Sanofi-Synthelabo v. Nicki On

Case No. D2003-0871

Aventis SA , Aventis Pharma SA. v. Nicki On

Case No. D2003-0899

Within a few days of each other, two complaints were filed with WIPO by Sanofi-Synthelabo on the one hand and by Aventis SA and Aventis Pharma SAon the other hand, against the same Respondent, Nicki On. As the two cases pertain to the same domain names, coherence and expedition of proceedings require that both be resolved through one single decision.

Sanofi-Synthelabo, Paris, France, of France, represented by Cabinet Bird & Bird, France (herafter "Sanofi" or "Complainant No. 1").

Aventis SA. located at Schiltigheim, France, and Aventis Pharma SA. located at Antony, France, both represented by Selarl Marchais De Candé, France (hereafter "Aventis" or "Complainant No. 2").

Nicki On, located at Woolwich, London and Belvedere, Kent, United Kingdom of Great Britain and Northern Ireland.

The disputed domain names are <aventis-sanofi.com>, <sanofi-aventis.com>, <sanofiaventis.com> (hereafter "the disputed domain names").

All are registered with Go Daddy Software.

Sanofi’s Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2003. On November 4, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On November 6, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all disputed domain names and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 November 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response initially set forth was November 30, 2003. On December 1, 2003, the Respondent however asked a six-day extension of the time to respond. On the same day, the Respondent sought to amend its request for time extension, asking for a sixty-day extension. The Center transmitted both requests the same day to the attorney for Complainant No. 1, asking for a reply by December 3, 2003. In the absence of reply by the attorney for Complainant No. 1, the Center extended the time for the production of a Response until January 4, 2004. On December 4, 2003, Complainant No. 1 protested vehemently against such time extension asking for a reconsideration of the decision made by the Center. On December 9, 2003, Complainant No. 1 communicated to the Center its willingness to accept an extension of up to fifteen days as from December 1, 2003. On the same day, the Center replied that a decision had already been made on December 4, 2003, and that the deadline set for January 4, 2004, would remain unchanged. The Response was filed with the Center on January 3, 2004.

The Complaint was filed with the Center on November 10, 2003. On November 13, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On November 13, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all disputed domain names and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and 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 November 14, 2003. In accordance with the Rules, paragraph 5(a), the due date initially set forth for Response was December 4, 2003. On December 1, 2003, the Respondent however asked a six-day extension of the time to respond. On the same day, the Respondent sought to amend its request for time extension, asking for a sixty-day extension. The Center transmitted both requests the same day to the attorney for Complainant No. 1, asking for a reply by December 3, 2003. On December 1, 2003, the attorney for Complainant No. 2 agreed to a one month extension. As a result, the time for filing a Response was extended up to January 4, 2004. The Response was filed with the Center on January 3, 2004.

In both cases, the Center appointed Pierre Olivier Kobel as the sole panelist on January 9, 2004. The Panel finds that it was properly constituted. The Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence for both cases, as required by the Center to ensure compliance with the Rules, paragraph 7.

Both Complainants are well-known multinational pharmaceutical companies.

Complainant No. 1 holds the following trademarks:

- The French trademark SANOFI, filed on September 12, 1978, and registered under n° 1 066 861 and duly renewed on August 11, 1988, under the n° 1 482 708 and on July 20, 1998, for goods and services belonging to classes 1, 3, 5, 10, 16, 25, 28 and 31.

- The French trademark SANOFI, filed on December 11, 1996, registered under n° 96 655 339, for goods and services belonging to classes 1, 3, 5, 9, 10, 35, 40 and 42.

- The Community trademark SANOFI, filed on July 15, 1997, registered on February 1, 1999, under n° 596023, for goods and services belonging to classes 3 and 5.

