WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Transure Enterprise Ltd, Host Master Case No. D2008-1636 1. The Parties
The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Transure Enterprise Ltd, Host Master, British Virgin Islands, Overseas Territory of the United Kingdom of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 29, 2008, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain names. On October 30, 2008, A, 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 4, 2008.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 12, 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
The following facts have been alleged by the Complainant and not refuted by the Respondent.
Sanofi-aventis has been formed during the year 2004 as a result of merger between the two French companies Aventis SA and Sanofi-Synthelabo. Completion of the transaction created the no. 1 pharmaceutical group in Europe, no. 4 in the world, with consolidated net sales of € 28 billion in 2007, in the core business and a strong direct presence on all major world markets, and € 4,537 billion Research and Development expenditure. Sanofi-aventis offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in 7 major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. Sanofi-aventis is a major player on the worldwide pharmaceutical market in particular in the United States of America.
The Complainant's mark SANOFI-AVENTIS is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration 839358 dated October 1, 2004, Community trademark no. 004025318 registered on November 3, 2005, and other registrations made in various countries worldwide. Also, various gTLD's and ccTLD's consisting in the trademark of the Complainant were registered since March 2004.
The domain names were registered on February 11, 2008 and on May 28, 2008 . 5. Parties' Contentions A. Complainant
The Complainant contends that the terms “sanofi” and “aventis” as themselves have no particular meaning and their combination is therefore highly distinctive. The Complainant contends that both domain names are confusingly similar to the trademarks of the Complainant since they differ little from the trademarks. Moreover, the likelihood of confusion is also ascertained because of the notoriety of the Complainant and its trademarks.
Also, the Complainant contends that the Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide trademarks SANOFI-AVENTIS and that it has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name containing the above-mentioned trademarks.
The Complainant also contends that the Respondent has registered in bad faith the litigious domain names and which correspond to the trademarks and domain names owned by the Complainant, for the purpose of attracting Internet users to the Respondent's websites and to make benefit of its reputation. Also, the domain name is used in bad faith since the Responded failed to reply to the Complainant's request to immediate transfer the domain name. Moreover, with respect to both domain names the Complainant contends that the Respondent is deliberately trying to gain unfair benefit of Sanofi-aventis reputation by using the Complainant's trademarks to divert Internet users to a parking website belonging to him, with links leading to commercial websites relating to medical field. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond
(see, e.g., paragraph 2(a), Rules).
A copy of the Complaint was sent by the Center to the email address and a hard copy of the Complaint and attachments by courier to the mail address contained in the WhoIs database of registrar A, which were also confirmed by the concerned registrar. Although the email messages send at postmaster@ and postmaster@ were not delivered due to connection refused by and by , and no reaction was received from the email message delivered at hostmaster@, the hard copies were delivered. The Panel therefore finds that the Respondent has received the Complaint by email, but has chosen not to respond. See also S.p.A. Egidio Galbani v. Ms. Jenny Saputo,WIPO Case No. D2003-0953; Littleford Day Inc. v. NRM Equipment Company,WIPO Case No. D2004-0201; Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan,WIPO Case No. DCC2002-0001. It should be noted that an apparent change in registrant appears in the WhoIs database. However, at the inquiries of the Center, the Registrar confirmed that no change has been made to the identity of the registrant and the domain names remain with the registrant.
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent's obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant's undisputed representations (id., paragraph 15(a)). “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain names registered by the Respondent are identical or confusingly similar to the trademark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
(iii) that the domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that: (a) the Complainant has rights in a trade mark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark SANOFI-AVENTIS by submitting the International Registration 839358 dated October 1, 2004, Community trademark no. 004025318 registered on November 3, 2005, and other registrations made in various countries worldwide. All the registrations submitted predate the registration of the domain names.
The question of identity or confusingly similarity for the purpose of the Policy requires a comparison of the disputed domain names to the trademark rights which have been proved.
Here, as regards the domain name , it has three differences from the trademark of the Complaint SANOFI-AVENTIS: the addition of the “.com” suffix, lack of the letter “i” at the end of “Aventis” and lack of the hyphen between “Sanofi” and “Aventis”.
