WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Naby Diaw
Case No. D2007-1619
1. The Parties
The Complainant is Sanofi-Aventis, of Paris, France, represented by Selarl Marchais De Cand�, of Paris, France.
The Respondent is Naby Diaw, of Bad Homburg, Germany.
2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2007. On November 5, 2007, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain name at issue. On November 6, 2007, PSI-USA, Inc. 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”), 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 November 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2007. The Response was filed with the Center on November 8, 2007.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on December 12, 2007. 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.
In a communication attached to an email to the Center of November 6, 2007 the Registrar (PSI-USA, Inc.) indicated that the disputed domain name was deleted by the Respondent just prior to postal receipt of the Complaint by the Registrar. The Registrar subsequently restored and locked the contested domain name. As the Respondent in his Response appeared to indicate an interest in possibly settling this matter, the Center, in a communication attached to an email of December 3, 2007 notified the Complainant of the Respondent’s apparent willingness to execute a settlement. In a communication attached to an email of December 5, 2007 the Complainant indicated that it did not wish to suspend proceedings to pursue settlement and preferred to obtain a Panel decision in this matter.
4. Factual Background
The Complainant is the owner of the trademark SANOFI, registered in numerous jurisdictions in relation to pharmaceutical products. For instance, the Community Trademark SANOFI No. 000593023 was registered on February 9, 2006 in classes 3 and 5, the United States trademark SANOFI No. 2,914,521 was registered on December 28, 2004 in classes 3, 5 and 42, and the international trademark No. 591490 was registered on September 25, 1992 in class 5, designating a substantial number of countries.
The Complainant is also the registered owner of the trademark SANOFI-AVENTIS in numerous jurisdictions.
The Complainant has also registered several domain names, inter alia, , registered on October 13, 1995; registered on July 12, 2001; registered on May 16, 2003; and registered on August 24, 2001.
The contested domain name was created on June 11, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the contested domain name reproduces the trademark SANOFI in its entirety and in identical form. The addition of the letter “s” is not sufficient to suppress the likelihood of confusion between the Complainant’s trademark SANOFI and the contested domain name. It does not prevent Internet users from thinking there is a link between the contested domain name and the Complainant’s activities. The likelihood of confusion is further strengthened by the notoriety of the Complainant and its trademarks. It is the first pharmaceuticals group in Europe and the notoriety of its trademark SANOFI has been acknowledged in a number of previous WIPO Panel decisions. For these reasons the Complainant asserts that the contested domain name is confusingly similar to the trademarks and domain names over which it has rights.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the contested domain name. The Respondent’s name has no resemblance to the term SANOFI. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or register any domain name that includes its trademarks. In the circumstances, the absence of any permission from the Complainant proves that the Respondent has no right or legitimate interest in respect of the contested domain name.
The Complainant further asserts that given the notoriety of the Complainant as a leading global pharmaceutical company, owner of the SANOFI trademark famous around the world and of various domain names, including which is very close to , the Respondent could not have been unaware of the Complainant’s rights at the time of registration of the contested domain name. Therefore the Complainant asserts that the Respondent registered the contested domain name primarily for the purpose of disrupting the business of the Complainant.
Further, the Complainant asserts that the contested domain name was also used in bad faith, as in its reply to Complainant’s communication to the Respondent of October 5, 2007 requesting amicable cancellation of the contested domain name, the Respondent offered to sell the contested domain name to the Complainant. Furthermore, the Complainant asserts that the Respondent does not conduct an active website. Rather the domain name resolves to a website which carries the following message on its homepage (reproduced here in translation from the original German): “the domain name is about to be registered by the registrar regfish GmbH. we thank your for your patience until an offer is made.” The Complainant asserts that this clearly indicates the Respondent’s intention not to use the contested domain name in relation to the term “Sanofis” since “an offer has to be made”, without further details on this offer. This amounts to the kind of inaction which has been held to amount to bad faith: see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances, given the worldwide reputation of the Complainant and the evidence showing that the Respondent does not intend to use the contested domain name including the term “Sanofi” in connection with the trademark’s owner, the inaction of the Respondent amounts to bad faith use. The Respondent has registered the contested domain name to prevent the Complainant from reflecting its marks in corresponding domain names, which the Complainant asserts is clearly within the scope of Paragraph 4(a) (iii), (iv) of the Policy.
