead Internet users to the litigious page while they were searching for the official website of the Complainants. Finally, the Complainants contend that the fact the disputed domain name is not being used could lead Internet users to believe that the Complainants are not present on the Internet or worse, that the Complainants are out of business. Moreover, the Respondent’s failure to express explanation in response to the cease-and-desist letter reinforces the inference of bad faith registration and use.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or 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.
The Panel is satisfied that the Registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
The Panel is of the view that both Complainants, one being the parent company of the other, have a common grievance against the Respondent, and allows the Complaint to proceed to a decision as filed by multiple complainants.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainants must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights.
It results from the evidence provided that the Complainant Genzyme Corporation is the registered owner of various trademarks for GENZYME. Reference is made in particular to US trademark No. 1859429 filed on September 27, 1993, and registered on October 25, 1994, for goods in class 5. The trademarks and the corporate name predate the registration date of the disputed domain name which is October 10, 2015.
There is a consensus view among UDRP panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.10). In the light of the above, it is the Panel’s view that the inversion of two adjoining letters of the disputed domain name <genyzme.com> in the case at hand (in which “y” follows “z” in the sequence of the letters) is to be considered as a common or obvious misspelling of the GENZYME trademark (in which “z” follows “y” instead). In fact, taking in consideration the English alphabet the letter “y” typically follows the letter “z” and their inversion is a common typing mistake. Furthermore, the misspelled term “genyzme” constitutes the only and therefore dominant element of the disputed domain name’s second level domain.
The Panel has therefore no doubt that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainants must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the unrebutted allegations stated above, the Complainants have made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g., Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320). In addition, the Respondent’s concealment of its identity behind a privacy service is also taken in consideration, and this Panel finds that it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainants’ registered trademark GENZYME by registering a domain name consisting of that trademark and the distinctive part of one of the Complainants’ trade names with the intent to attract Internet users for commercial gain.
Finally, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants are therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the Complainants’ undisputed allegations, the Respondent does not actively use the disputed domain name. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, WIPO Case No. D2016-0068; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel must therefore examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity (see WIPO Overview 2.0 at paragraph 3.2 with further references, and see Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra).
In the case at hand, the Panel finds that the Complainants did not submit substantial evidence in order to support their allegation as to the alleged reputation of the GENYZIME trademark. Nevertheless, it is the view of this Panel the further circumstances surrounding the registration, i.e., the Respondent’s failure to reply to the Complainants’ cease-and-desist letter, its failure to respond to this Complaint and the fact that the Respondent hides its identity behind a privacy shield, suggest that the Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith (see Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). This finding is supported by the further circumstance that the Complainants’ registered trademark has existed for over twenty years, this Panel concludes that the Respondent knew or should have known the trademark GENZYME when it registered the disputed domain name, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain name.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainants are therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy.
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 <genyzme.com> be cancelled.
Tobias Malte Müller
Date: August 15, 2016