WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi and Genzyme Corporation v. Kerry Yao
Case No. D2016-1799
1. The Parties
Complainant is Sanofi of Paris, France and Genzyme Corporation of Cambridge, Massachusetts, United States of America, represented by Selarl Marchais & Associés, France.
Respondent is Kerry Yao of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <lasfio.com> (the "Domain Name") 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 September 5, 2016. On September 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on September 13, 2016.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. In response to Respondent's requests for extension of the Response due date on September 20, 2016 and October 19, 2016, the Center further extended the Response due date to October 23, 2016. Respondent did not submit a response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on October 24, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 2, 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
Complainant Sanofi is a French multinational pharmaceutical company headquartered in Paris, ranking as the world's fourth largest multinational pharmaceutical company by prescription sales, with a presence in more than 100 countries and consolidated net sales of EUR 39.05 billion in 2015 and EUR 33.77 billion in 2014. Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also for over-the-counter medication. Sanofi offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. Historically, the company was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthelabo, and changed its name to Sanofi in May 2011.
Complainant Genzyme Corporation is an biotechnology company in the United States of America ("United States") founded in 1981 and owned by Sanofi. In 2010, Genzyme was the world's third largest biotechnology company, employing more than 11,000 people around the world. As a subsidiary of Sanofi, Genzyme has a presence in approximately 65 countries, including 17 manufacturing facilities and nine genetic-testing laboratories. Its products are sold in 100 countries.
Complainant is the owner of numerous trademarks for its LASFIO and LYSFIO marks, with registrations in the following countries in Nice Class 5 concerning pharmaceutical products:
(i) For LASFIO:
- US trademark application number 86/755,619, filed on September 14, 2015;
- EU trademark number 014646459 filed on October 7, 2015 and registered on March 28, 2016;
- Japanese trademark number 2016-022157, filed March 1, 2016 and registered on May 20, 2016;
- Argentina trademark application number 3 482 296, filed on March 1, 2016;
- Australian trademark application number 1755739, filed on March 01, 2016;
- Israeli trademark application number 283377, filed on March 1, 2016;
- Russian trademark application number 2016706117, filed on March 1, 2016;
- South African trademark application number 2016/05361, filed on March 1, 2016;
- Chilean trademark application number 1193677, filed on March 2, 2016;
- Mexican trademark application number 1721014, filed on March 3, 2016;
- Turkish trademark application number 2016/19262, filed on March 3, 2016;
- Indian trademark application number 3204511, filed on March 7, 2016;
- South Korean trademark application number 40-2016-0017451, filed on March 9, 2016;
- Tunisian trademark application umber TN/E/2016/00187, filed on March 11, 2016;
- Brazilian trademark application number 910690200, filed on March 29, 2016.
(ii) For LYSFIO:
- US trademark application number 86/755,623, filed on September 14, 2015.
- EU trademark LYSFIO, number 014649305, filed on October 7, 2015 and registered on April 26, 2016;
- Japanese trademark LYSFIO number 2016-022703, filed March 2, 2016 and registered on May 20, 2016;
- Brazilian trademark application number 910697086, filed on March 1, 2016;
- Canadian trademark application number 1770135, filed on March 1, 2016;
- Israeli trademark application number 283379, filed on March 1, 2016;
- Australian trademark application number 1755955, filed on March 2, 2016;
- Chilean trademark application number 1193679, filed on March 2, 2016;
- Russian trademark application number 2016706277, filed on March 2, 2016;
- South African trademark application number 2016/05482, filed on March 2, 2016;
- Argentina trademark application number 3.483.168, filed on March 3, 2016;
- Mexican trademark application number 1721015, filed on March 03, 2016;
- Tunisian trademark application number TN/E/2016/00166, filed on March 3, 2016;
- Turkish trademark application number 2016119233, filed on March 3, 2016;
- Indian trademark application number 3204515, filed on March 7, 2016;
- South Korean trademark application number 40-2016-0017442, filed on March 9, 2016;
Respondent registered the Domain Name on September 18, 2015. Respondent also registered <lysfio.com> on December 12, 2015.
5. Parties' Contentions
(i) Identical or confusingly similar
Complainant emphasizes that it applied for some of its trademark registrations containing the distinctive marks LASFIO or LYSFIO prior to the registration of the Domain Name and the <lysfio.com> domain name, in particular:
- LASFIO, US trademark application number 86/755,619, filed on September 14, 2015;
- LYSFIO, US trademark application number 86/755,623, filed on September 14, 2015;
- LASFIO, EU trademark number 014646459, filed on October 7, 2015 and registered on March 28, 2016; and
- LYSFIO, EU trademark number 014649305, filed on October 7, 2015 and registered on April 26, 2016.
