WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-Aventis v. Chilli Communications FZ-LLC, Rasha Mansour/ PrivacyP Case No. D2009-0283 1. The Parties
The Complainant is Sanofi-Aventis of Paris, France, represented by Selarl Marchais de Candé, France.
The Respondents are Chilli Communications FZ-LLC, Rasha Mansour, of Dubai Media City, United Arab Emirates, and PrivacyP of Moergestel, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2009. On March 4, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On March 5, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, confirming that Chilli Communications FZ-LLC Rasha Mansour is listed as the registrant and PrivacyP is a WhoIs privacy service for the disputed domain name and disclosing the 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 May 10, 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 12, 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 Respondents of the Complaint, and the proceedings commenced on March 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 6, 2009.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on April 23, 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.
The Panel finds that it was properly constituted. The language of the proceeding is English, being the language of the domain Name Registration Agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties. 4. Factual Background
The Complainant, formed in 2004, creates the largest pharmaceutical group in Europe and the fourth largest in the world by net sales volume. The Complainant has, since 2004, acquired community trademark registrations, international trademark registrations and a couple of trademark registrations in France, the United States of America, the United Arab Emirates and others countries or regions for SANOFI-AVENTIS.
The Respondents are Chilli Communications FZ-LLC, Rasha Mansour and PrivacyP. The disputed domain name was registered on September 4, 2008 anonymously by Chilli Communications FZ-LLC, Rasha Mansour through PrivacyP's proxy service. 5. Parties' Contentions A. Complainant
The Complainant claims that it is a major player on the worldwide pharmaceutical market with presence in more than 100 countries around 5 continents since its formation in 2004.
While providing proof of trademark registrations for SANOFI-AVENTIS acquired in various countries and regions prior to the registration of the disputed domain name dated on September 4, 2008, the Complainant contends that the disputed domain name reproduces entirely the trademark SANOFI-AVENTIS which itself has no particular meaning and is therefore highly distinctive. The Complainant states that copying the Complainant's trademark in its entirety at the first and dominant part of the disputed domain name renders the disputed domain name confusingly similar to this trademark regardless of the additional element “star”, at the end of the disputed domain name.
The Complainant claims that the likelihood of confusion is strengthened by the notoriety of the Complainant and its trademarks. Therefore, the addition of a generic term -“star”- to a domain name incorporating a well-known trademark in its entirety, does not eliminate the likelihood of confusion.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name for the reason that the disputed domain name was registered via a privacy or proxy registration service provider that kept secret the real identity of the registrant and the Respondents were never licensed or otherwise permitted by the Complainant to use the trademarks SANOFI-AVENTIS to apply for any domain name incorporating this mark in its entirety.
The Complainant contends that it is inconceivable that the Respondents registered the disputed domain name unaware of the Complainant's rights given the reputation of its distinctive mark SANOFI-AVENTIS. The Complainant claims that the use of a proxy registration service combined with the Respondents' failure to respond to the cease-and-desist letter show the Respondents' bad faith.
The Complainant concludes that the disputed domain name was registered intentionally and is being used in bad faith for a commercial purpose without any rights or legitimate interests by the Respondents.
The Complainant requests the Panel that the disputed domain name be cancelled. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the requested cancellation of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy indicates that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
On the basis of the submissions and the relevant provisions of the Policy, the Panel concludes as follows. A. Identical or Confusingly Similar
The Panel notes that the Complainant's assertion to the rights over the mark SANOFI-AVENTIS was proved by the trademark registration certificates issued by the competent authorities in various countries or regions.
In assessing the degree of similarity between the Complainant's mark and the disputed domain name, the Panel notes that apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “sanofiaventisstar”. The disputed domain name is thus composed of “sanofiaventis” that is only a “-” less than the Complainant's registered trademark SANOFI-AVENTIS and a generic word “star” added to it.
It has been established by prior decisions made under the Policy that adding a generic word to a complainant's mark does not preclude a finding of confusing similarity (see Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans),WIPO Case No. D2002-0367).
The Panel therefore finds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights. The Complainant successfully proves the first element required by paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain name and, as stated above, the Respondents do not provide any information to the Panel of any rights or legitimate interests they may have in the disputed domain name.
It is apparent from the Complaint that there was no connection between the Respondents and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Through examining the statements and evidence submitted, the Panel finds that it is adequate to conclude that the Respondents have registered and used the disputed domain name in bad faith.
SANOFI-AVENTIS is the Complainant's distinctive mark with no particular meaning which has been registered in both the United Arab Emirates and European Community where the two Respondents have been located respectively before the disputed domain name was registered. The worldwide reputation of the mark SANOFI-AVENTIS further precludes the possibility of coincidence in the registration of the disputed domain name.
Having registered the disputed domain name that is confusingly similar to the Complainant's registered mark, the Respondents set up at the disputed domain name a website that contains no content except a video of around 20 seconds scientifically explaining what a star consists of. Since the term SANOFI-AVENTIS is the Complainant's mark for pharmaceutical products and has no apparent connection with any star, the Panel believes, also in the absence of any rebuttal by the Respondents, that the website at the disputed domain name is a sham to conceal the Respondents' intention of imitation and exploitation of the Complainant's reputable mark to attract Internet visitors who would be initially confused by the disputed domain name.
While not conclusive, the Panel notes that the other circumstances of the case, such as the Respondents' use of a proxy registration service and failure to respond to the Complainant's cease-and-desist letter, further suggest the Respondents' bad faith.
The Panel finds that the Complainant successfully proves the third element required by paragraph 4(a) 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 cancelled.
Dr. Hong Xue
Sole Panelist
Dated: May 7, 2009
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