The addition of the generic top-level domain (gTLD) “.com” is without legal significance from the standpoint of comparing the disputed domain name to SANOFI-AVENTIS since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk,WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
As regards the lack of letter “i” in “Aventis”, is visually apparent on close inspection. A visual comparison of the domain name with the Complainant's trademark provides the strongest support for the assertion that it is confusingly similar to it. The trademark SANOFI-AVENTIS is distinctive of the Complainant's business. A domain name which differs by one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is distinctive. See also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415 (the only difference between the domain name and the trademark is the purposeful misspelling, created by the addition of an “h”); Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 (closely misspelled domain name satisfies “confusingly similar” factor); United Feature Syndicate, Inc. v. Mr. John Zuccarini,WIPO Case No. D2000-1449 (the domain name differs from the mark merely by the addition of the letter “l” in the domain name, and such addition does not prevent the domain name from being considered virtually identical or confusingly similar to the Complainant's mark); Alta Vista Co. v. Saeid Yomtobian,WIPO Case No. D2000-0937 (domain names and are confusingly similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362 (domain name , spelled with a zero rather than the letter “o”, is confusingly similar to trademark OXYGEN); The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM,WIPO Case No. D2001-1492 (the disputed domain names comprise common misspellings of the term “Nasdaq”, the only difference being in each case the lack of only one letter; Quite clearly, the Respondents have sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant's website, a practice dubbed “typo squatting” and condemned in a number of WIPO panel decisions).
Given the fame of the Complainant and the fact that the Complainants' SANOFI-AVENTIS trademark is well-known among internet users (see Sanofi-Aventis v. NetWeb, Inc.,WIPO Case No. D2005-1265; Sanofi-aventis v. Montanya ILtd.,WIPO Case No. D2006-1079), an Internet user or consumer viewing the disputed domain name is likely to confuse it with the trademark SANOFI-AVENTIS.
As regards the lack of the hyphen, the Panel is of the view that the mere lack of such hyphen does not make sufficient difference between the domain name and the trademark. See also NeuStar, Inc. v. Kris Sweldo,WIPO Case No. D2006-1210; Shopatron, Inc. v. Reshare Corporation,WIPO Case No. D2007-1377; Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 for similar views in the sense that the punctuation marks such as hyphens do not, on their own, avoid a finding of confusing similarity.
As regards the domain name , it has two differences from the trademark of the Complainant SANOFI-AVENTIS: the addition of the “.com” suffix and the addition of the “www” prefix.
As detailed above, the addition of the generic top-level domain (gTLD) “.com” is without legal significance from the standpoint of comparing the disputed domain name to SANOFI-AVENTIS. As regards the addition of the “www” prefix, in the comparison of the domain name at issue with the Complainant's SANOFI-AVENTIS mark, the prefix “www” to the domain name must be disregarded, because it is an abbreviation of “World Wide Web” and does not add any distinctive quality to the domain name. The addition of such prefix does not prevent a finding of similarity, having in mind also that the mark of the Complainant is incorporated in its entirety in the domain name. See also Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743 (“Because “www” is an expected part of a website address, the Panel finds that its inclusion in the Domain Name does not avoid confusion between the distinctive portion of the Domain Name and the Complainant's identical mark”); Gorstew Limited v. Global Access/ Moniker Privacy Services,WIPO Case No. D2008-0546 (“the prefix ‘www' is generic and commonly found at the beginning of most website URLS; therefore Internet users ignore the ‘www' as a matter of course. The first element of the contested domain name to which an Internet user will take note of is ‘sandals', which is identical to the Complainant's trade mark at issue. Therefore the addition does not have the capacity to distinguish the domain name from the Complainant's trade mark SANDALS); MasterCard International Incorporated v. DL Webb,WIPO Case No. D2008-0324 (“The Domain Names incorporate Complainant's Marks in full and add the prefix “www”. The Panel concludes that the addition of a prefix is insufficient to differentiate the Complainant's Mark from the Domain Name and does not prevent confusion. The addition of the “www” prefix has been cited as a common practice of “typo-squatters” who try to take advantage of the fact that Internet users may fail to insert a period between the World Wide Web prefix and the remainder of the domain name”); Société Nationale des Chemins de Fer Français v. Sinclare Vabalon, BHG,WIPO Case No. D2008-0886 (“the addition of the prefix “www” constitutes a typosquatting that does not exclude the likelihood of confusion between the Complainant's trademarks and the disputed Domain Name”).
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the domain names are confusingly similar to the Complainant's trademarks. See also Reuters Limited v Global Net 2000, Inc,WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries 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 UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210). The Complainant alleges that the Respondent is deliberately trying to gain unfair benefit of Sanofi-aventis reputation by using the Complainant's trademarks to divert Internet users to a parking website belonging to it, with links leading to commercial websites relating to medical field.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the domain names. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the disputed domain names refers.
