The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Online Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2013, the Registrar 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 December 23, 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 December 23, 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 December 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2014.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 17, 2014. 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 owns the following trademark registrations, among others: Registration No. Trademark Country and Region Class Registration Date
3309318
SANOFI AVENTIS (stylized)
France
01; 03; 05; 09; 10; 16; 38; 41; 42; 44
20/08/2004
3288019
SANOFI-AVENTIS
France
01; 03; 05; 09; 10; 16; 38; 41; 42; 44
26/04/2004
4054193
SANOFI AVENTIS (stylized)
European Community
01; 03; 05; 10; 38; 42
24/11/2005
4025318
SANOFI- AVENTIS
European Community
01; 03; 05; 09; 10; 16; 38; 41; 42; 44
03/11/2005
849323
SANOFI AVENTIS (stylized)
International Registration
(designating Australia, the Republic of Korea, Norway, Iceland, Japan, Singapore, China, United States, etc.)
01; 03; 05; 10; 38; 42
17/02/2005
839358
SANOFI- AVENTIS
International Registration
(designating Australia, the Republic of Korea, Norway, Iceland, Japan, Singapore, China, United States, etc.)
01; 03; 05; 10; 38; 42
01/10/2004
The Complainant owns the following domain names: Domain Name Registration Date
14/03/2004
10/03/2006
18/12/2006
26/04/2004
26/04/2004
27/04/2004
26/04/2004
26/04/2004
26/04/2004
20/06/2006
23/03/2009
The disputed domain name was registered on July 14, 2013. 5. Parties’ Contentions A. Complainant
The Complainant argues the following: Confusingly Similar
That it is a multinational pharmaceutical company headquartered in Paris, France.
That the disputed domain name reproduces all of the Complainant’s SANOFI-AVENTIS trademarks and domain names.
That the only difference between the Complainant’s trademarks and domain names and the disputed domain name is the purposeful omission of the letter “s” in the word “Aventis”, and the omission of the hyphen between the words “sanofi” and “aventis”.
That from a visual and a typographical point of view, these omissions must be considered as merely insignificant given that the letters and the words used in the disputed domain name are very similar to those of the Complainant’s trademarks and domain names.
That the likelihood of confusion is ascertained by the notoriety of the Complainant’s trade name, trademarks and domain names. Rights or Legitimate Interests
That since the names “Registration Private” or “Domains By Proxy LLC” do not bear any resemblance with the words “sanofi-aventis”, it is obvious that the Respondent does not have any rights or legitimate interests in the disputed domain name.
That Domains By Proxy LLC is not the real registrant, because said company is a corporation which offers its clients a service for the registration of domain names in its own name and on behalf of third parties in order to keep secret the registrant’s real identity.
That the Complainant has never licensed or authorized the Respondent to use its trademarks or to register any domain name including the SANOFI-AVENTIS trademarks.
That the disputed domain name resolves to a parking website and is registered only for the purpose of attracting Internet users into clicking on the “Sponsored Links” all of which proves that the Respondent is not providing a bona fide offering for goods and services. Registration and Use in Bad Faith
That the disputed domain name was registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the disputed domain name and the Complainant’s SANOFI-AVENTIS trademarks and domain names.
That the Complainant owns the SANOFI and SANOFI-AVENTIS trademarks, which are well-known brands throughout the world.
That the Respondent’s use of a well-known trademark in the disputed domain name is, in itself, an indicative of bad faith registration.
That the Respondent was, undoubtedly, aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name since it could lead Internet users (searching for the Complainant’s official websites) to the website at the disputed domain name.
That the Respondent has sought to take advantage of Internet users typing an incorrect address when seeking access to the Complainant’s website, a practice that consists of “typosquatting” and is evidence of bad faith registration.
That the Respondent uses the disputed domain name to divert Internet users to a typical parking website with links to commercial websites, in order to take benefit of the Complainant’s reputation for commercial gain.
That some of the commercial links correspond to pharmaceutical websites where products of the Complainant’s competitors are being sold at a very low price, a conduct which is considered as a bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations. See Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487. A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for SANOFI-AVENTIS. This trademark is well-known due to its global presence and consumer recognition.
The disputed domain name is confusingly similar to the Complainant’s trademark SANOFI-AVENTIS. It incorporates the said trademark, with the following modifications: (1) the disputed domain name eliminates the hyphen between the words “sanofi” and “aventis”; and (2) the disputed domain name eliminates the letter “s” at the end of “aventis”. This is a typical typosquatting practice.
The omissions of the hyphen and of the last “s” in “aventis” are irrelevant for the purposes of this analysis, as they do not provide any distinctiveness to the disputed domain name. The referred omissions are essentially insignificant, because the disputed domain name does not create a new visual or orthographical impression than the one produced by the Complainant’s trademarks. The mere deletion of the final letter “s” and of the hyphen does not prevent the confusing similarity between the Complainant’s SANOFI-AVENTIS trademarks and the disputed domain name. SeeSanofi v. Contact Privacy Inc. Customer 0132380420 / ICS inc.,WIPO Case No. D2013-0367. See alsoExpress Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302.
The addition of the generic Top-Level Domain (gTLD) “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the gTLD “.com”, because it has no legal significance.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is making 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 Respondent has not submitted any evidence showing actual bona fide use, or preparations to use the disputed domain name with a bona fide offering of services, nor has the Respondent demonstrated that it has been commonly known by the disputed domain name, or that it is making a legitimate noncommercial or fair use of the disputed domain name.
In fact, the available record shows that the disputed domain name has been parked under a pay per click program. The disputed domain name resolves to a website that features links to some sponsored links, to websites of some of the Complainant’s competitors and to websites where competing products are being sold, as well as to diverse products and services. In the Panel’s assessment, this practice constitutes commercial bad faith, with the intention to misleadingly divert consumers for commercial gain. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708; Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404; Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258.
Therefore, the Panel finds no rights or legitimate interests on the side of the Respondent. The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to Paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your 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 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; 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 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 website or location or of a product or service on its website or location.
The trademark SANOFI-AVENTIS is well known according to the evidence filed by the Complainant, which was not rebutted by the Respondent.
Several UDRP decisions have recognized the notoriety of the SANOFI-AVENTIS trademarks. See Sanofi-Avenits v. Naby Diaw,WIPO Case No. D2007-1619 and Sanofi v. Joseph Donovan,WIPO Case No. DCO2013-0015.
Also, previous UDRP decisions have found bad faith when the use of a domain name, by someone with no connection with the trademark, is evidently connected with a well-known trademark. This constitutes opportunistic bad faith. See Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited,WIPO Case No. D2007-1641).
The disputed domain name resolves to a typical pay per click page, which is likely to cause confusion as to the source of the products featured on it, and the sponsorship or endorsement of the Complainant in connection to the website associated to the disputed domain name.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark. See e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA,WIPO Case No. D2007-1143.
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. The third element of the Policy has been 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 disputed domain name be cancelled.
Kiyoshi Tsuru
Sole Panelist
Date: January 31, 2014
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