WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Domain Management Case No. D2009-0682 1. The Parties
The Complainant is Sanofi-Aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Domain Management of New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2009. On May 26, 2009, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On May 26, 2009, N LLC 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 June 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 6, 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, is one of the largest pharmaceutical groups in the world, with consolidated net sales of some 27 million euros in 2008 and some 4.5 billion euros in research and development expenditure in 2007.
The Complainant offers a wide range of patented prescription drugs, mainly in the fields of cardiovascular diseases, thrombosis, metabolic disorder, oncology, central nervous system, internal medicine and vaccines.
Following the successful closing of the Complainant's tender offer on March 12, 2009, Zentiva has become part of the Complainant's group.
The Complainant owns multiple trademark registrations for the mark SANOFI around the world. For example: International trademark No. 591490 – SANOFI and device designating, among others, Austria, Benelux, Switzerland, China, Cuba, Czech Republic, Germany, Algeria, Italy, Morocco, Poland, Russian Federation, Vietnam and others; Community Trademark (“CTM”) registration No. 004182325 – SANOFI, with the filing date of December 8, 2004; CTM registration No. 000596023 – SANOFI (logo), with the filing date of July 15, 1997; United States (“US”) trademark registration No. 2914521 – SANOFI, with the filing date of July 23, 2003.
The Complainant also owns several domain names that are consisting of the name Sanofi. For example: , , , and others. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name on September 22, 2008. The disputed domain name leads to a parked web page, which offers links to different websites relating to tourism. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the SANOFI trademark owned by the Complainant, seeing that it incorporates the trademark with the term “zentiva”, which refers to the company name of the Complainant's subsidiary, since March 2009.
The Complainant further argues that it has exclusive rights to the SANOFI trademark and that this trademark is widely recognized in connection with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the SANOFI mark.
The Complainant further argues that the Respondent was aware of its existence and of its SANOFI mark and product at the time it registered the disputed domain name.
The Complainant further argues that the Respondent has offered to sell to the Complainant the disputed domain name, in response to the Complainant's cease and desist letter. The Complainant argues that this behavior constitutes bad faith.
The Complainant further argues that the Respondent has registered the disputed domain name shortly after the acquisition of Zentiva by the Complainant was announced. The Complainant argues this constitutes cybersquatting and is therefore indicative of the Respondent's bad faith.
The Complainant further argues that the Respondent is using the disputed domain name in bad faith, with the intent to divert Internet users from the Complainant's products and services and create a likelihood of confusion.
The Complainant further argues that it is likely that the Respondent in using the web site operating under the disputed domain name to collect money on a pay-per-click basis, and is using the notoriety of the Complainant's trademark in order to increase the number of “clicks”. The Complainant argues that this constitutes bad faith.
For all of the above reasons, the Complainant requests the cancellation of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the term shown in the trademark certificate belong to its respective owner. The SANOFI trademark is registered in the name of the Complainant in various jurisdictions around the world. For example, International trademark No. 591490 – SANOFI and device designating, among others, Austria, Benelux, Switzerland, China, Cuba, Czech Republic, Germany, Algeria, Italy, Morocco, Poland, Russian Federation, Vietnam and others; CTM registration No. 004182325 – SANOFI, with the filing date of December 8, 2004; CTM registration No. 000596023 – SANOFI (logo), with the filing date of July 15, 1997; US trademark registration No. 2914521 – SANOFI, with the filing date of July 23, 2003, and many others.
The disputed domain name differs from the registered SANOFI trademarks only by the additional word “Zentiva”.
The domain name integrates the Complainant's trademark SANOFI in its entirety with the word “Zentiva” as a suffix and as such, in light of the circumstances, the Panel finds the disputed domain name is confusingly similar to the Complainant's SANOFI trademark. Moreover, the Complainant submitted evidence showing that “Zentiva” is a company name of one of the companies in its group, thus the combination of the Complainant's trademark SANOFI and the name “Zentiva” only heightens the likelihood of confusion.
Although not essential to the Panel's current findings, the Panel notes that the Complainant does not own a trademark registration for the term “Zentiva”. Had the disputed domain name been comprised of the term “Zentiva” plus, for example, a generic word, the absence of a trademark registration at the time of the registration of the disputed domain name would not necessarily preclude a finding by a panel that a complainant had acquired rights in that mark for the purposes of paragraph 4(a)(i) of the Policy.
If it had, in fact, been necessary for the Complainant to demonstrate trademark rights in the “Zenvita” name, it would then have been appropriate for the Panel to consider whether the Complainant had proven unregistered trademark rights in this term. The Panel finds that, in the specific circumstances of this case, such a finding would be appropriate based on the evidence submitted. Factors typically considered influential in such an analysis are longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
The Complainant contends that it filed a tender offer to acquire the company “Zentiva” in July of 2008 and succeeded in closing the tender offer on March 12, 2009. Soon after the Complainant announced its intention to acquire the company Zentiva, the Respondent registered the disputed domain name.
While the Complainant has not furnished the Panel with sales figures or advertising budgets relating to its services under the name Zentiva, the Complainant argues that it has a significant reputation in the name Zentiva and that the acquisition of Zentiva has made the Complainant the 11th biggest generic medicines manufacturer worldwide. These contentions and inferences were not rebutted by the Respondent. Previous panels have ruled that in similar situations, all reasonable inferences of fact in the allegations of the complainant will be deemed true (See, for example, Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
Certainly, in light of the circumstances, it is presumed that the Complainant has acquired along with the Zentiva company the reputation in the ZENTIVA mark among consumers. The Zentiva Company was widely known for its generic drugs and this Panel is satisfied that the name Zentiva has acquired a significant reputation in the pharmaceutical industry and among the general public. Such length of use, combined with the Complainant's constant use of the mark, persuades the Panel that the Complainant has acquired unregistered trademark rights in the ZENTIVA mark. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the SANOFI or the ZENTIVA trademarks, or any variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under Policy, paragraph 4(a)(iii).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved.
A review of the web site operating under the disputed domain name reveals it is being used as a parked web page, which contains links to other websites offering information and services concerning tourism. These services are likely to create confusion as to the source, sponsorship, affiliation or endorsement of the web site with those of the Complainant's.
The disputed domain name is virtually identical and confusingly similar to the Complainant's trademarks. Previous WIPO panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP Panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark is evidence of bad faith under paragraph 4(b)(iv) of the UDRP (see Humana Inc., op. cit. supra; E v. Ultimate Search, Inc.,WIPO Case No. D2001-1319).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name 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.
Jonathan Agmon
Sole Panelist
Dated: July 19, 2009
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