The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Shu Lin, Shu Lin Enterprises Limited of Dalian, People’s Republic of China / A Domain Privacy of Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2011. On January 25, 2011, the Center transmitted by email to A, a request for registrar verification in connection with the disputed domain name. On January 27, 2011, A, Inc., transmitted by email to the Center its verification response disclosing that the registrant and contact information for the disputed domain name differed from the named Respondent and identified the registrant of the disputed domain name as Shu Lin. The Center sent an email communication to the Complainant on February 1, 2011, providing the registrant and contact information disclosed by A, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 7, 2011.
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 February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. The Respondent did not submit any formal Response. Accordingly, the Center notified the Respondent’s default on March 1, 2011.
The Center appointed Cherise M. Valles as the sole panelist in this matter on March 15, 2011. 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 is a multinational company created in 2004 between two French companies. It is one of the largest pharmaceutical companies in the world. It has consolidated sales of EUR 29.3 billion in 2009. It offers a wide range of patented prescription drugs.
It is the owner of the following trademarks, among others:
International trademark SANOFI AVENTIS, no. 849323, registered on February 17, 2005 in classes 01, 05, 10, 38, and 42 concerning certain pharmaceutical products in certain countries;
International trademark SANOFI AVENTIS, no. 839538, registered on October 1, 2004 in classes 01, 05, 09, 10, 16, 38, 41, 42 and 44 concerning certain pharmaceutical products in certain countries;
Community trademark SANOFI AVENTIS, no. 4054193, registered on September 28, 2004 in classes 01, 03, 05, 10, 38, and 42 concerning certain pharmaceutical products;
It also owns French and Canadian trademarks for SANOFI-AVENTIS.
The Complainant also owns numerous domain names containing the term “Sanofi-Aventis” including the following:
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Shu Lin is the registrant of the disputed domain name . The disputed domain name was registered on June 8, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on January 24, 2011, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the SANOFI AVENTIS trademark in the light of the fact that it incorporates its trademark in its entirety in the domain name, with the sole exception of the substitution of the letter “a” with the letter “o” in the first word of the disputed domain name. This registration appears to be indicative of the practice of typosquatting. Further, the Complainant submits that there is a greater use of confusion because of the notoriety of the Complainant and its trademarks.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to a parking website with links to commercial websites that offer pharmaceutical services or to pharmaceutical websites where competitors’ products are sold. Bad faith may be found where the Respondent uses the legitimate trademark of the Complainant for nefarious purposes, namely to divert Internet traffic searching for legitimate Sanofi-Aventis products.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent sent an email communication to the Complainant on December 8, 2010, regarding a possible transfer of the disputed domain name for USD 200. However, the Respondent did not provide a formal reply to the Complainant’s contentions in these proceedings. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore in default and the Panel shall draw such appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark SANOFI-AVENTIS. The Complainant has submitted evidence of its trademark registrations in Annexes 4 – 10 of the Complaint. The Complainant has also submitted in Annex 11 of the Complaint evidence of its registrations of domain names containing the term “sanofi-aventis”. The disputed domain name incorporates the Complainant’s mark in its entirety, with the sole exception that the “a” in “sanofi” has been replaced by an “o”. The Respondent’s registration of the domain name – which varies by only one letter – appears to be the practice of “typosquatting”. The Panel notes that Sanofi-aventis and its trademarks are well-known in many jurisdictions. See Sanofi-Aventis v. A Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2010–0426.
In Sanofi-Aventis and Aventis Inc. v. Web Advertising Corp., Nassau, Bahamas and Keyword Marketing, Inc.,WIPO Case No. D2007–0678, the Panel considered that:
“The Disputed Domain Name , except [for] the substitution of the letter “I” with the letter “y”, reproduces entirely the famous trademark SANOFI-AVENTIS of Complainant …
The large marketplace stature of Complainant and the marketplace strength and trademark registration strength of its business name makes confusion very likely”.
In this vein, the Panel considers that the Complainant’s significant notoriety and the fact that its trademarks are well-known increase the confusing similarity with the disputed domain name. Moreover, the confusion among Internet users is exacerbated by the fact that the disputed domain name is phonetically similar to the Complainant’s trademark.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) if the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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 Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s well-known SANOFI-AVENTIS trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant, who registered the trademark SANOFI-AVENTIS, has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark in the disputed domain name. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”
The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain name. Instead the evidence suggests that the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to commercial links leading to other websites. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(ii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full the trademark (with the sole exception of the change of one letter) and that the Respondent has no relationship to the SANOFI-AVENTIS trademark. The Panel shares the view that the registration of a domain name that is confusingly similar or identical to a well-known trademark by any entity that does not have a relationship to that mark may be evidence of bad faith registration and use. See, Centurion Bank of Punjab Limited v. West Coast Consulting LLC, WIPO Case No. D2005-1319. The Complainant has provided evidence to the Panel that the website associated with the disputed domain name contains links to commercial websites that offer pharmaceutical services and or pharmaceutical websites where competitors’ products are proposed for sale. Consequently, the Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
The Panel notes that, on December 8, 2010, the Respondent offered to sell the disputed domain name to the Complainant for USD 200. The Respondent did not provide any documentation that demonstrated that this amount represented “documented out-of-pocket costs directly related to the domain name” within the meaning of paragraph 4(b) of the Policy. In the absence of such documentation, the Panel cannot make a finding that the amount represents out-of pocket costs directly related to the domain name.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) 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 the Complainant.
Cherise M. Valles
Sole Panelist
Dated: March 29, 2011
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