- The International trademark SANOFI, filed on June 11, 1997, registered under n° 674 936, for goods and services belonging to classes 3 and 5 in the following countries: Albania, Algeria, Armenia, Azerbaijan, Belarus, Bosnia-Herzegovina, Bulgaria, Croatia, Egypt, Ex Macedonia Republic, Russia, Hungaria, Kazakhstan, Kirghizistan, Leetonia, Liechtenstein, Morocco, Monaco, Uzbekistan, Poland, Republic of Moldova, Tchequie, Rumania, Saint-Marin, Slovaquia, Slovenia, Switzerland, Tajikistan, Ukraine, Viet Nam, Yugoslavia.

- The UK trademark SANOFI registered on November 21, 1991, under n° 1 483 425 and duly renewed on November 21, 1998, for goods and services belonging to class 5.

- The US trademark SANOFI, filed on March 19, 1996, registered under n° 2 129 809, for goods and services belonging to classes 1, 3, 5 and 10.

Complainant No. 2 holds the following trademarks:

- The French trademark AVENTIS n° 98 760 585, registered on November 23, 1998, in classes 1, 5, 10 and 31.

- The international trademark AVENTIS n° 708 890, registered on February 2, 1999, in classes 1, 5, 10 and 31 and designating among others under the Paris Convention and the Madrid Agreement the following countries: Germany, Benelux, France, Italy, Spain, United Kingdom.

- The Community Trademark AVENTIS filed on November 18, 1998, for the same goods and services.

- The British Trademark AVENTIS n° 2182304 filed on November 17, 1998, in classes 1, 5, 10 et 31.

Both Complainants also hold several domain names reproducing their main trademark.

The disputed domain names were registered by Respondent on January 20, 2003.

Sanofi alleges that the disputed domain names were registered shortly after rumors of a possible merger between the two complainants were spread by the media at the end of year 2002, and beginning of 2003.

Sanofi believes that the disputed domain names are confusingly similar with the "SANOFI" trademark it registered in various countries. Referring to prior cases (see Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142; Pfizer, Inc v. Martin Marketing,WIPO Case No. D2002-0793), Sanofi claims that the addition of a third party trademark does not eliminate the visual impression that the disputed domain names are associated with its own trademark.

Sanofi denies relationship of any kind with the Respondent, such as a licensing agreement, that would authorize the Respondent to use Sanofi’s trademark. Sanofi is a well known company present in over 100 countries including Great Britain. According to Sanofi, the Respondent has not made any bona fide use of the disputed domain names, as they only refer to the Registrar’s web site with a notice, "coming soon!". The Respondent is not commonly known by the domain names and has no right of itself over the disputed domain names. The Respondent has no legitimate right of any kind to use the disputed domain names.

According to Sanofi, the disputed domain names were registered and used in bad faith. Sanofi believes that this is an example of opportunistic registration immediately following rumors about a possible merger between the two Complainants. Quoting Pharmacia & Upjohn AB v. Monsantopharmacia.com.Inc, WIPO Case No. D2000-0446, Sanofi argues that the registration of composite domain names corresponding to famous trademarks and companies such as those of the Complainants is of itself evidence of bad faith. Relying on the fame of its trademark, Complainant No. 1 quotes a number of WIPO panel decisions finding against the Respondent in case of registration immediately following the announcement of a merger (SMS Demag AG v. Seung Gon, Kim,WIPO Case No. D2000-1434; The London Metal Exchange Limited v. Syed Hussain,WIPO Case No. D2000-1388; A.P.Moller v. Web Society,WIPO Case No. D2000-0135; Repsol YFP SA v. COMn.com,WIPO Case No. D2001-0741; Chevron Corporation v. Young Wook Kim,WIPO Case No D2001-1142: L’Air Liquide v. Mic,WIPO Case No. D2001-1246; Société des Produits Nestlé v. Stuart Cook,WIPO Case No. D2002-0118; Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co. Ltd v. IC,WIPO Case No. D2003-0112). The registration of the disputed domain names by the Respondent is disrupting Sanofi’s business and was made for illegitimate commercial purposes only.

In conclusion, Sanofi seeks the cancellation of the disputed domain names.

