The Complainant is Sanofi-aventis of Gentilly, France represented by Selarl Marchais De Candé, France.
The Respondents are c/o SANOFIEVENTS.COM and Najdat Hmedany of Vancouver, Washington, United States of America and Dubai, United Arab Emirates, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2011. On May 19, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name. On May 19, 2011, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 24, 2011 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 May 27, 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 May 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2011.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on June 23, 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
Sanofi-aventis is a company created in 2004 as a result of merger between the two French companies Aventis SA and Sanofi-Synthelabo. Following the merger, Sanofi-aventis became the first pharmaceutical group in Europe and the fourth in the world, with consolidated net sales of EUR 30.3 billion, and EUR 4.4 billion Research and Development expenditure in 2010.
Sanofi-aventis is a multinational company settled in more than 100 countries around 5 continents. Sanofi-aventis employs 105,000 people worldwide, and has 49 projects under development, 17 of which are at advanced stages.
The Complainant proved that it is the owner of the following trademarks and domain names, all predating the date of registration of the Domain Name:
- French trademark SANOFI (and device) No. 96655339, registered on December 11, 1996 in classes 01; 03; 05; 09; 10; 35; 40; 42 and duly renewed.
- United States (U.S.) trademark SANOFI (and device) No. 78277719 registered on December 28, 2004 in classes 03; 05; 42.
- CTM SANOFI (and device) No. 596023 registered on February 1, 1999 in classes 03; 05.
- CTM SANOFI No. 4182325 registered on February 9, 2006 in classes 01; 09; 10; 16; 38; 41; 42; 44.
- International trademark SANOFI (and device) No. 591 490 registered on September 25, 1992 in class 5, namely “pharmaceutical products”;
- International trademark SANOFI AVENTIS (and device) No. 849323, registered on February 17, 2005 in classes 01; 03; 05; 10; 38; 42.
- International trademark SANOFI AVENTIS No. 839358 registered on October 01, 2004 in classes 01; 03; 05; 09; 10; 16; 38; 41; 42; 44 .
CTM SANOFI AVENTIS (and device) No. 4054193 registered on September 28, 2004 in classes 1; 3; 5; 10; 38; 42.
- CTM SANOFI AVENTIS No. 4025318 registered on September 14, 2004 in classes 1; 3; 5; 9; 10 ; 16 ; 38; 41; 42; 44 .
- French trademark SANOFI AVENTIS (and device) No. 3309318 registered on August 20, 2004 in classes 01; 03; 05; 09; 10; 16; 38; 41; 42; 44 .
- French trademark SANOFI AVENTIS No 3288019 registered on April 26, 2004 in classes 01; 03; 05; 09; 10; 16; 38; 41; 42; 44.
- Canadian trademark SANOFI AVENTIS No. 1235065 registered on July 24, 2006 in classes 01; 03; 05; 09; 10; 16; 38; 41; 42; 44.
registered on October 13, 1995;
registered on July 12, 2001;
registered on May 16, 2002;
registered on March 10, 2006;
registered on March 14, 2004;
registered on April 26, 2004;
registered on April 26, 2004;
registered on April 26, 2004;
registered on April 26, 2004;
registered on April 26, 2004; 5. Parties’ Contentions A. Complainant
The Complainant states that the Domain Name is confusingly similar to the trademarks and domain names in which the Complainant has rights. The Domain Name fully reproduces the SANOFI trademark, which enjoys high distinctive character. The addition of the term “events” cannot prevent likelihood of confusion. “Events” is a very common English term, and is inevitably used on the Complainant’s website to refer to the company’s news and agendas, as it appears in Annex 18 to the Complaint.
Furthermore, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name for the following reasons.
First, the Complainant points out that c/o SANOFIEVENTS.COM, which is indicated as the Domain Name registrant is not the real registrant. Dotster – the Domain Name Registrar – offers the possibility to register domain names in its name but on behalf of third parties so as to conceal the registrant’s identity. Through its Acknowledgment of Receipt of Complaint, Dotster informed the Center that the Registrant’s details for the Domain Name are as follows:
Najdat Hmedany
[---]
Dubai AE [---]
+9---6
n---y@
Moreover, the Complainant did not grant any license or other authorization to use its trademarks in relation to the Domain Name. Therefore there is no relationship between the Complainant and the Respondent and no reason that could justify the Respondent’s registration of the Domain Name.
Finally, according to the Complainant, the Respondent registered and uses the Domain Name in bad faith.