Complainant urges that it is well-settled that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the Policy, as it makes no specific reference to the date on which the owner of the trademark acquired rights.
Complainant contends that the Domain Name reproduces its LASFIO marks, which do not have any particular meaning and are therefore highly distinctive. The Domain Name also imitates its LYSFIO marks, which also do not have any particular meaning and are highly distinctive. The sequence "lasfio" within the Domain Name differs from the LYSFIO mark by only one letter. Complainant states the reproduction and/or imitation of Complainant's trademarks as the unique and dominant part of the Domain Name is identical or at least confusingly similar to its marks, regardless of the generic Top-Level Domain ("gTLD") extension ".com". The gTLD extension ".com" placed after the trademark in the Domain Name is insufficient to alleviate the likelihood of confusion between Complainant's marks and the Domain Name. On the contrary, the gTLD increases the risk of confusion.
Complainant argues that there is an inevitable risk that the Domain Name will cause confusion, as it could lead average consumers to mistakenly believe that it is related to an official website of Complainant Genzyme. The Domain Name can be perceived as one of Complainant's special websites designed in support of Genzyme's activities in relation to its LASFIO and LYSFIO product, which is bound to create a likelihood of confusion between the Domain Name and Complainant's marks.
Complainant states that the likelihood of confusion can also be ascertained with reference to the reputation of Complainant's trade name, trademarks, domain names and goodwill. In this regard, Complainant cites a number of cases where prior UDRP panels have found that Complainant's trademarks are well-known in many jurisdictions. For these reasons, Complainant contends there is no doubt that the Domain Name is identical or confusingly similar to Complainant's trademarks.
(ii) Rights or legitimate interests
Complainant contends that Respondent does not have any legitimate interest in the Domain Name. Respondent's name, "Kerry Yao," does not bear any resemblance with the mark LASFIO, which has no meaning and is highly distinctive. Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide trademarks of Complainant. Further, Complainant has never licensed or otherwise authorized Respondent to use its trademarks or to register any domain name including them. There is no relationship between the Parties. Respondent has modified Complainant's trademarks for its own use and incorporated them into the Domain Name without Complainant's authorization.
Complainant states Respondent is not making a legitimate noncommercial or fair use of the Domain Name, nor is he using it in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. The Domain Name is linked to a parking website and has been registered for the purpose of attracting Internet users into clicking on the sponsored links. Respondent is using the Domain Name to obtain commercial gain by misleadingly diverting consumers. Furthermore, prior UDRP panels have held that the use of a third-party's trademarks and domain names to lead the Internet user to a parking website does not correspond to a bona fide noncommercial use.
Under these circumstances, the absence of any authorization by Complainant and the lack of legitimate reason in the use of the Domain Name demonstrate that the Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) Registered and used in bad faith
Complainant states that UDRP panel decisions regularly recognize opportunistic bad faith in cases in which the contested domain name appears to be confusingly similar to a complainant's well-known trademark. Complainant contends it is obvious that Respondent registered in bad faith the Domain Name corresponding to Complainant's trademarks, as this behavior can in no way be the result of a mere coincidence. First, Respondent does not have any legitimate interest in using the Domain Name since the name "Kerry Yao" does not bear any resemblance with the mark LASFIO, which has no particular meaning and is highly distinctive. Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide trademarks of Complainant.
Second, Complainant maintains that given the distinctive nature of the marks LASFIO and LYSFIO and the reputation of Complainant Sanofi's activities worldwide, Respondent is likely to have had at least constructive, if not actual, notice as to the existence of Complainant's marks at the time he registered the Domain Name. This point is confirmed by the fact that Respondent registered both the Domain Name and the <lysfio.com> domain name shortly after Complainant filed its trademark applications LASFIO and LYSFIO on September 14, 2015.
Complainant states that the Domain Name has been registered for the purpose of attracting Internet users to Respondent's website by creating a likelihood of confusion – or at least an impression of association – between the LASFIO and LYSFIO trademarks and the Domain Name. Indeed, Complainant Sanofi is one of the world leaders among pharmaceutical companies, ranking first in Europe and fourth in the world in the pharmaceutical industry. In this regard, Complainant notes that WIPO's article, "WIPO Prepares for Launch of New gTLDs While Cybersquatting Cases Continued to Rise," dated March 6, 2012 (Doc. PR/2012/704), points out that WIPO's 2011 caseload featured well-known names from business and public interest sectors, among which SANOFI was one of the most cybersquatted trademarks.
