WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi and Genzyme Corporation v. Super Privacy Service LTD c/o Dynadot / Yali Friedman

Case No. D2020-2962

1. The Parties

The Complainant is Sanofi, France, and Genzyme Corporation, United States of America (“United States”), represented by Selarl Marchais & Associés, France.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Yali Friedman, United States.

2. The Domain Name and Registrar

The disputed domain name <genzymepharmaceuticals.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2020, 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 November 23, 2020 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 November 23, 2020.

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 November 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2020. On November 29, 2020, the Respondent sent an email communication to the Center offering settlement to the Complainant. The proceedings were suspended on December 1, 2020 and reinstituted on January 2, 2021. After reinstitution, the due date for Response was set to February 3, 2021. The Respondent did not submit any response. Accordingly, on February 18, 2021 the Center informed the Parties that it would proceed to appoint a panel.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 24, 2021. 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 French-based pharmaceutical holding company and one of its American subsidiaries, which develops and manufactures a wide variety of drugs.

The Complainant owns the following trademark registrations, among others:

The Complainant owns the following domain names:

<genzyme.fr> registered on March 19, 2003
<genzyme.cn> registered on June 11, 2004
<genzyme.com> registered on August 14, 1996
<genzyme.net> registered on August 5, 2000
<genzyme.org> registered on August 5, 2000
<genzyme.us> registered on August 21, 2008

The disputed domain was registered on October 6, 2020 and currently redirects to a website, which offers biopharma patent information services.

5. Parties’ Contentions

A. Complainant

The Complainant asserted the following:

That the formal owner of the GENZYME trademark is the Complainant Genzyme Corporation, an American-based pharmaceutical company which is a subsidiary of the Complainant Sanofi, a French-based pharmaceutical company.

That the Complainant Sanofi is the world’s 4th largest pharmaceutical company.

That the Complainant Sanofi has consolidated worldwide recognition through research and development investment and its leading position on patent drugs that treat multiple diseases.

That the Complainant Genzyme Corporation was founded in 1981 and that in 2010 it was the world’s 3rd largest biotechnology company with more than 11,000 employees and with presence in more that 65 countries around the world.

That owns the GENZYME brand.

That the Complainant Genzyme Corporation owns multiple domain names that incorporate the GENZYME brand since 1996.

That the disputed domain name is confusingly similar to the GENZYME brand because it reproduces it in its entirety.

That the GENZYME trademark has no particular meaning and is therefore highly distinctive.

That the descriptive term “pharmaceuticals” does not grant any distinctiveness to the disputed domain name, since the dominant part thereof is GENZYME.

That the use of the generic Top-Level Domain (“gTLD”) “.com” does not serve to distinguish the disputed domain name.

That GENZYME is a well-known trademark in various jurisdictions.

That the Respondent’s name bears no resemblance with the GENZYME trademark because said brand is highly distinctive.

That the Respondent hid its real identity from the WhoIs database through the privacy and proxy services provided by Super Privacy Services LTD.

That the Complainant has no relationship and has never licensed or otherwise authorized the Respondent to use the GENZYME trademark or to register any domain name including said mark.

That the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that it is being used as a “bait and switch” domain name, which misleads Internet users into thinking that the Respondent is connected to, sponsored by, or affiliated with the Complainant.

That the disputed domain name was registered and is being used in bad faith because the Respondent has no prior or current rights or legitimate interests to justify the registration or use of the well-known GENZYME brand.

That the Respondent acted with opportunistic bad faith because it is very likely that it had constructive or actual notice of the existence of the Complainant’s trademark at the time when the disputed domain name was registered.

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 and/or an impression of association.

That the Complainant’s trademarks are some of the most cybersquatted, according to the article entitled “WIPO prepares for Launch of the New gTLDs while Cybersquatting Cases Continue to Rise”.

That the disputed domain name is used under a “bait and switch” model with the sole purpose to mislead and divert consumers into thinking that the Respondent is, in some way, affiliated to or endorsed by the Complainant or its business, thus suggesting an effort to create a likelihood of confusion with the Complainant’s trademarks and domain names as to the source of the services advertised in the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(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 with respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a formal Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a), and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V., WIPO Case No. DMX2012-0013; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; and International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant has filed evidence showing that it owns registrations for the trademark GENZYME in multiple classes, which cover pharmaceutical products and services.