As a matter of fact, the Respondent registered a domain name comprising the Complainant’s well-known trademark SANOFI. It is therefore clear that the Respondent was aware of the Complainant’s trademark at the time it registered the Domain Name.
Furthermore, the Domain Name is used to redirect the Internet user to a page containing pay-per-click links. Therefore the Respondent is exploiting the Complainant’s well-known trademark to gain unfair benefit from Sanofi-Aventis reputation, with links to commercial websites.
The Complainant sent to the registrant a cease and desist letter requesting the immediate transfer of the Domain Name as its registration and use breached the Complainant’s earlier rights. The Respondent refused to transfer the Domain Name arguing that “he was collecting good names as a hobby”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove that each of the conditions specified in paragraph 4(a) of the Policy are satisfied. In particular, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered, and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has successfully proved that it is the owner of the trademarks SANOFI and SANOFI-AVENTIS in several countries worldwide.
The Domain Name entirely reproduces the Complainant’s trademark SANOFI, and this term coincides with the distinctive part of the Domain Name. The term “events”, which is used as a suffix in the Domain Name, lacks distinctive character. Moreover, the combination of the terms SANOFI and EVENTS in the Domain Name bears some phonetic and visual similarities with the combination SANOFI-AVENTIS of the Complainant’s mark.
The Panel therefore concludes that the Domain Name is confusingly similar to the Complainant’s well-known trademarks SANOFI and SANOFI-AVENTIS. B. Rights or Legitimate Interests
First, it is worth noting that the registrant’s name as indicated in the relevant Whois is
c/o SANOFIEVENTS.COM
P.O. Box 8---0
Vancouver
WA USA
However, upon verification with the Registrar, this information has proved not to be accurate. Instead, the registrant’s contact details are as follows:
Najdat Hmedany
[---]
Dubai [---]
AE
+9---6
n---y@
Therefore, there is no evidence that the Respondent has been commonly known by or had any connection to the name “Sanofi” and it is clear that the Complainant has not authorized the Respondent to use its name.
There is also no evidence that before any notice of the dispute, the Respondent used or made 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.
In addition, the use of the Domain Name, as further discussed below, it not 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 Panel therefore concludes that the Complainant has shown a prima facie case of the lack of the Respondent’s rights or legitimate interests. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2.1): “[w]hile 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 an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In view of the above, the Panel is satisfied that the second requirement under paragraph 4(a)(ii) of the UDRP has been met. C. Registered and Used in Bad Faith
The Panel accepts that the trademarks SANOFI and SANOFI-AVENTIS enjoy extensive reputation worldwide. Other panel decisions have recognized the notoriety of SANOFI-AVENTIS trademarks (see, e.g., Sanofi-Aventis v. Naby Diaw, WIPO Case No. D2007-1619; Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited,WIPO Case No. D2007-1641; Sanofi-aventis v. Pluto Domain Services Private Limited.,WIPO Case No. D2009-0078.
In the Panel’s view, the Complainant successfully proved that it is a major global healthcare leader, operating worldwide with more than 100,000 employees in 100 countries. Sales in 2010 reached more than EUR 30 million.
In the absence of any counter-argument from the Respondent, the Panel concludes that the Respondent was aware or should have been aware of the Complainant’s trademark when it registered the Domain Name.
The Panel further notes that the provision of false contact information in the registration of the Domain Name is further evidence of bad faith.
Accordingly, the Panel finds that the Domain Name was registered in bad faith.
Moreover, the Complainant successfully proved that the Domain Name leads to an “under construction” page, containing links to sponsored commercial websites, some of which offer products and services in direct competition with those of the Complainant.
In accordance with previous UDRP decisions, the Panel finds that the use of a domain name containing a well-known trademark to point to a website that offers sponsored links to other websites is evidence of use in bad faith.
It is also worth mentioning that the Complainant notified the registrant of the breach of its trademark rights by sending a cease and desist letter to the registrant. The Complainant requested the immediate transfer of the Domain Name, but the registrant refused to comply with the Complainant’s request, explaining that “collecting good domain names” was his hobby.
The fact that the Respondent refused to voluntarily transfer the Domain Name, once being officially informed of the infringement is further evidence of the use of the Domain Name in bad faith.
Therefore, the Panel concludes that the Respondent registered the Domain Name to intentionally attempt to attract for financial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, affiliation or endorsement of the registrant’s website.
Accordingly, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy is met. 7. Decision
For 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.
Angelica Lodigiani
Sole Panelist
Date: July 4, 2011
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