Complainant emphasizes that it is the owner of the LASFIO and LYSFIO trademarks, which are distinctive. In cases in which the well-known status of a complainant's trademarks is well-established, numerous panel decisions recognize that this consideration is, in itself, indicative of bad faith registration and use. Numerous panel decisions have recognized the reputation of Complainant Sanofi's trademarks and, moreover, its activities worldwide. Therefore, Respondent must have been aware of the risk of deception and confusion that would inevitably arise from the registration of the Domain Name, since it could lead Internet users searching for the official LASFIO website to the webpages linked to the Domain Name. This knowledge characterizes Respondent's bad faith in registering the Domain Name.
Complainant states the Domain Name was not only registered in bad faith, but is also being used by Respondent in bad faith. First, Complainant states that given the well-known and distinctive nature of the marks LASFIO and LYSFIO, Respondent is likely to have had at least constructive, if not actual, notice as to Complainant's marks at the time he registered the Domain Name. This suggests that Respondent acted with opportunistic bad faith in registering the Domain Name and the <lysfio.com> domain name in order to make an illegitimate use of them. This is sufficient to characterize a bad faith use under paragraph 4(b)(i) of the Policy.
Second, Complainant contends that Respondent is using the Domain Name to divert Internet users to a typical parking website with links to commercial websites, in order to benefit commercially from Complainant's reputation. Respondent is trying to free-ride off of Complainant Sanofi's worldwide reputation. This practice has been described and recognized as being bad faith use. It follows from the above that Respondent is trying to take advantage of Complainant's reputation, demonstrating a bad faith usage. The advertisements and links on the parking website linked to the Domain Name provide pay-per-click income to Respondent depending on the number of hits generated. In this regard, previous UDRP panels have found that a domain name which reproduces a well-known trademark and leads to a parking website is being used in bad faith.
In addition, Complainant emphasizes that it is often the victim of such commercially unfair behavior, as has been recognized in previous UDRP decisions, such as:
- Sanofi v. Michael Tycoon (c/o Rebel.com Privacy Service), WIPO Case No. D2012-0497 (<cheapplavix.com>);
- Sanofi v. Vitalik Tkachok, WIPO Case No. D2011-1818 (<buy-plavix.com>);
- Sanofi v. Malevitch Viatcheslav, WIPO Case No. D2011-1815 (<plaviifl•eeviagra.com>);
- Sanofi-aventis v. Above.com Domain Privacy I Treasure Entreprise Ltd., WIPO Case No. D2010-0964 <sanofiadventis.com>,
- Sanofi-Aventis v. Transure Entreprise Ltd. Host Master, WIPO Case No. D2008-1636 (<sanofiavents.com>);
- Sanofi-Aventis and Aventis Inc v. Andrew Miller, WIPO Case No. D2008-1061 (<allegr.net> and <wwwambien.net>).
Finally, Complainant states that Respondent registered the Domain Name and the <lysfio.com> domain name with the intention to sell them to Complainant in excess of out-of-pocket costs. Complainant states that on May 24, 2016, Sanofi's legal counsel sent a cease and desist letter to Respondent, explaining that the registration of the domain names <lasfio.com> and <lysfio.com> constituted a breach of Sanofi's prior rights in the trademarks LASFIO and LYSFIO. Complainant requested the immediate transfer of the names. Respondent responded, proposing to sell both domain names in excess of his out-ofpocket costs:
Sony [sic] but I'm not giving them up at that price [out-of-pocket costs]. Let's do $3000 and we move on. I'll go ahead and start an escrow transaction."
This suggests that Respondent acted with opportunistic bad faith in registering the Domain Name to make illegitimate use of it. UDRP panels have ruled repeatedly that a respondent's offer to sell a disputed domain names to complainants, without any documentation of respondent's out-of-pocket costs directly related to the disputed domain names, is evidence of bad faith
Complainant states that some days later, Respondent improperly transferred the domain name <lysfio.com> to a third-party, compelling Complainant to lodge a separate UDRP proceeding against the newly designated registrant of the domain name <lysfio.com>. However, aware of the illegal acquisition of the <lysfio.com> domain name, that third-party proceeded to transfer the domain name to Complainant at no cost. Given the above, Respondent's behavior constituted a case of cyber-flight.
Consequently, the Domain Name has been both registered and used intentionally in bad faith by Respondent without any rights or legitimate interest.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
To succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has demonstrated that it has registered rights in its LASFIO and LYSFIO trademarks. Complainant applied for registration of these trademarks in the United States on September 14, 2015, four days before Respondent registered the Domain Name on September 18, 2015. Respondent also registered the domain name <lysfio.com> on December 12, 2015, shortly after Complainant applied for its United States registrations and its registrations of its marks in the European Union on October 7, 2015. Complainant's ownership of its registered LASFIO and LYSFIO marks satisfies the threshold requirement of having trademark rights for purposes of this first element under paragraph 4(a) of the Policy. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraphs 1.1 ("If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights") and 1.4 ("Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP").