The record shows that the Complainant’s GENZYME trademark is entirely incorporated in the disputed domain name. The only difference between the Complainant’s GENZYME trademark and the disputed domain name is the word “pharmaceuticals”, which adds no distinctiveness to the disputed domain name. Therefore, the disputed domain name is considered confusingly similar to the Complainant’s trademark (see sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), see also Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110).

The addition of the gTLD “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO, WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

In light of the above, the Panel finds that the first element of the Policy has been met.

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 the disputed domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if it did no acquire 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 Complainant has asserted that it has no relationship or affiliation with the Respondent and that it has not granted any license, permission, or authorization to the Respondent to use the trademark GENZYME (see section 1.4 of the WIPO Overview 3.0, see also Taylor Wimpey Holdings Limited and Taylor Wimpey PLC v. Annette Johnson, Tangerineuk, WIPO Case No. D2016-2116; and Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley, WIPO Case No. D2016-1692).

The Respondent’s name bears no resemblance to the disputed domain name. The word “genzyme” has been coined by the Complainant, and it does not correspond to a dictionary term. Therefore, it is considered highly distinctive, which makes it unlikely that the Respondent has had any rights or legitimate interests in the disputed domain name (see Regeneron Pharmaceuticals, Inc. v. Whois Privacy Protection Service, Inc. / Name Redacted, WIPO Case No. D2015-0727; and Accenture Global Services Limited v. Perfect Privacy, LLC / Juan Casas, WIPO Case No. D2020-0830).

The Complainant has proven that the Respondent is using the disputed domain name under a “bait and switch” model. This cannot be deemed to be a bona fide offering of services, since it lures Internet users into the Respondent’s website at “www.drugpatentwatch.com” to which the disputed domain name redirects, taking advantage of the Complainant’s well-known trademark and reputation, to offer services of information and intelligence regarding biopharmaceutical patents, for profit. This conduct cannot be deemed to be a legitimate noncommercial or fair use of the disputed domain name (see Stora Enso Oyj v. Shenzhen ShenghongxinrongTrade Ltd, WIPO Case No. D2017-1324).

The principles laid out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) do not apply to this case, since the Respondent is not offering the products made by the Complainant and distinguished by its trademark GENZYME, but instead offers patent information services related to the biotech industry, in which the Complainant and its competitors operate (see section 2.4 and 2.8 of the WIPO Overview 3.0; see also Intex Recreation Corp. v. RBT, Inc., Ira Weinstein,WIPO Case No. D2010-0119; Adam Anschel v. Domains By Proxy, LLC / Tzvi Milshtein, WIPO Case No. D2015-1570; and BSH Home Appliances Corporation v. Michael Stanley / Michael Sipo, WIPO Case No. D2014-1433).

Considering the assertions and evidence produced by the Complainant, and absent any evidence filed by the Respondent, the Panel finds that the Respondent lacks rights to or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. 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 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 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 its website or location.

The Complainant has ascertained its rights over the GENZYME trademark in the United States, where the Respondent has declared to have its domicile, and in several jurisdictions. The dates of registration of the Complainant’s trademarks significantly precede the date of registration of the disputed domain name.

According to the evidence comprised in the case file, GENZYME is a well-known trademark.

Taking the above into account, as well as the fact that the Respondent has targeted the Complainant, its services, and its potential clients, it follows that the Respondent knew about the Complainant and its trademark when the disputed domain name was registered. This conduct constitutes opportunistic bad faith registration under the Policy (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur, WIPO Case No. D2019-0208).

The Complainant submitted evidence showing that the disputed domain name has been used under a “bait and switch” model, and that this is a case of initial interest confusion. Internet users looking for GENZYME goods that come across the disputed domain name are redirected to a website linked to the domain name <drugpatentwatch.com>. Said website contains offers of services of biotech pharma information. This conduct translates into bad faith use of the disputed domain name (see Justice for Children v. R. neetso / Robert W. O’Steen, WIPO Case No. D2004-0175; Joseph Dello Russo, M.D. v. Michelle Guillaumi, WIPO Case No. D2006-1627).

In light of the above, it can be deducted that the Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the biopharma patent information services offered by the Respondent, which constitutes bad faith use under paragraph 4(b)(iv) of the Policy (see Stora Enso Oyj v. Shenzhen ShenghongxinrongTrade Ltd, WIPO Case No. D2017-1324).

Therefore, the Panel finds that 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 <genzymepharmaceuticals.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: March 11, 2021