The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Contact Privacy Inc. Customer 0132380420 of Toronto, Canada / ICS inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 25, 2013, the Registrar 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 February 28, 2013 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 4, 2013.
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 March 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 4, 2013. 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 French multinational pharmaceutical company headquartered in Paris. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also develops over-the-counter medication. Historically, the Complainant was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo, and changed its name to Sanofi in May 2011. The Complainant has operations in more than 100 countries employing 110,000 people and had sales of EUR 34.9 billion in 2012.
The Complainant and its predecessors in title have held trade mark registrations for SANOFI-AVENTIS (the “SANOFI-AVENTIS Mark”) since at least 2004. Its trade mark registrations for the SANOFI-AVENTIS Mark cover a range of pharmaceutical products and includes registrations in various jurisdictions both in France, Europe and around the world.
The Domain Name was created on October 1, 2012. It currently revolves to a portal site (“Respondent’s Website”) that contains the words “Sanofi Aventis” (the former name of the Complainant) and provides a number of links to third-party commercial sites. It has in the past contained the statement “Inquire about this domain” which linked to a domain sales website. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SANOFI-AVENTIS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the SANOFI-AVENTIS Mark. It owns trade mark registrations for the SANOFI-AVENTIS Mark in various jurisdictions around the world. The SANOFI-AVENTIS Mark itself does not have any particular meaning and is therefore highly distinctive.
The Domain Name consists of a misspelling of the SANOFI-AVENTIS Mark. The only difference between the SANOFI-AVENTIS Mark and the Domain Name is the removal of the letter “s” at the end of the word “aventis”. This removal of a single letter is indicative of typosquatting.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no trade mark rights or licence to use the SANOFI-AVENTIS Mark, nor is it commonly known by the name. The Respondent has not used or made preparations to use the Domain Name in connection with a bona fide offering of goods and services, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Name. The Domain Name leads to a parking website and has been registered only for the purpose of selling it.
The Domain Name was registered and is being used in bad faith. Given the fact the SANOFI-AVENTIS Mark is famous and known worldwide and in the absence of evidence to the contrary, the Respondent knew of or should have known of the SANOFI-AVENTIS Mark at the time the Respondent registered the Domain Name, and did so with a view to illegitimately take advantage thereof. Quite clearly, the Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant’s website, a practice dubbed typosquatting and condemned in a number of UDRP decisions.
The circumstances of this matter indicate that the Respondent has registered the Domain Name primarily for the purpose of selling it to the highest bidder for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name, since the Domain Name is clearly for sale. Furthermore the Respondent is using the Domain Name to divert Internet users to a typical parking website with third parties’ links to commercial websites in order to take benefit of the Complainant’s notoriety for commercial profit. The Respondent has registered and used the Domain Name in bad faith by registering the Domain Name while being aware of the Complainant’s rights and then using the Domain Name for financial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SANOFI-AVENTIS Mark, having registrations for SANOFI-AVENTIS as a trade mark in France and other jurisdictions.
The Domain Name consists of the SANOFI-AVENTIS Mark with the letter “s” at the end of the word “aventis” being deleted. The mere deletion of the final letter “s” does not operate to prevent a finding of confusing similarity between the SANOFI-AVENTIS Mark and the Domain Name as the change is essentially insignificant when considering the visual impression given by the Domain Name. The Panel finds that the Domain Name is confusingly similar to the Complainant’s SANOFI-AVENTIS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SANOFI-AVENTIS Mark or a mark similar to the SANOFI-AVENTIS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent has used the Domain Name to operate a website that contains a number of links to third party commercial web sites, none of which have any connection to the Domain Name, and to advertise that the Domain Name is for sale. Neither of these activities amount to a bona fide offering of goods or services.
The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct demonstrates a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) 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 online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s Website or location.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the SANOFI-AVENTIS Mark at the time the Domain Name was registered. The Complainant is one of the four largest pharmaceutical companies in the world with operations in more than 100 countries. The fame of the Complainant and its SANOFI Mark (one part of the Domain Name) has been recognised in numerous other UDRP Decisions, including Sanofi v. Contact Privacy inc. Customer 0129138820 / ICS Inc, WIPO Case No. D2012-1314; Sanofi v. PrivacyP / ICS Inc, WIPO Case No. D2012-1293.; and Sanofi-Aventis v. Naby Diaw, WIPO Case No. D2007-1619.
The words “sanofi” and “aventis” are coined words that have no meaning other than by reference to the Complainant. It is implausible that a person would register a Domain Name that contained one of these words and a near-misspelling of the other without any awareness of the Complainant. Finally the Respondent’s Website contains the words “sanofi” and “aventis”, indicating an awareness of the Complainant. The registration of the Domain Name in awareness of the Complainant’s SANOFI-AVENTIS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Domain Name has been registered and is being used in bad faith. The Respondent’s Website has contained an advertisement indicating that it is for sale, which, when clicked, linked to a domain name sales website. In the Panel’s view, this is evidence that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name for valuable consideration likely in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.
In the alternative the Domain Name was registered to attract, for commercial gain, Internet users to its web site 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. In particular the Respondent’s Website resolves to a page that offers sponsored-links to third party sites, including web sites that offer pharmaceutical products in competition with the Complainant. Such web sites generally advertise by paying registrants on a pay-per-click basis for Internet users redirected to their web sites. This means that the Respondent receives a financial reward for every Internet user redirected from the Respondent’s Website to those third-party web sites.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under Paragraph 4(a)(iii) of the Policy. 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 cancelled.
Nicholas Smith
Sole Panelist
Date: April 9, 2013
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