WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi and Genzyme Corporation v. Super Privacy Service LTD c/o Dynadot
Case No. D2019-0687
1. The Parties
1.1 The Complainants are Sanofi of Paris, France and Genzyme Corporation of Cambridge, Massachusetts, United States of America (“United States”), represented by Selarl Marchais & Associés, France.
1.2 The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States.
2. The Domain Name and Registrar
2.1 The disputed domain name <symdazyme.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. The Center sent an email communication to the Complainants on April 3, 2019 providing the registrant and contact information disclosed by the Registrar. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on April 4, 2019.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 8, 2019. 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.
3.5 Having reviewed the case file, on May 13, 2019 the Panel issued a procedural order (“Procedural Order No. 1”) seeking clarification of certain aspects of the Complainants’ case by way of further submission to be filed by no later than May 20, 2019. Procedural Order No. 1 also allowed for, but did not require, the Respondent to file an additional submission in reply by no later than May 22, 2019.
3.6 The Complainants in response to Procedural Order No.1 filled a further submission on May 14, 2019. No further submission was filed by the Respondent.
4. Factual Background
4.1 There are two Complainants in these proceedings. Sanofi (the “First Complainant”) is a multinational pharmaceutical company headquartered in Paris, France, and is the world’s 4th largest multinational pharmaceutical company by prescription sales. The company was formed as “Sanofi-Aventis” in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to “Sanofi” in May 2011. Its consolidated net sales in 2017 were EUR 35.05 billion. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication. It operates in more than 100 countries on 5 continents employing 100,000 people.
4.2 Genzyme Corporation (the “Second Complainant”), is a subsidiary of Sanofi and is an American biotechnology company founded in 1981. In 2010 the Second Complainant was the world’s third-largest biotechnology company, employing more than 11,000 people around the world. As a subsidiary of the First Complainant, the Second Complainant has a presence in approximately 65 countries, including 17 manufacturing facilities and 9 genetic-testing laboratories; and its products are sold in 100 countries.
4.3 The Second Complainant is the owner of various registered trade marks and trade mark applications that comprise the term “Symdazyme”. They include:
(i) European Union trade mark No. 014627996 filed on September 30, 2015, and registered on January 14, 2016, in class 5 for the word mark SYMDAZYME.
(ii) United States trade mark No. 88329923 applied for on March 7, 2019, in class 5 for the standard character mark SYMDAZYME. This is a class 1(b) application that does not appear to have yet proceeded to grant.
4.4 The Domain Name was registered on March 11, 2019; i.e., just 4 days after the above United States trade mark application was made.
4.5 The Respondent would appear to be a privacy service based in the United States. As such, the formal Respondent is unlikely to be the person or entity that controls the Domain Name. Accordingly references hereafter to the “Respondent” in this decision should be understood as references to the person or entity that actually controls the Domain Name, save insofar as the context makes it clear that this is not the case.
4.6 The Domain Name has been used since registration to display a parking page that contains an offer to sell the Domain Name for $988. That page is still displayed as at the date of this decision.
5. Parties’ Contentions
5.1 The way that the Complainants presented their case in the Complaint was unhelpful. The Complaint appears to be an amended version of complaints previously used in connection with domain names that contained the terms “Sanofi” or “Genzyme”. As a consequence, it contained a large amount of material regarding the reputation of those companies and the use of those terms, in circumstances when neither term appears in the Domain Name. This was of limited assistance to the Panel.
5.2 In contrast, information in relation to the Complainants’ use of the term “Symdazyme” was extremely sparse, even though that was information that was likely to be far more useful. The Complainants contended that “Symdazyme” was the name of a drug used in the treatment of cancer, thrombosis, and respiratory diseases, but gave no details of the extent to which any product had actually been launched under that name and whether and to what extent that term had even been the subject of any sort of publicity.
5.3 The Complainants contended that the Domain Name was confusingly similar or identical to the Second Complainant’s SYMDAZYME trade mark and that the Respondent had no rights or legitimate interests in the same. So far as bad faith is concerned, the Complainants contended that as the Domain Name had no meaning beyond a reference to the Second Complainant’s mark and product, the Domain Name must have been registered with that mark in mind. The Complainants also referred to the fact that the Domain Name had been offered for sale as indicating that it was registered with the intention of selling it for more than the Respondent’s out of pocket costs and “to sell it to the highest bidder”.
