The Complainants are Sanofi of Paris, France and Zentiva Group, a.s. of Prague, Czech Republic, represented by Selarl Marchais & Associés, France.
The Respondent is Ercan Dogani / Ercan Dogan1 / Ercan Duğan of Istanbul, Turkey, self-represented. 2. The Domain Names and Registrars
The disputed domain names
are registered with Reg2C.com Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2015. On February 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 12, 2015, the Center sent an email to the parties in both English and Turkish regarding the language of the proceeding.
On March 13, 2015, the Center received the Complainant’s request that English be the language of the proceeding. On March 17, 2015, the Center received the Respondent’s request that Turkish be the language of the proceeding.
The Center verified that 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 in both English and Turkish, and the proceeding commenced on March 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2015. The Center did not receive any formal Response.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on April 27, 2015. 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 Sanofi is a French multinational pharmaceutical company headquartered in Paris. The Complainant Zentiva Group is also an international pharmaceutical company focused on developing, manufacturing and marketing modern generic pharmaceutical products. Zentiva Group is the generic drug arm of Sanofi.
The Complainant is the owner of the registered trademarks SANOFI and ZENTIVA in many countries, including Turkey. A list of these trademark registrations was attached to the Complaint.
The Complainant is also the owner of domain names which incorporate its trademarks, a list of which was also attached to the Complaint. These registrations predate the registrations of the disputed domain names.
The Respondent registered the disputed domain names on October 21, 2014. The Panel visited the disputed domain names on May 13, 2015, and observed that the disputed domain names are inactive. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(i) of the Policy, the Complainant requests that the disputed domain names be cancelled. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant asserts that the disputed domain names are confusingly similar to its trademarks SANOFI and ZENTIVA as they incorporate the whole of Complainant’s SANOFI and ZENTIVA trademarks. The Complainant states that the addition of “nano”, “medicine” or “ilac” does not affect the confusing similarity as these terms are very common in the pharmaceutical sector. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not have any rights or legitimate interests regarding the disputed domain names. The Complainant has not given the Respondent any license to register its trademark as a domain name. Further, the Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the domain names nor he is using the disputed domain names in connection with a bona fide offering of goods or services. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain names to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is Turkish.
The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent sent an email on March 17, 2015 and requested the language of the proceeding be Turkish. However, the Respondent has not submitted any formal response although the Center notified the commencement of the administrative proceeding in both English and Turkish. In the circumstances, and taking into account the Respondent’s default and that the disputed domain names contain words used in the English language such as “nano” and “medicine”, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceedings be English, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L,WIPO Case No. DRO2006-0001.
Therefore, the Panel has decided to accept the Complainant’s filings in English and issue a decision in English. 6.2. Substantive Elements of the Policy
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademarks SANOFI and ZENTIVA as evidenced in the annexes to the Complaint.
The Panel is of the opinion that the addition of terms which are commonly used in the pharmaceutical sector, does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain names. “On the contrary, the nature of the generic terms used would tend to reinforce consumers’ erroneous conclusion that the websites to which the disputed domain names resolve are somehow legitimately included in the supply and service system established by the Complainant”, Aktiebolaget Electrolux v. Ibrahim Yurtcu,WIPO Case No. D2013-0796.
The Panel further finds that the addition of generic Top-Level Domains (gTLDs) such as “.com” or “.net” may be disregarded when determining whether the disputed domain names are confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may often be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s trademark rights and concludes that the disputed domain names are identical and confusingly similar with the Complainant’s SANOFI and ZENTIVA trademarks.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It has been established in numerous UDRP decisions that it is often impossible for a complainant to prove a negative and for that reason the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.
The Policy, at paragraph 4(c), provides various ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain names as the Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use its trademarks SANOFI and ZENTIVA. The Complainant alleges that the Respondent is not making a legitimate use of the disputed domain names and that the Respondent’s reason for registering the disputed domain names is to confuse consumers by indicating an affiliation with the Complainant in order to direct Internet traffic to the Respondent’s webpage.
The Respondent has failed to submit proof of any rights or legitimate interests in the disputed domain names and reply to the Complainant’s contentions. Therefore, the Panel finds that there is no evidence to suggest that the Respondent has any rights or legitimate interests in any trademarks or service marks which are identical, similar or related to the disputed domain names.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not provided any evidence of its rights or legitimate interests in the disputed domain names. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s 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 the respondent's 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 Complainant’s trademarks SANOFI and ZENTIVA were registered and used before the Respondent’s registration of the disputed domain names. Further, the Complainant’s trademarks are well-known in the pharmaceutical sector. Therefore, the Panel concludes that the Respondent was aware of the Complainant’s trademarks SANOFI and ZENTIVA at the time the disputed domain names were registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademarks at the time of registration of the disputed domain names is to be considered as an indication of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
The Panel visited the disputed domain names on May 13, 2015, and observed that the disputed domain names do not resolve to an active website. In light of the facts that (i) the Complainant’s trademarks have a reputation and are well-known in Turkey, (ii) the disputed domain names were registered well after the registration and use of the Complainant’s trademarks, (iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names, and (iv) the Respondent did not respond to the Complaint, the Panel is of the opinion that the passive holding of the disputed domain names by the Respondent amounts to the Respondent acting in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element 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 disputed domain names, , , , , , , , , , , , , , , , , , , , , , , , , and be cancelled.
Gökhan Gökçe
Sole Panelist
Date: May 13, 2015
Full & Egal Universal Law Academy