Aventis believes that the disputed domain names are confusingly similar with its Aventis trademark. According to Aventis, the addition of a term such as "SANOFI" is not sufficient to eliminate the likelihood of confusion between its trademark and the disputed domain names. The confusion is increased by the fact that Aventis and Sanofi are competitors in the pharmaceutical industry. Consumers would be led to believe that the two companies are somehow associated, which is incorrect.

Aventis notes that the name of the Respondent (Nicki On) has no connection of any kind with the disputed domain names. Furthermore, the domain names

<aventis-sanofi.com> and <sanofiaventis.com> lead to the Registrar’s web page where a banner repeats the typed domain name followed by "coming soon!". The domain name <sanofi-aventis.com> does not seem to be in use. According to Complainant No. 2, this is an indication that the Respondent has no interest of its own in the Aventis trademark. As there is no relationship of any kind between Aventis and the Respondent, such as a license agreement, the Respondent has no legitimate right to use the disputed domain names.

Aventis believes that, at the time of registration, the Respondent was undoubtedly aware of its trademark. Aventis argues that the Respondent intentionally added the trademark SANOFI, a world-famous trademark of a competitor, to Aventis’ trademark. Furthermore, the disputed domain names are not used for any specific activity. Relying on Telstra Corp. Ltd v. Nuclear Marschmallows, WIPO Case No. D2000-0003, Aventis believes that such type of inactivity amounts to the disputed domain names being used in bad faith.

Avensis is seeking the cancellation of the disputed domain names.

The Respondent’s first argument to both complaints is that none of the Complainants has right over the two components of the disputed domain names. No company being registered as Sanofi-Aventis or Aventis-Sanofi, etc., the disputed domain names do not identify any source and the Complainants thus cannot claim exclusive rights over such domain names. According to the Respondent, web users would not be confused or misled to believe that the disputed domain names related either to Sanofi or to Aventis because the disputed domain names differ from the trademarks of these companies. According to the Respondent, the existence of the domain name <avensissa.com> "is a living proof that consumer confusion is an overstatement".

Since Respondent has not used the disputed domain names, web users accessing the sites known as <aventis-sanofi.com>, <sanofi-aventis.com>, and <sanofiaventis.com> cannot be confused into believing that the web sites are linked to Sanofi or Aventis.

Quoting Pfizer Inc. v. Martin Marketing,WIPO Case No. D2002-0793 and Chevron Corportaion v. Young Wook Kim,WIPO Case No. D2001-1142, the Respondent then alleges that since it did not use the disputed domain names to sell drugs or for any other commercial purpose, the Complainants cannot claim that the disputed domain names were used to divert consumers to commercially benefit the Respondent.

To justify registration and use of the disputed domain names, the Respondent alleges that the Complainants’ trademarks were not accompanied with the symbol ®™ or any other warning informing the Respondent about the Complainants’ trademarks. It further denies to have registered the disputed domain names in reaction to rumors about a possible merger between the two Complainants. Respondent finally alleges a legitimate interest in the following terms:

" Firstly, she is an enthusiast whose hobby is to promote free information about medicines to the lay public. It would be a public disservice to hinder this act of public devotion and goodwill. She operates an Internet website www.drugsontrial.com (…) to disseminate free clinical trial information to the public in a holistic partnership with the industry to bring new therapies to the market faster and cheaper. The site is free for users including pharmaceutical companies such as Complainant. The directory of pharmaceutical companies in DrugsOnTrial.com contains the Complainant information including its website address. The Panel may consider activity of Respondent active website in some ways already reflects a legitimate interest in the disputed domain names.

Secondly, Respondent intents to use the site for distributing publicly available information about pharmaceutical products offered by the Complainant. Respondent is neither in the business of developing pharmaceutical medicines nor in the business of selling them.

