Sanofi-aventis v. Brian Clegg

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Brian Clegg

Case No. D2007-0258

1. The Parties

The Complainant is Sanofi-aventis, Gentilly, France, represented by Selarl Marchais De Candé, France.

The Respondent is Brian Clegg, Indianapolis, Indiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sanofivaccine.com> is registered with Go Daddy

Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2007. On February 26, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name(s) at issue. On February 27, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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”), 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 March 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2007.

The Center appointed Fleur Hinton as the sole panelist

in this matter on April 13, 2007. 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 Sanofi-aventis, a substantial pharmaceutical company with an international reputation. It was formed in 2004 as the result of a merger between the French companies Aventis S. A. and Sanofi-Synthelabo. One of its divisions produces vaccine and is well-known for its work in that field. It is called ‘Sanofi Pasteur’.

The Complainant is the registered proprietor of a number of trademarks registered in various countries around the world which comprise the word SANOFI either alone or in combination with AVENTIS or a design. The Complainant is also active on the Internet and has registered a number of domain names with which to promote its activities. They include <sanofi-aventis.com>, <sanofipasteur.com>, <sanofi.org>, <sanofi.net> and <sanofi.us>.

The domain name <sanofivaccine.com> was registered

with the registrar GoDaddy.com. Inc. which showed the administrative contact

as being ‘Private, Registration sanfovivaccine.com@domainsbyproxy.com’

on February 12, 2007, when the Complainant printed an extract from the whois

database. The Center was advised subsequently that the registrant had changed

to the Respondent and the Complainant was duly informed. The Complainant lodged

an amended Complaint and the Respondent was notified of the Complaint. The Respondent

did not lodge a reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is a substantial international pharmaceutical company whose trademarks are very well-known in respect of the Complainant’s products which are all pharmaceuticals or products connected closely with pharmaceuticals. In particular, the Complainant enjoys a prominent position in the market for vaccines and is renowned for its work in developing vaccines. It makes its activities in this arena known, inter alia, on its website “www.sanofipasteur.com”.

The Complainant contends that members of the public are likely to assume that the domain name <sanofivaccines.com>, and therefore the website to which it leads, is owned by the Complainant and will visit it for that reason. The Complainant further contends that the Respondent has no rights or legitimate right to the domain name <sanofivaccine.com> and that the Respondent registered it and uses it in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

The Panel makes the findings set out under the appropriate headings below.

A. Identical or Confusingly Similar

The Panel finds that the most memorable and distinctive part of the Respondent’s

domain name is ‘sanofi’. The other part of the domain name is ‘vaccine’,

an element which is generic. The Panel notes the decision of the Panel in Oki

Data Americas Inc v. ASD Inc, WIPO Case

No. D2001-0903, in which the Panel decided that “the

fact that a domain name wholly incorporates a complainant’s registered

mark is sufficient to establish identity or confusing similarity for the purpose

of the, despite the addition of other words to such marks”.

The Panel relies on that finding for the present case and notes that the principle there expressed is also a well-known precept of trademark law. The Panel also notes that the addition of a generic term to a trademark element does not suffice to distinguish the Respondent’s domain name from those of the Complainant which incorporate SANOFI. Indeed, it is the opinion of the Panel that the combining of a generic name with trademark material, particularly when the trademark is a well-known one, contributes to the impression that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Panel finds that the Respondent’s domain name is identical or confusingly similar to that of the Complainant.

B. Rights or Legitimate Interests

The Complainant’s trademark SANOFI is a famous one with no apparent meaning other than as the Complainant’s trademark. The Complainant has stated that it has not licensed the Respondent to use its trademark and the Respondent has not offered any evidence to contradict that.

Further, the Respondent is not using the website at the domain name to offer legitimate services under the name SANOFI. The website at the <sanofivaccine.com> domain name is one simply offering to take the user to a range of other websites under a variety of descriptions. One of the headings under which websites fall is “Health Products”. None of the websites or products referred to is owned by the Complainant.

Therefore, in the absence of a legitimate offering of services by the Respondent, or evidence that the Respondent is authorized to use the domain name by someone able to grant that authority, the Panel finds that the Respondent has no rights or legitimate interest in the domain name <sanofivaccine.com>.

C. Registered and Used in Bad Faith

The Respondent has chosen to register a domain name which comprises elements in respect of which the Complainant has a very substantial world wide reputation. The first of the elements, SANOFI is a trademark associated entirely with the Complainant. The second element, “vaccine” is not a word in respect of which the Complainant can, or indeed does, claim a monopoly. Nevertheless, it is a generic term which relates to a specialized aspect of the Complainant’s business. The Respondent does not seem to have involvement in this type of business.

The Respondent’s domain name invites members

of the public to his website by trading on the good name of the Complainant.

Once there, none of the Complainants products is offered for sale and it appears

that the visitor is lured to a portal for the purpose of being shown or taken

to advertisements placed by others, but not by the Complainant. It seems likely

that the Respondent is remunerated on a per click basis for this service which

relies substantially on attracting visitors to the website by using the Complainant’s

trademark. Clearly, therefore, the domain name <sanofivaccine.com> was

registered, and is being used, in bad faith.

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 <sanofivaccine.com> be transferred to the Complainant.

Fleur Hinton

Sole Panelist

Dated: April 28, 2007

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