WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov
Case No. D2007-1772
1. The Parties
The Complainants are Sanofi-aventis, of France, and Sanofi-Aventis Deutschland GmbH, of Germany, represented by Selarl Marchais De Cand�, France.
Complainants named Domains By Proxy, Inc. of Scottsdale, Arizona as Respondent in their initial Complaint. The Registrar has confirmed that the registered owner of the domain name is Andrey Mitrofanov, of Belarus, and not Domains By Proxy, Inc. As suggested by the Center’s Complaint Deficiency notification, Complainants filed amendments to their Complaint to show Andrey Mitrofanov as Respondent. Since Domains By Proxy is merely a privacy domain name registration service, and because the amendments substituted Andrey Mitrofanov in place of all references to Domains By Proxy in the Complaint, this Panel treats Andrey Mitrofanov as the sole Respondent.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 4, 2007, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On December 4, 2007, GoD, Inc. transmitted by email to the Center its verification response, and in subsequent correspondence December 5, 2007 clarified that the Respondent is listed as the registrant and provided contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed their amendment to the Complaint on December 10, 2007. 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”), 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 (Andrey Mitrofanov) of the Complaint, and the proceedings commenced on December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on January 25, 2008. 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-Aventis Deutschland GmbH owns the following trademarks:
International trademark AMARYL No. WO 591 304, filed August 22, 1992;
German trademark AMARYL No. 2017807, filed June 24, 1992;
United States of America trademark AMARYL No. 1 912 174, filed August 15, 1995;
Canadian trademark AMARYL No. TMA 574 280, filed August 28, 1992;
British trademark AMARYL No. 1511641, filed, August 26, 1992.
Complainant Sanofi-Aventis Deutschland GmbH registered the domain names listed with their registration dates below:
registered on July 31, 2001;
registered on October 13, 1998; and
registered on January 6, 2003.
Respondent registered the domain name on June 13, 2007.
5. Parties’ Contentions
A. Complainants
Complainants aver that they are leading global manufacturers of patented pharmaceutical products. Complainants aver that Sanofi-aventis was formed during 2004 as a result of merger between the two French companies Aventis SA and Sanofi-Synthelabo. Complainants aver that their companies are the top pharmaceutical group in Europe and the third largest worldwide. Complainants explain that Sanofi-aventis developed and sells globally under the trademark AMARYL a drug for treating type 2 diabetes.
Identical or Confusingly Similar to Complainant’s Trademark
Complainants allege that the trademark AMARYL is highly distinctive and that the disputed domain name reproduces Complainants’ trademark in its entirety. Complainants contend that addition of the term “medication” increases the likelihood of confusion with Complainant’s trademark and product because it refers to the nature of their product, citing Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., WIPO Case No. D2007-0678.
Therefore, Complainants argue, the domain name is confusingly similar to the trademark and domain names of the Complainants.
No Rights or Legitimate Interests in Domain Name
Complainants allege that Respondent has registered and used the domain name without legitimate right, license or authorization. Complainants allege that the lack of legitimate right is demonstrated by the lack of permission to use Complainants’ trademarks - and because Respondent concealed its actual identity by using GoDaddy’s “Domains by Proxy” service, which identifies Domains by Proxy as registrant in the WHOIS database, rather than an individual registrant.
Complainants further allege that the use of the disputed domain name is not in connection with a bona fide offering of goods or services. Specifically, Complainants contend that, by using various website links to diabetes-related information and products, Respondent is diverting Internet traffic and is not making a bona fide offering. See Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990.
Registration and Use of Domain Name in Bad Faith
Complainants contend that Respondent registered the disputed domain name in bad faith. Complainants highlight that Respondent “obviously” registered the disputed domain name to “abusively take benefit from the Complainant’s notoriety”. Complainants infer that the Respondent must have known of the existence of their “world famous” trademark and the Amaryl-related domain names registered by Complainant before Respondent registered the disputed domain name. With such knowledge, Complainants continue, Respondent must have intended to deceive and confuse consumers to believe that Complainants endorsed Respondent’s website.
Complainants also contend that Respondent is using the disputed domain name in bad faith. Complainants note that the website to which the domain name resolves contains numerous links to other parking websites, most of which offer information on diabetes and sell drugs of some Complainants’ competitors, in some cases through online pharmacies. To underscore Complainants’ allegations of bad-faith use, Complainants argue that it is “very likely” that Respondent’s purpose in such use is to collect pay-per-click revenues. In support of this inference, Complainants cite two of the many domain name cases brought before the WIPO Center by their apparently related companies: Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079 and Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377.
Presumably to further demonstrate Respondent’s bad-faith use, Complainants describe how “Sanofi” sent an electronic cease and desist notice to @ on October 4, 2007. There was apparently no response to the notice.
Based on the foregoing, Complainants seek transfer of the disputed domain name to Complainant Sanofi-Aventis Deutschland GmbH.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Threshold Matters
1. Multiple Complainants
Some panels have rejected complaints filed under the UDRP in the name of more than one complainant on the ground that they have not sufficiently identified their respective ownership rights and requested remedies. See, e.g., Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638. Other panels have accepted complaints by multiple complainants based on agency, licensing, or affiliate relationships. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220.
In the present case, Complainants fail to describe the relationship between the two Complainants. Complainants use the term “sanofi-aventis” without clarification throughout their Complaint, and refer to themselves as “Complainant” in the singular. All of the trademark and domain-name registrations in the record associated with Complainants are in the name only of Sanofi-Aventis Deutschland GmbH.