For purposes of determining whether the Domain Name is confusingly similar to Complainant's LASFIO and LYSFIO marks, the test of identity or confusing similarity under the Policy is confined to a comparison of the domain name and the trademark. The issue in the analysis of the first factor is whether the alphanumeric string comprising the disputed domain name is identical to Complainant's mark or sufficiently approximates it, visually, phonetically, in meaning or overall impression, so that the disputed domain name on its face is "confusingly similar" to Complainant's mark. Here, it is clear the Domain Name is identical to Complainant's LASFIO mark and confusingly similar to its LYSFIO mark (with just one letter being different).
Accordingly, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent has the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Here, the Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. The Domain Name is identical to Complainant's LASFIO trademark, which is an invented word and thus a highly distinctive term. Complainant is not affiliated with Respondent and Respondent registered the Domain Name on September 18, 2015, just four days after Complainant's applied for registration of its LASFIO and LYSFIO marks in the United States. Complainant has never authorized or licensed Respondent to incorporate Complainant's LASFIO or LYSFIO marks in the Domain Name or to use them in any other capacity. Respondent has not been commonly known as by these marks and has not used the Domain Name for noncommercial of fair-use purposes.
The evidence presented by Complainant shows that Respondent's use of the Domain Name has not been bona fide and has not given rise to any right or legitimate interest on the part of Respondent. Instead, the Domain Name has been used to host a website offering sponsored links. Given the reputation and distinctiveness of Complainant's LASFIO and LYSFIO trademarks, it appears that Respondent's only plausible motive for this type of use is to capitalize on the goodwill associated with Complainant's marks to attract Internet users to its website with sponsored click-through links. In view of these circumstances, Respondent's use of the Domain Name has not given rise to any rights or legitimate interests in it.
Respondent has not responded to the Complaint and therefore has offered nothing to establish any rights or legitimate interests in the Domain Name.
Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name, and Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Panel also determines that the Domain Name has been registered and used in bad faith. In this case, Respondent registered the Domain Name on September 18, 2015, just four days after Complainant's applied for registration of its LASFIO and LYSFIO trademarks in the United States. Shortly thereafter, following Complainant's registration of these marks in the European Union in October 2015, Respondent also registered the <lysfio.com> domain name on December 12, 2015. While the <lysfio.com> domain name is not in dispute in this case, its registration by Respondent supports an inference that Respondent was targeting Complainant's LASFIO and LYSFIO marks when it registered these domain names, especially as Complainant's marks consist of highly distinctive, invented words. There is no other plausible reason for why Respondent would choose to registered these terms. The Panel finds that Respondent acquired the Domain Name in order to exploit Complainant's goodwill in its LASFIO and LYSFIO marks. In so doing, Respondent registered the Domain Name in bad faith.
The Panel finds that given the unique distinctiveness of Complainant's LASFIO and LYSFIO marks (comprised of a made-up words used only by Complainant as brand names for its pharmaceutical product), it is difficult to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate or a bad faith use under the Policy. See La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Moreover, Respondent has not attempted to justify his use of the Domain Name, and the record does not indicate any attempt to make noncommercial or fair use of the Domain Name in a manner that might test the limits of this point.
The Panel also determines that parking the Domain Name by linking it to a page providing sponsored links constitutes bad faith use of the Domain Name. See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. In this regard, Respondent is using the Domain Name, which falsely conveys an association with Complainant, to lead Internet users to his website. The inevitable consequence is that there will be confusion, as a substantial proportion of Internet users visiting the site will be doing so in the expectation of reaching a site of, or authorized by, Complainant. When they reach the site they may realize that they have been mistaken, but in any event the objective of bringing them there will have already been achieved. As discussed in the analysis in David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472, this amounts to impersonation of the mark owner with a view to expanding coverage of the respondent's views. Respondent is illegitimately identifying itself in a confusing manner and attracting visitors to its site by trading off on Complainant's goodwill in its LASFIO and LYSFIO trademarks. Thus, the Panel finds that in this case, by using the identical Domain Name, Respondent has intentionally attempted to disrupt Complainant's business and to attract Internet users to its website by creating a likelihood of confusion with Complainant's LASFIO and LYSFIO marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. This amounts to bad faith use within the broad ambit of the Policy.
Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Name was registered and is being used in bad faith, satisfying the third element 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 Domain Name <lasfio.com> be transferred to Complainant.
Christopher S. Gibson
Date: November 15, 2016