Respondent contemplated a portfolio-marketing concept as a means of streamlining the costs of pharmaceutical research and development. Joint marketing has been applied in a fragmented manner to a few products. For examples, Lilly markets Cialis (an ICOS product), Zoton (a Takeda product) is marketed by Wyeth, and Spiriva (a Boehringer product) is marketed by Pfizer. There has not been a case that the entire product portfolio of two or more firms is jointly marketed. In order to put into practice such concept and provide a working platform, an appropriate Internet domain name is called for. The main criteria for the name include the strategic fit of the product portfolio and regional location of the firms.

The disputed domain names were taken out simply as a test-bed in the earliest stage of conceptual thinking and they could have been any other names (GSK-AZ, etc.).

In any case, if this concept of portfolio marketing is not taken up, a website providing independent information about products marketed by both Aventis and Sanofi does no harm. As far as Respondent is concerned, the bottom line is as long as the disputed domain names are not being used abusively or disruptively, either Aventis or Sanofi should have no concerns. There is absolutely no evidence of abusive or disruptive use of the domain names. In addition, Respondent has never endeavoured to disrupt Complainant’s business. Indeed, it would be virtually impossible for he to do so. Aventis is a large corporation whereas Respondent is not its competitor but an individual who has no such power.

Respondent requests the Panel to accept a passive nominative fair use defence because of the Respondent’s awareness of what an appropriate fair use might require and this might later be adversely rebutted by the Respondent’s conduct."

Relying on Helen Fielding v. Anthony Corbett,WIPO Case No. D2000-1000, the Respondent argues that the "the express requirement of making does not foreclose the establishment of a fair use defense in circumstances in which the disputed domain name has not been actively used".

Respondent then repeats the same arguments in different ways to contest the conclusion that it registered and used the disputed domain names in bad faith.

According to paragraph 4(a) of the Policy, a complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.

The present case is one of a hypothetical merger between two companies. As the transaction did not occur, the two companies maintained their original names and related trademarks. In the meantime, the Respondent had registered the disputed domain names which are made up of the two Complainants’ names and main trademarks, Sanofi on the one hand and Aventis on the other hand.

There is little doubt that the conjunction of the two famous trademarks of competing pharmaceutical companies is confusing in the eyes of the public. Visually as well as phonetically, the evocation of each trademark creates instantaneously an association with one source. As the sources are different, the disputed domain names can only confuse the public. In other words, the conjunction of two well-known and unrelated trademarks in one domain name, as such, is inherently confusing.

Contrary to the Respondent’s belief, the fact that the two Complainants did not merge and therefore did not create one single source named Sanofi-Aventis or Aventis-Sanofi, precisely creates confusion. Confusing similarity does not equate to identity.

Also incorrect is the view of Respondent that confusion would disappear when accessing the web sites corresponding to the disputed domain names. What matters is not the content of the web site but the impression left by the disputed domain name in the eye of the public.

A number of other panelists have come to a similar conclusion in cases of hypothetical or not completed merger between two companies (See Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. CPIC NET, WIPO Case No. D2000-0685; AT&T Corp v. Beomjoon Park,WIPO Case No. D2001-0133; Viacom International Inc. vBeomjoon Park,WIPO Case No. D2001-0220; L'Air Liquide v. MIC,WIPO Case No. D2001-1246), as well as in cases of actual merger or restructuring (Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc.,WIPO Case No. D2000-0446; Repsol YPF, SA v. COMn.com,WIPO Case No. D2001-0741; Chevron Corporation v. YoungWook Kim,WIPO Case No. D2001-1142; Société des Produits Nestlé SA v. StuartCook,WIPO Case No. D2002-0118; Konica Corporation, Minolta Kabushiki Kaishaaka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112).

The panel thus concludes that the disputed domain names are confusingly similar to the trademarks of the Complainants, in the meaning of paragraph 4 a (i) of the Policy.

None of the Complainants ever licensed any right to the Respondent in relation to their main respective trademarks. The Respondent is not known as Sanofi, Aventis or a combination of the two, but as "Nicki On". As a result, the Complainants have prima facie shown that the Respondent does not have any legitimate interest in the disputed domain names.