Sanofi-aventis, France may have interest in this matter because it may use or have license to the trademarks cited above. It is not, however, the office of this Panel to speculate about the French company’s interests, nor does it appear that Sanofi-aventis, France, has any direct relationship to this proceeding other than being named by counsel on the Complaint. The Panel further notes that the remedy sought in the Complaint is for the disputed domain name to be transferred to Sanofi-Aventis Deutschland Gmbh.
The Panel therefore proceeds solely on the basis of the interests of Sanofi-Aventis Deutschland GmbH, the second listed Complainant.1 The Panel construes all references to “sanofi-aventis” in the amended Complaint as references to the German company.
2. Notice to Respondent
The Panel is satisfied that the Center, by sending communications to the contacts made available through the registrar, has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
3. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
B. Identical or Confusingly Similar
The Panel agrees with Complainants that Respondent’s domain name is confusingly similar to Complainant Sanofi-Aventis Deutschland GmbH’s trademarks.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
The Panel concludes that the addition of the descriptive term “medication” and the use of the inserted hyphen does not negate the confusion created by Respondent’s complete inclusion of the AMARYL trademark in the disputed domain name. E.g., Giata Gesellschaft f�r die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel finds that the disputed domain name is confusingly similar to the registered AMARYL trademarks of Complainant Sanofi-Aventis Deutschland GmbH and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the domain name in connection with a bona fide offering of goods and services; (2) an entity being commonly known by the domain name; or (3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy paragraphs 4(c)(i)–(iii).
A complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no Reply. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainants allege that Respondent did not have legitimate interests because it lacked authorization to use the trademarks and attempted to conceal its real identity. In the absence of a Reply, the Panel accepts as true Complainants’ undisputed factual statements that Respondent lacked authorization and attempted to conceal its identity.
Complainants do not address whether Respondent was commonly known by the domain name.
The Panel infers that Respondent receives revenues when it diverts traffic through link advertisements on Respondent’s website. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
Screens from Respondent’s website presently accessible to the Panel online do not show that the disputed domain name being used to promote other competing pharmaceutical products. However, Complainants have included as exhibits to the Complaint pages printed from Respondent’s website that do show such activities, along with links to unrelated pharmaceutical products and online pharmacies. The Panel therefore finds that Respondent’s use of the disputed domain name further demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
The Panel also finds there is no bona fide offering of goods or services by Respondent. Respondent’s commercial activities undertaken through use of the domain name are neither fair use nor bona fide under the Policy. The unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, supra.
Filing no Reply, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.2
D. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy Paragraph 4(b)(iv). See, e.g., L�Or�al, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
To establish bad faith, Complainants rely in part on the lack of response to their cease and desist email letter sent to Domains By Proxy on October 4, 2007. Panels in some cases have drawn adverse inferences from a respondent’s failure to answer such correspondence. See, e.g., Ebay, Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632. In the present case, however, the Panel declines to infer bad faith from Respondent’s lack of response to the email, because Complainants’ pro forma letter was directed to a well-known proxy registration service and did not enquire about the identity of the underlying registrant. Compare TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,WIPO Case No. D2006-1620 (cease and desist letter requested information from proxy registration service about underlying or beneficial registrant of domain name).
In any event, other circumstances lead the Panel to infer that Respondent registered the disputed domain name intending to trade on the fame of Complainant Sanofi-Aventis Deutchsland GmbH’s trademarks. Each of the cited trademarks and domain names owned by Complainant Sanofi-Aventis Deutchsland GmbH were registered and known for several years before Respondent registered the disputed domain name in June 2007. The Panel finds that under the circumstances, Respondent must have known about the trademarks in question before choosing the domain name it registered. Respondent is deliberately attempting to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant Sanofi-Aventis Deutchsland GmbH’s marks and pre-existing domain name registrations. Therefore, the Panel finds that Respondent registered the domain name in bad faith.
With the addition of the word “medication” to Complainant’s AMARYL trademark, the Panel further finds that there is no conceivable good faith use for the domain name by Respondent.
One of Respondent’s website pages in Complainants’ exhibits includes as a headline the word “official” along with links to third-party information about patient use of the drug Amaryl. Along with the lack of any response to the Complaint, the Panel concludes that this activity demonstrates bad faith use. 3
Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.
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 Complainant Sanofi-Aventis Deutschland GmbH.
Jeffrey D. Steinhardt
Sole Panelist
Dated: February 8, 2008
1 The Panel finds, however, that there is no prejudice to Respondent in permitting this proceeding to go forward on behalf of multiple complainants on the basis of the Complaint as amended and submitted. Cf. Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638 (finding no prejudice to respondent in accepting multiple, affiliated complainants where both possessed trademark rights)
2 While the Panel acknowledges that Respondent may have attempted to conceal its identity, the use of proxy registration services is presently a legally acceptable practice and may be for legitimate purposes. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062 (see n.16). Consequently, the Panel declines to construe the fact that a proxy registration service is involved in the present dispute as an additional, basis for showing that Respondent did not have rights or legitimate interests.
3 The Panel notes that Respondent’s use of a proxy registration service, without more, would not be sufficient to establish bad faith use or registration. HSBC Finance Corp., supra; cf. TDS Telecommunications Corp., supra (“Russian doll” scenario involving multiple proxy registration services and inaccurate or incomplete registration information provided by registrant were additional factors supporting bad faith finding). In this case, Respondent’s use of the proxy registration service is cumulative evidence that provides a small amount of additional support to the Panel’s finding of bad faith in addition to the evidence cited above.
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