Sanofi-aventis v. Pluto Domain Services Private Limited.
Case No. D2009-0078
1. The Parties
The Complainant is Sanofi-aventis of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.
The Respondent is Pluto Domain Services Private Limited. of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <sanofi-aventisindia.com> is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2009. On January 21, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On January 28, 2009, Lead Networks Domains Pvt. Ltd. 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 January 30, 2009 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 February 2, 2009. 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 February 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 26, 2009.
The Center appointed Linda Chang as the sole panelist in this matter on March 5, 2009. 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 leading pharmaceutical company in the world and is the registered owner of the trademark SANOFI-AVENTIS in numerous jurisdictions covering France, Canada, United States of America, Switzerland, China, Cuba, Algeria, Australia, Japan, Norway, Turkey, Singapore and others. It is also the owner of several domain names such as <sanofi-aventis.com>, <sanofi-aventis.ca> <sanofi-aventis.us> and others. The Respondent is an Indian company that registered the domain name in dispute in April 2008.
5. Parties' Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant contends that it owns trademark rights to the name SANOFI-AVENTIS in many countries, details of which are listed as follows:
Community trademark SANOFI-AVENTIS No. 004025318 registered on November 3, 2005, for, among others, class 5, “pharmaceutical products”;
International trademark SANOFI-AVENTIS No. 839 358 registered on October 1, 2004 in classes 1, 3, 5, 9, 10, 16, 38, 41, 42 and 44, notably for the goods “pharmaceutical products” and designating inter alia the following countries: United States of America, Switzerland, China, Cuba, Algeria, Australia, Japan, Norway, Turkey and Singapore;
Canadian trademark SANOFI-AVENTIS No. TMA668,558 registered on July 24, 2006 notably in class 5;
French trademark SANOFI-AVENTIS No. 04 3 288 019 registered on April 26, 2004 notably for “pharmaceutical products”;
Ecuadorian trademark SANOFI-AVENTIS No. 1099-05, filed on September 30, 2004, and registered on March 7, 2005, in class 5;
United Arab Emirates trademark SANOFI-AVENTIS No. 53417, registered on May 29, 2005, with a priority filing date on April 26, 2004, in class 5;
Hong-Kong trademark SANOFI-AVENTIS No. 300295128, registered on October 4, 2004, with a priority filing date on April 26, 2004, in classes 1, 3, 5, 10, 38 and 42;
The Complainant states it is also the owner of the following domain names:
<sanofi-aventis.com> registered on March 14, 2004;
<sanofi-aventis.ca> registered on April 27, 2004;
<sanofi-aventis.us> registered on April 26, 2004;
<sanofi-aventis.biz> registered on April 26, 2004;
<sanofi-aventis.info> registered on April 26, 2004;
<sanofi-aventis.org> registered on April 26, 2004;
<sanofi-aventis.it> registered on April 28, 2004;
<sanofi-aventis.in> registered on October 17, 2005;
<sanofi-aventis.mobi> registered on June 20, 2006;
<sanofi-aventis.fr> registered on December 18, 2006.
The Complainant contends that the domain name <sanofi-aventisindia.com> identically reproduces its trademark SANOFI-AVENTIS, a discretionary word which has no particular meaning. The mere difference between the disputed domain name and the Complainant's trademarks is the adjunction of the term “India” placed at the end of the domain name. The Complainant further contends that this adjunction does not distinguish the Respondent's domain name from its trademark since this word is completely descriptive, as a geographical location.
The Complainant quotes Sanofi-Aventis and Aventis Inc. v. Web Advertising Corp. and Keyword Marketing Inc., WIPO Case No. D2007-0678, where the Panel decided with regards to the domain name <aventistoronto.com> that:
“Toronto is a Canadian city and thus is not apt to influence significantly the overall impression.”
The Complainant also quotes Sanofi-Aventis, Aventis Pharmaceuticals, Inc. v. Doc Noss, WIPO Case No. D2008-1058, that:
“Disregarding the domain suffix “.com”, the disputed domain name wholly incorporates the distinctive SCULPTRA trademark and differs only by the addition of the term “newport beach”. This descriptive geographical term is insufficient to distinguish the domain name and trademark.”
The Complainant believes that by virtue of these decisions, the adjunction of the term “India” or the generic top level domain “.com” to the Complainant's trademark is not sufficient to eliminate the likelihood of confusion between the Respondent's domain name and the aforementioned trademark SANOFI-AVENTIS, and for the reasons as above explained, the domain name <sanofi-aventisindia.com> is confusingly similar to the trademarks and domain names in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks SANOFI-AVENTIS to apply for domain names incorporating these terms. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.
