The Complainants are Sanofi of Paris, France and Genzyme Corporation of Cambridge, Massachusetts, United States of America (“US”), represented by Selarl Marchais & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, US / Mary Sward of Lebanon, Kentucky, US. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2016. On August 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2016, 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 Complainants on September 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on September 7, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2016.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 19, 2016. 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 first Complainant is one of the largest multinational pharmaceutical companies in the world and is headquartered in Paris, France.
The second Complainant is a US biotechnology company founded in 1981 and owned by the first Complainant.
The second Complainant has registered the GENZYME trademark in several jurisdictions, including in the US under registration number 1,859,429, registered on October 25, 1994, in China and in the European Union.
Additionally, the Complainants have a significant Internet presence, having registered and currently using several domain names featuring the GENZYME trademark, including , , , , and .
The disputed domain name was registered on August 5, 2016.
The disputed domain name has no active page linked to it. 5. Parties’ Contentions A. Complainants
The Complainants make the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights. The second Complainant is the rightful owner of several GENZYME trademarks in jurisdictions around the world, including in the European Union, in the US and in China. The second Complainant is also the owner of many domain names incorporating the trademark GENZYME. The disputed domain name reproduces the GENZYME trademark and domain names, which, as themselves, do not have any particular meaning and are therefore highly distinctive. The first Complainant has used its SANOFI trademark and trade name for over 40 years and invested substantial financial resources over the years to advertise and promote the company and its SANOFI-trademarks in countries all over the world. The disputed domain name is identical or at least confusingly similar to prior above cited GENZYME trademarks, regardless of the adjunction of the geographical indication “nl” and the generic Top-Level Domain (gTLD) “.com”. It is well established that the gTLD should be disregarded. The relevant comparison to be made is with the second-level portion of the disputed domain name. It is also well established that where a domain name wholly incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, a descriptive word. Indeed, the geographical indication “nl” stands for the “Netherlands”, which is universally understood as a geographical location, which cannot serve to distinguish domain names. The Respondent selected the disputed domain name in a specific attempt of free-riding the fame of the Complainants’ GENZYME trademarks. Consequently, the adjunction of the geographical indication “nl” to the trademark GENZYME in the disputed domain name is undoubtedly insufficient to alleviate the likelihood of confusion with the Complainants’ aforementioned trademarks and domain names. There is an inevitable risk that the disputed domain name will cause confusion, as it could lead average consumers to mistakenly believe that it is related to the official website of the second Complainant. Finally, the likelihood of confusion is ascertained by the reputation of the Complainants’ trade name, trademarks, domain names and more generally speaking goodwill.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The name Mary Sward does not bear any resemblance with the word “genzyme”, which has no particular meaning and is therefore highly distinctive. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known trademarks and domain names of the Complainants. The Complainants have never licensed or otherwise authorized the Respondent to use their trademarks or to register any domain name including the above-mentioned trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is using it in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. Indeed, the disputed domain website simply refers to an inactive page.
- The disputed domain name was registered and is being used in bad faith. Given the famous and distinctive nature of the mark GENZYME, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainants’ mark at the time it registered the disputed domain name. The Respondent acted with opportunistic bad faith in registering the disputed domain name for the purpose of attracting Internet users by creating a likelihood of confusion – or at least an impression of association – with the GENZYME trademark. The second Complainant is the owner of the GENZYME trademark, which is worldwide well-known. Therefore, the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name since it could mislead Internet users searching for the official GENZYME websites. The international fame of a complainant’s trademark has supported findings that passive holding has characterized bad faith use of a domain name in a number of cases. The lack of use of a disputed domain name particularly similar to those used by the Complainants is also likely to cause irreparable prejudice to their general goodwill because Internet users could be led to believe that the Complainants are not on the Internet or are out of business. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Sanofi and Genzyme Corporation have common rights in the GENZYME trademark, being therefore both accepted as the consolidated Complainants in the present case.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainants shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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. A. Identical or Confusingly Similar
The Panel has no doubt that “genzyme” is a term directly connected with the Complainants’ activities in the pharmaceutical business.
Annex 8.1 to the Complaint shows a registration of the GENZYME trademark registered by the second Complainant in the US in 1994. Later, the second Complainant has also registered the same trademark in other jurisdictions such as China and the European Union (Annexes 8.2 to 8.5 to the Complaint).
The trademark GENZYME is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainants’ trademark GENZYME by the addition of the element “-nl” (common acronym for the Netherlands), as well as the gTLD “.com”.
Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive/geographical terms to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademarks, and that the Complainants have satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples, without limitation, of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; 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 at issue.
Based on the Respondent’s default and on the prima facie case made out by the Complainants, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants have not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainants have satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in August 2016) the trademark GENZYME had already been directly connected to the Complainants’ activities in the pharmaceutical business for many years.
Therefore, the Panel considers it would be highly unlikely that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainants’ trademark.
Currently, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.
In the Panel’s view, the circumstances that the Respondent is, (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing third-party trademark, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with (d) the use of a privacy service and (e) the lack of any plausible interpretation for the adoption of the term “genzyme-nl” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainants have also satisfied 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 name be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Date: November 2, 2016
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