5.4 However, in their submission in accordance with Procedural Order No. 1, the Complainants were somewhat more forthcoming. They appeared to accept that the term “Symdazyme” had not (at least at the time of registration of the Domain Name) been actually used in respect of any product, but contended that actual use of a mark relied upon was not a requirement of the Policy.
5.5 Further, the facts that the Domain Name was registered only a few days after the Second Complainant had applied for a United States trade mark in respect of that term and that it had been offered for sale at a price that was less than the costs of commencing proceedings under the Policy, were said by the Complainants to demonstrate that the Respondent had adopted a business model similar to that described in Andre Geské v. Domain Admin / This Domain is For Sale, Home of Domains, WIPO Case No. D2017-1163.
5.6 The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainants to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Second Complainant’s United States trade mark application for SYMDAZYME has yet to proceed to grant (or at least had not done so at the date the Complaint was filed). However, it has a registered trade mark in respect of that term at least in the European Union.
6.5 The Panel accepts that the only sensible reading of the Domain Name is as the term “Symdazyme” combined with the “.com” Top-Level Domain (“TLD”). As such, the Complainants’ trade mark is not only recognisable, but clearly recognisable in the Domain Name. This is sufficient for a finding that the Domain Name and the Complainants’ trade mark are “confusingly similar” as that term is understood under the Policy; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 For reasons that are set out in the bad faith section of this decision, the Panel accepts that the Domain Name was most likely registered and has been held by the Respondent because of its association with the Second Complainant’s registered and pending trade mark and with the intention of selling it to the Complainants or an associated company within the Complainants’ group at a profit. There is no right or legitimate interest in such activity and registration for such a purpose indicates that no right or legitimate interest exists.
6.7 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8 The date of the registration of the Domain Name, being just a few days after the Second Complainant’s applied for a trade mark in the term “Symdazyme”, the fact that “Symdazyme” has no obvious meaning other than as a trade mark associated with the Complainants, and the fact that the Domain Name has been offered for sale at a price that is just a few hundred dollars less than the fees associated with commencing proceedings under the Policy with the Center, all strongly suggest that the Respondent adopted a business model similar to that described in Andre Geské v. Domain Admin / This Domain is For Sale, Home of Domains, supra.
6.9 That business model is described in paragraph 6.14 of that decision as follows:
“gaming the trade mark registration, domain name registration and UDRP systems in order to seek to profit from those who have applied for a trade mark before they register the corresponding domain name.”
6.10 To register and hold a domain name in this manner involves registration and use of a domain name in bad faith. It clearly also falls within the scope of the example of circumstances indicating bad faith set out at paragraph 4(b)(i) of the Policy; i.e.:
“circumstances indicating that [the Respondent had] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark … for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or,
6.11 The Panel also accepts that it does not matter in this particular case that both at the time of registration of the Domain Name and at the time of the filing of the Complaint that the relevant United States trade mark had not proceeded to grant. As is recorded in section 3.8.2 of the WIPO Overview 3.0, although usually rights should pre-date the disputed domain name, this is not necessary:
“… where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: … (iv) following the complainant’s filing of a trademark application.”
6.12 This is what has happened here. Further, the Panel accepts that in this particular case the Complainants did not need to wait until they had actually obtained the mark in question since both prior to the registration of the Domain Name and the filing of the Complaint, the Second Complainant already held an European Union registered trade mark in the term SYMDAZYME. It also does not matter if that mark has not been used in circumstances where there is no suggestion that the registered European Union trade mark is anything other than valid.
6.13 Accordingly, the Panel has no hesitation in concluding that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
6.14 It is unfortunate that the Respondent’s business model can operate relatively unchecked under the Policy. That this is so appears to be inherent in the fact that the remedies available to panels under the Policy are limited to either cancellation or transfer of a domain name and a panel is unable to order that a respondent should pay even the fees incurred in commencing proceedings under the Policy. It is also frankly somewhat disturbing that in response to the Center’s verification request, the Registrar appears not to have disclosed the real underlying registrant but merely the details of a domain name privacy service. However, these deficiencies are perhaps for others to address.
7.1 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 <symdazyme.com> be transferred to the Complainant.
Matthew S. Harris
Date: May 22, 2019