B. Respondent
The Respondent asserts that he responded by email to the Complainant’s communication attached to an email of October 5, 2007 requesting amicable cancellation of the contested domain name but received an email delivery failure notification, and that he possessed no other contact details for the Complainant. The Respondent also asserts that he had at the time of registration of the contested domain name received no notification that “Sanofis” is “protected under intellectual property rights”. The Respondent asserts that in his above-mentioned response to the Complainant’s email communication of October 5, 2007 he indicated that he preferred to transfer the rights in the domain name and avoid cancellation so that the Respondent “will not be confronted with this kind of problems”. The Respondent in his later communication attached to an email of November 2, 2007 to the Complainant, also indicates that he had decided to cancel the domain name rights, a cancellation request had been sent to the Registrar, and the domain name would be cancelled in the ensuing business days.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name incorporates the Complainant’s trademark SANOFI. That trademark is highly distinctive and has no generic meaning. The addition of the letter “s” is of no significance, as it does not have the effect of relevantly changing the meaning of the term or distinguishing it from the trademark SANOFI. The domain name leaves the relevant trademark incorporated within it substantially unchanged. It so closely resembles the Complainant’s trademark that the difference constituted by the additional “s” will go largely unnoticed by Internet users. It does nothing to prevent confusion, or to differentiate the contested domain name from the Complainant’s trademark, business and reputation, which is very widely established in the market.
Therefore the Panel finds that the contested domain name is confusingly similar to the Complainant’s trademark SANOFI.
B. Rights or Legitimate Interests
The Complainant has not licensed or authorized any use by the Respondent of its trademark SANOFI. It is not apparent from the material before the Panel that the Respondent is known in any way under the trademark SANOFI.
Nor does anything before the Panel indicate a legitimate interest arising out of the nature of the use made of the contested domain name by the Respondent. The Respondent does not conduct any activities on the website to which the contested domain name resolves.
Therefore the Panel finds that the Respondent has no rights or legitimate interests in the contested domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademark SANOFI is well-known in multiple jurisdictions. The word SANOFI also appears in the corporate name under which the Complainant conducts its pharmaceutical business around the world (Sanofi-aventis). It is a distinctive mark associated with the Complainant, with no generic meaning for consumers. The Complainant also reflects the mark in a number of websites it operates. In the circumstances the Panel accepts that the Respondent must have been aware of the Complainant’s rights in its trademark SANOFI at the time of registration of the contested domain name.
The Complainant asserts that its message requesting amicable cancellation of the contested domain name, attached to an email communication of October 5, 2007, elicited from the Respondent an offer to sell the contested domain name back to the Complainant. The Complainant has put before the Panel a copy of the communication received via email from the Respondent and containing the offer to sell the contested domain name. The Respondent contends that he responded to the request communicated on October 5, 2007 with an offer to cancel the domain name, without indicating that this response was accompanied by a request for payment from the Complainant. The Respondent has not put the email containing this response before the Panel. In the circumstances the Panel accepts that the Respondent did make an offer to sell the contested domain name back to the Complainant.
The Panel is also persuaded that the Respondent’s actions in response to the filing of the Complaint, when he sought belatedly to have the matter settled rather than be dealt with by a Panel, resulted from his failure to obtain the result he sought from the Complainant when he offered to sell the contested domain name, coupled with a wait- and-see attitude as to what the Complainant might do to enforce his rights. This expressed willingness to cancel the contested domain name without consideration, and his actions in seeking to do so, at a time when he had become aware of the initiation of these proceedings, further indicate the bad faith of the Respondent, and the abusive nature of his registration of the contested domain name.
The Panel notes that even if it were persuaded that no offer to sell the contested domain name back to the Complainant had been made, the remaining facts, taking into account the notoriety of the Complainant’s trademark and the Respondent’s actual website use of the domain name, still justify a finding of bad faith.
Therefore the Panel finds that the contested domain name was registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William A. Van Caenegem
Sole Panelist
Dated: December 26, 2007
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