The Complainant contends that the absence of any permission by the Complainant to use its trademarks proves that the Respondent has no rights or legitimate interests in respect of the domain name <sanofi-aventisindia.com>.
Registered in Bad Faith
Complainant contends that the disputed domain name was registered in bad faith.
The Complainant contends that the domain name has been registered for the purpose of attracting Internet users to the Respondent's website, by reproducing the distinctive name “Sanofi-aventis” and creating a likelihood of confusion between SANOFI-AVENTIS trademarks and the domain name.
The Complainant states that Sanofi-aventis is nowadays one of the leaders among pharmaceutical companies, and is ranked number one in Europe and number four in the world in the pharmaceutical industry. The Complainant therefore deduces that the Respondent must have knowledge about its trademark and is able to foresee the advantage of attracting Internet users to the Respondent's intended website by using the domain name and creating the impression that Respondent's website were somehow endorsed by the Complainant where in fact they are not. The Complainant therefore concludes that it is inconceivable that the Respondent registered the domain name without being aware of the Complainant's rights.
The Domain Name Is Being Used in Bad Faith
The Complainant states that the Respondent is trying to gain unfair benefit by making use of the reputation of SANOFI-AVENTIS to divert Internet users to aparking website with sponsored links to commercial websites devoted to vaccines and medicines. The Complainant further states that when one types the address “www.sanofi-aventisindia.com”, he/she will be automatically directed to a webpage with listings of links to other sites related to vaccines and other pharmaceutical products information. The Complainant therefore deduces that the Respondent obviously gains unfair benefit from the reputation of SANOFI-AVENTIS trademarks via the pay-by-click set-ups.
The Complainant quotes F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, that “The use of the domain name as a parking site is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy” and, Parrot S.A. v. Whois Service, Belize Domain WHOIS Service,WIPO Case No. D2007-0779, that “Such parking website typically offers domain name holders to earn click through fees for redirecting Internet users to competing websites and thus capitalizing on the goodwill of the third party's trademark”.
The Complainant contends that there is no doubt that by linking the domain name to a parking website, the Respondent is intentionally attracting Internet users, for financial gains, to its intended website or other on line locations by creating a likelihood of confusion with the Complainant's trademarks and domain names as to the source, sponsorship, affiliation or endorsement of the registrant's web site or location or of a product or service on the Respondent's web site or location.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademark SANOFI-AVENTIS in numerous jurisdictions. Compared to the trademark name, the domain name <sanofi-aventisindia.com> completely reproduces the former with the only difference being the mere addition of the name of a country ‘India' and the generic term of the GTLD “.com”. However, neither of these two terms is sufficient to differentiate the domain name from the trademark name. Instead, the addition of the name ‘India' could only be more misleading in that Internet users are more likely to believe the sites linked with the domain name are the official sites of the Complainant's in India, where in fact they are not.
The domain name is therefore confusingly similar to the Complainant's trademark.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests. The Respondent appears not to be known by the disputed domain name nor is authorized to use the trademark in any manner. The burden shifts to the Respondent to prove otherwise. However the Respondent has not responded to the Complainant's claims. The Panel therefore can only make its decision based on the information brought to the record and given the circumstances (see also below the Panel's findings) believes the Respondent does not have rights or legitimate interests in the domain name.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The files on record have shown the following:
- The Complainant is a leading player in the pharmaceutical industry and is operating worldwide, with consolidated net sales of €28 billion in 2007 and a total of 100,000 employees around the globe;
- The Complainant's trade mark SANOFI-AVENTIS is not an existing word, but it is a distinctive trademark;
- The Complainant's trademark SANOFI-AVENTIS is extensively registered and used around the world and has therefore obtained quite a reputation in the pharmaceutical industry;
- The Respondent is not affiliated to the Complainant in any way and does not have a right or legitimate interests in the domain name;
- The Respondent did not respond to the Complainant's contentions; and
- The domain name is linked to a website with listings of sponsored links and most of the links direct web visitors to websites that provide vaccines and other pharmaceutical related products or services, an industry that the Complainant has been engaged in.
These circumstances lead the Panel to conclude that the Respondent's use and registration of the domain name fall within the circumstances of bad faith registration and use of domain names, as provided in paragraph 4(b)(iv), namely:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
Given the reputation of the trademark SANOFI-AVENTIS, the act of directing the domain name to a website providing sponsored links, likely generating revenue to the Respondent, is an attempt to take unfair advantage of the reputation of the trademark for potential commercial gains by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location. Such use is explicitly provided to be bad faith evidence for use and registration of a domain name as provided under 4(b)(iv).
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sanofi-aventisindia.com> be cancelled.
Linda Chang Sole Panelist
Dated: March 20, 2009
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