The Respondent alleges two hypothetical or potential interests. One is the diffusion of public information about pharmaceutical products offered by the Complainants.. The other is some sort of test bed for a portfolio-marketing concept in relation to joint marketing activities by pharmaceutical companies. The two purposes do not seem compatible. If proven, the first could perhaps be qualified as fair use whilst the second would seem rather commercial.

This aside, the panel does not find that the Respondent has demonstrated any preparations or measures to use the disputed domain names for any of the above purposes. The fact that the Respondent holds and maintains a "DrugsOnTrial.com" web site which aims at reducing the patient recruitment phase in relation to new drugs and therapies, is evidence of her interest in the subject matter of the said site only. It is not evidence of preparations of a web site with information on the pharmaceutical products of the Complainants or aiming at providing services related to joint marketing activities. The disputed domain names were registered on January 20, 2003, that is approximately one year ago. Within such time frame, the only action taken by the Respondent is a link to the Registrar’s web site where a banner shows two of the disputed domain names with a notice "coming soon!". Such use cannot be equated to preparation in the meaning of paragraph 4(c) of the Policy.

Anyhow, should any interest be proven, such interest could never justify usage of a trademark in a way that directly interferes with the rights of the trademark holders to regularly use their trademark. Usage of a trademark in relation to a fair use or bona fide offering of services must not directly interfere with the rights of the trademark holder. As stated by the panel, since the domain names are made of the names of two competing large pharmaceutical manufacturers and only of those names, the registration and usage of the disputed domain names definitely interfere with the rights of the trademark holders as they are inherently confusing.

Last but not least, the Policy does not formally recognize any "passive nominative fair use defense" as termed by the Respondent. As a result, the panel finds that the Respondent does not have any legitimate interest in the disputed domain names, in the meaning of paragraph 4(a)(ii) of the Policy.

The Respondent alleges that she never endeavored to disrupt the Complainants’ business. To support her argument, she mentions the fact that it would be virtually impossible for her to disrupt the business of the Complainants.

The panel first notes that cybersquatting does not surmise actual or proven ability to disrupt the overall business of trademark holders. The Policy pertains to the protection of trademark owners in relation to bad faith registration and use of domain names, not to the protection of the business of large corporations as a whole. Contrary to the Respondent’s belief, the registration and use of the disputed domain names is disruptive of the Complainants’ business activities because they mislead the public to believe that the two companies are related.

The argument presented by the Respondent that the trademarks of the Complainants were not displayed with the symbols ®™ has no relevance. In most jurisdictions in the world, the validity and enforceability of trademarks do not depend on the use of such symbols in trade. Furthermore, the disputed domain names consist of the main names of the Complainants, not of very specific and technical pharmaceutical trademarks. In other words, the Respondent could not ignore that it was using names over which the Complainants were likely to have legitimate exclusive rights.

Nevertheless, the Respondent registered the disputed domain names shortly following rumors of a merger between the Complainants. The disputed domain names were then used through an banner posted on the web site of the Registrar, as if it were an advertisement for the new firm coming out of the merger. This in itself suggests that the Respondent did not act in good faith.

The circumstances of the case, the fact that the disputed domain names are made of the well known names of the Complainants only, the fact that the disputed domain names were registered shortly after rumors of a merger between the Complainants, the fact that use of the disputed domain names was maintained despite the non completion of the merger thereby confusingly suggesting a connection between the two Complainants, and the circumstance that the Respondent has not proven legitimate interest in the disputed domain names, convince the panel that the Respondent acted in bad faith. The panel thus concludes that the disputed domain names were registered and used in bad faith in the meaning of paragraph 4(a)(iii) of the Policy.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, and as requested by the Complainants, the Panel orders that the domain names, <aventis-sanofi.com> <sanofi-aventis.com>, <sanofiaventis.com> be cancelled.