The Complainant is Sanofi-Aventis of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.
The Respondent is Janice Liburd of Panama, Panama / Moniker Privacy Services of Pompano Beach, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2011. On May 24, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On May 25, 2011, Moniker Online Services, LLC. 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 May 26, 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 31, 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 June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2011.
The Center appointed Ana María Pacón as the sole panelist in this matter on July 20, 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is a multinational pharmaceutical company based in France. It has been formed in 2004 as a result of a merger between Aventis SA and Sanofi-Synthelabo. The Complainant has presence in more than 100 countries worldwide.
The Complainant has registered the trademarks SANOFI-AVENTIS and SANOFI-AVENTIS and device in various jurisdictions in the international classes 1, 3, 5, 10, 38 and 42, among others. These trademarks have been also registered as domain names in the “.eu”, “.com”, “.us”, “.biz“, “.info”, “.net”, and “.org”
Top-Level Domains (TLDs). According to a printout of the WhoIs database the disputed domain name was first registered on December 26, 2010, in favor of Moniker Online Services, Inc. 5. Parties’ Contentions A. Complainant
Similarity
The Complainant takes the position that the disputed domain name is confusingly similar to the Complainant’s trademark SANOFI-AVENTIS. The addition of the generic term “email” is not sufficient to avoid the confusing similarity. The consumers may be misled into believing that the Respondent is somehow connected with the Complainant.
No rights or legitimate interests
The Complainant contends that the Respondent is not, and never has been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks.
Registration and use in bad faith
The Complainant alleges that it is one of the leaders in the pharmaceutical industry in Europe and worldwide. It is owner of several trademarks that are well known and different domain names containing the distinctive names “Sanofi-Aventis”. It also reports that several panel decisions have recognized the notoriety of SANOFI-AVENTIS. Under these circumstances, in the view of the Complainant it is not possible that the Respondent did not know of the Complainant’s rights and reputation at the time of the registration of the disputed domain name.
The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, it alleges that the disputed domain name is being used for a website that contains sponsored links among others relating to employment, health, car insurance and online dating. Therefore, the Respondent is using the Complainant’s trademarks to divert Internet users to a parking website with links to commercial websites. So, it is probably that the Respondent’s purpose is to collect money on a pay per click basis.
On March 15, 2011, the Complainant sent a cease and desist letter to the Respondent. It never answered. On May 23, 2011, the Complainant filed the Complaint before the Center against the Respondent regarding the disputed domain name . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see e.g., Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
The Policy, in paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
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 to the domain name: and
iii. the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must establish two elements under paragraph 4(a)(i) of the Policy:
i) the Complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark.
The Complainant has provided sufficient evidence of its rights in the trademarks SANOFI-AVENTIS and SANOFI-AVENTIS and device, which are registered in several countries where the Complainant does business.
The only differences between the Complainant’s trademarks and the disputed domain name are the addition of the generic term “email” and of the generic Top-Level Domain (gTLD) “.com”. The disputed domain name incorporates the entirety of the trademark and is clearly designed to invoke the SANOFI-AVENTIS trademark. The addition of the generic expression “email” would likely draw Internet users to the conclusion that the disputed domain name relates to the Complainant’s trademark (see e.g., KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597). In fact, in doing so the disputed domain name keeps the same general appearance and sound as the trademark, remaining confusingly similar to the registered mark (see e.g., The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448; and VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421).
Under these circumstances, the Panel finds that the additions fail to distinguish the disputed domain name from the Complainant’s mark, and the disputed domain name is confusingly similar under Policy paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out certain circumstances in particular but without limitation, which if found by the Panel to be proven on its evaluation of all the evidence presented, shall demonstrate rights or legitimate interests on the part of the Respondent.
The Respondent has not submitted a response and has failed to invoke any circumstances that demonstrate any rights or legitimate interests in the disputed domain name.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark. The Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy, making out a prima facie case that the Respondent lacks such rights. The Respondent has defaulted and thus has not provided any evidence of any rights or legitimate interests in the disputed domain name.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) of the Policy in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation” be evidence of bad faith.
In the present case, there are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of its registration of the disputed domain name.
The Complainant is one of the leaders in the pharmaceutical sector in Europe and worldwide. The Complainant’s trademark SANOFI-AVENTIS is a well-known trademark in the sector of pharmaceutical products. So, the Respondent must have been clearly aware of the Complainant and its SANOFI-AVENTIS-branded products when the disputed domain name was registered (see e.g., Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector,WIPO Case No. D2005-0250).
The Respondent’s website displays services ― among others ― in the same field of business (health). It is common to know the trademarks of competitors.
The content of the Respondent’s website, i.e. sponsored links to a variety of products, is, in the view of the Panel, an indication of the Respondent’s intent to attract Internet users to its website by taking advantage of the Complainant’s name and goodwill (paragraph 4(b)(iv) of the Policy).
The use of a domain name for a parking website which may generate pay-per-click revenue is not, per se, evidence of bad faith. However, where the disputed domain name incorporates another’s well-known trademark and where there are precedents evidencing the Respondent’s substantially similar conduct in other cases (see e.g., Nilfisk-Advance A/S v. Moniker Privacy Services / Janice Liburd,WIPO Case No. D2011-0693; Citibank Privatkunden AG & Co. KGaA v. Janice Liburd / Moniker Privacy Services,WIPO Case No. D2011-0559; Confédération Nationale du Crédit Mutuel v. Moniker Privacy Services / Janice Liburd,WIPO Case No. D2011-0556; BPCE (Banque Populaire/ Caisse d’Epargne) v. Janice Liburd/Moniker Privacy Services,WIPO Case No. D2011-0555; Arla Foods amba v. Moniker Privacy Services / Janice Liburd,WIPO Case No. D2011-0492), there is no doubt that the Respondent is intentionally attempting to attract Internet users for financial gain creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name, when in fact there is no such connection (see e.g., Sanofi-Aventis v. Transure Enterprise Ltd, WIPO Case No. D2010-0964).
The Respondent was contacted by the Complainant in May 2011 in relation to its registration of the disputed domain name that included the Complainant’s trademark SANOFI-AVENTIS. The Respondent did not answer.
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 disputed domain name be cancelled.
Ana María Pacón
Sole Panelist
Dated: August 3, 2011
Full & Egal Universal Law Academy