“The registration of the domain name in connection with portal websites (otherwise referred to as “directory”, “parking” or “pay-per-click (PPC) landing” sites) has been the subject of numerous decisions under the Policy. The incidence of these types of websites has greatly increased in recent years. Such websites typically offer a list of automatically generated links. Also typically, the search function on such websites provides results only for search terms for which particular advertisers have paid.” See State of Florida, Florida Department of Management Services v. Bent Pettersen,WIPO Case No. D2008-0039. “The reason these pages are structured in this way is that, each time an internet user clicks on a listed link, it creates an opportunity for the owner of the PPC landing page to receive a small amount (typically automated) payment from the advertiser in consideration for having delivered the Internet user to the advertiser's web page.” See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. See Grundfos A/S v. Bridge Port Enterprises Limited,WIPO Case No. D2008-1263. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalize or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
In this case, use of the Respondent's domain names is made in connection with a search engine displaying links to third parties' websites providing general medications, in which field Sanofi-aventis trademarks and products are very well known (for domain) or offering various kind of services not related to the Complainant's activity, but also services in the medical field where the Complainant's notoriety is established domain. That does not constitute a nominative fair use; rather, “it appears to constitute deceptive bait and switch advertising practices” as it was held by previous panels (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). Also, according to previous panels, “Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do constitute abusive cyber squatting. (See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings,WIPO Case No. D2007-1562, and the cases cited in those ones.” See also State of Florida, Florida Department of Management Services v. Bent Pettersen,WIPO Case No. D2008-0039.
The evidence in this case squarely supports a similar finding. The Respondent's registration and use of the disputed domain names appears to have been based on the trademark value of the Complainant's mark. A quick scan of the disputed domain names provides numerous links to third parties' websites, offering medication, services in the pharmaceutical field. As such, the links relate to the trademark value of the Complainant's mark (i.e. its activity in the pharmaceutical field). The related searches on the website include also very well trademarks of the Complainant, such as Ambien, therefore one can assume that the Respondent had knowledge of the marks of the Complainant at the time of registration.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith; e.g.,
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.
In this case because the disputed domain names resolves to landing pages at which competitive services are offered, the Complainant has established that the Respondent's use of these domain names is in bad faith. The disputed domain names appear designed to attract Internet users who are looking for SANOFI-AVENIS goods, appear to cause confusion with the Complainant's marks and websites, appear to disrupt the Complainant's business by diverting consumers away from the Complainant's websites, and do all of these things for commercial gain because Respondent profits from the pay-per-click revenue generated by these websites. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. Regarding such possibility to obtain revenues, it appears that both domain names are parked with Sedo, which describes on its website domain parking as being a “simple way to earn money” because “every time a consumer clicks on one of the advertisements you earn money”.
The trademark SANOFI-AVENTIS is quite well known in the field of pharmaceutical products. In this respect see Sanofi-Aventis v. NetWeb, Inc.,WIPO Case No. D2005-1265; Sanofi-aventis v. Montanya ILtd.,WIPO Case No. D2006-1079. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain names.
The finding of the Panel is also evidenced by the fact that the use of the Respondent's domain names is made in connection with a search engine displaying links to third parties' websites in medication field also. The Respondent is ultimately responsible for the content of the website within it control. As such, the Respondent could not avoid responsibility for the automatic generation of links at the subject website. (For examples of recent findings along these lines, in connection with a portal website, see Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; State of Florida, Florida Department of Management Services v. Bent Pettersen,WIPO Case No. D2008-0039; Owens Corning v. NA,WIPO Case No. D2007-1143).
Due to the above mentioned, the Panel considers unnecessary to analyze the other assertions made by the Complainant, including the fact that the use of the disputed domain names is harmful to the public or is contrary to public health, and whether this is or is not relevant within the scope of the Policy. See also Sanofi-Aventis v. Cash Advance Networking, david schomberg, WIPO Case No. D2008-1246.
For all the reasons, the Panel concludes that the Respondent must have been aware of the Complainant's trademarks at the time it registered the disputed domain names. Accordingly, and because the Respondent has also used the disputed domain names in bad faith to attract Internet users to its pay-per-click landing page, the Panel finds that the Complainant has satisfied its burden of proving that the Respondent registered and used the disputed domain names 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 cancelled and that the domain name be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Dated: December 22, 2008
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