WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Gerard Scarretta Case No. D2009-0229 1. The Parties
The Complainant is Sanofi-aventis, of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Gerard Scarretta, of Tobyhanna, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2009. On February 23, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 23, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 2, 2009. 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”).
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 March 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2009.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 3, 2009. 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 Complainant Sanofi-aventis was formed in 2004 as a result of merger between two French companies, Aventis SA and Sanofi-Synthelabo. It is one of the leading pharmaceutical companies in the world, having operations in 100 countries across five continents. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in a number of major therapeutic areas. The Complainant is the owner of an extensive range of registered trademarks for SANOFI-AVENTIS covering a wide variety of jurisdictions including the following:
Community trademark no. 004025318 for the word mark SANOFI-AVENTIS registered on November 3, 2005 notably in various classes including class 5 (pharmaceutical products); and
International trademark no. 839358 for the word mark SANOFI-AVENTIS registered on October 1, 2004 in various classes including class 5 (pharmaceutical products) and designating under the Madrid Agreement and Madrid Protocol various countries including the United States of America, Switzerland, China, and Japan.
The Complainant also maintains an extensive portfolio of domain names containing the mark sanofi-aventis including:
registered on March 14, 2004;
registered on April 26, 2004;
registered on April 26, 2004;
registered on June 20, 2006; and
registered on December 18, 2006.
The Respondent registered the disputed domain name on June 28, 2008. As at the date of this Decision, the web page associated with the disputed domain name resolved to a “partner page” website provided by Google Inc. offering links to Google's “Google apps” services and displaying the disputed domain name prominently at the top of the page. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the elements in paragraph 4(a) of the Policy are present. The Complainant asserts that the disputed domain name reproduces entirely the Complainant's trademark SANOFI-AVENTIS, that the trademark in itself has no generic meaning and is highly distinctive. The Complainant submits that, by virtue of the reproduction of its trademark within the disputed domain name, the disputed domain name is confusingly similar to the trademark notwithstanding the element “blog” which is added within the disputed domain name. The Complainant states that the term “blog”, being a reference to “weblog”, one of the publishing facilities made popular by the World Wide Web, is completely descriptive.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that it has never licensed or otherwise permitted the Respondent to apply for any domain name incorporating the Complainant's trademark in its entirety, that there is no relationship whatsoever between the Complainant and the Respondent and that the Respondent has adopted the Complainant's trademarks for his own use and incorporated them into the disputed domain name without the Complainant's authorisation.
The Complainant submits that the Respondent registered the disputed domain name in bad faith. The Complainant asserts that the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent's web site, by reproducing the distinctive name “SANOFI-AVENTIS” thus creating a likelihood of confusion between the Complainant's trademarks and the disputed domain name and abusively taking advantage of the notoriety of the Complainant. The Complainant also states that given the worldwide fame of its trademarks it is inconceivable that the Respondent registered the domain name without awareness of the Complainant's rights.
Finally, the Complainant submits that the Respondent is using the disputed domain name in bad faith on the basis that it redirects to a website promoting the activity of Google apps. The Complainant asserts that this may be characterised as “passive holding” within the meaning of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant also points out that the Respondent did not reply to the Complainant's correspondence which was issued to the WHOIS privacy service employed by the Respondent, namely Whois Privacy Protection Service, Inc. The Complainant states that this reinforces the inference of bad faith registration and bad faith use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel accepts that the Complainant has established that it has rights in the trademark SANOFI-AVENTIS by virtue of its extensive portfolio of registered trademarks which includes those listed in the Factual Background section above. The disputed domain name merely adds the generic word “blog” to this trademark (as to which the Panel accepts the definition and description of “blog” provided by the Complainant) and dispenses with the hyphen between “sanofi” and “aventis”. The Panel accepts that the Complainant's trademark is highly distinctive and that the addition of a generic word and the removal of the hyphen in the disputed domain name do nothing to dispel the confusion between it and the Complainant's trademark. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have therefore been met by the Complainant. B. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] of the dispute, your 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are 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.
On this topic the Complainant points out that it has provided no permission to the Respondent to apply for a domain name incorporating the Complainant's trademark and that accordingly the Respondent can have no rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in that the Respondent does not appear to be known by the disputed domain name and has not been authorised by the Complainant to use its trademark in any manner whatsoever. Furthermore, given the Respondent's incorporation in the disputed domain name of a trademark which is highly distinctive and exclusively referable to the Complainant, the Panel cannot conceive of any possible right or legitimate interest which the Respondent could have in the disputed domain name. Accordingly, the burden shifts to the Respondent to prove that it has such rights and interests. The Respondent has chosen not to respond to the Complainant's contentions nor to provide any evidence of rights or legitimate interests in the disputed domain name. In these circumstances the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and used the disputed domain name in bad faith.
With regard to registration in bad faith, the Complainant asserts that given the incorporation of the Complainant's distinctive trademark it is inconceivable that the Respondent could have registered the disputed domain name without being aware of the Complainant's rights and, presumably, without the intention to target these rights in some manner. In the absence of any explanation from the Respondent and given that there is no possible good faith motivation which is apparent to the Panel for the registration of the disputed domain name the Panel accepts the Complainant's assertion. The Panel therefore finds that the disputed domain name was registered in bad faith.
The Complainant's case regarding use in bad faith is that the Respondent is effectively engaged in “passive holding” of the disputed domain name within the terms originally established by Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The concept of “passive holding” typically implies complete inaction on the part of the Respondent characterised by a failure to direct the domain name under dispute to any active website. At first sight that does not appear to be the situation in the present case, where the Respondent has apparently made an active choice to direct the disputed domain name to a Google “partner page”. The Complainant's submission, however, is that this may be assimilated with “passive holding” because the website is no more than a temporary parking place for the disputed domain name and in reality constitutes a reservation for some unidentified future use. The Panel accepts this submission on the basis that the website with which the Respondent has associated the disputed domain name is clearly a third party service which subsists entirely independently of the configuration of the disputed domain name. It could not in any sense be described as an active site provided by the Respondent himself.
In Telstra, the learned administrative panel noted that the question as to which circumstances of “passive holding” may constitute use in bad faith cannot be answered in the abstract. This question may only be determined on the basis of the particular facts of each case. A panel should give close attention to all the circumstances of the Respondent's behaviour and a remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith. With this approach in mind, the Panel has identified the following circumstances as material to the issue in the present case:
(i) the Complainant's trademark has a strong reputation, is highly distinctive and is widely known; in addition, it is registered in the jurisdiction where the Respondent is based;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain name, nor can the Panel conceive of any such good faith use;
(iii) the Respondent has failed to respond to the Complainant's reasonable attempts to correspond with him over his registration and use of the disputed domain name and, while there can be legitimate reasons for the use of a WHOIS privacy service, its use by the Respondent in the present case indicates a deliberate attempt to conceal his true identity from the Complainant, an attempt which was only frustrated after the Respondent's registrar lifted the veil following the Center's request for registrar verification;
(iv) taking into account the nature of the disputed domain name the Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law; and
(v) there is nothing in the Respondent's limited action of configuring the disputed domain name to point to the Google “partner page” service which could be considered to be a good faith use standing the incorporation of the Complainant's trademark in its entirety within the disputed domain name and its prominent display (as part of a reproduction of the disputed domain name in large characters at the top of the Google “partner page”) on the web site itself.
In all of these circumstances the Panel finds that the manner in which the disputed domain name is being used constitutes use in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have therefore been met by the Complainant. 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 as requested by the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: April 9, 2009
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