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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Montanya ILtd.
Case No. D2006-1079
1. The Parties
The Complainant is Sanofi-aventis, of Paris, France, represented by Selarl Marchais De Candй, France.
The Respondent is Montanya Ltd., of Grand Cayman, Grand Cayman Islands, United Kingdom
of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <sanofiaventissalesjewlery.com> (hereinafter “Domain Name”)
is registered with Name.net LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2006. On August 25, 2006, the Center transmitted by email to Name.net LLC a request for registrar verification in connection with the Domain Name at issue. On August 31, 2006, Name.net LLC 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, billing, 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 September 1, 2006. On September 13, 2006, and on October 11, 2006, the Complainant requested a suspension of the proceedings for subsequent periods of thirty days. Consequently, the administrative proceeding was suspended until November 12, 2006. Upon reinstatement of the proceeding, on November 14, 2006, in accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2006.
The Center appointed Anna Carabelli as the sole panelist in this matter on November 24, 2006. 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.
The Panel independently determined and agrees with
the assessment of the Center that the Complaint complies with the requirements
of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant submitted evidence of trademark registrations and actual ownership by direct registration or transfer, as it is applicable, of the following trademarks (Annexes 5 through 13):
A) International trademark registrations:
February 2, 1999
October 1, 2004
B) Community trademark registrations:
November 18, 1998
December 8, 2004
November 11, 2005
November 24, 2005
C) French trademark registrations:
July 20, 1988
November 23, 1998
April 26, 2004
The Complainant also registered the domain names <sanofi-aventis.com>, <sanofiaventis.com>, <sanofiaventis.net> and <sanofi-aventis.co.uk> under which it operates websites. <sanofi-aventis.eu>, <sanofi-aventis.net> and <sanofi-aventis.biz>.
The Respondent registered the domain name <sanofiaventissalesjewlery.com> on March 18, 2006 (hereinafter “Domain Name”);
The Domain Name is used by the Respondent as a portal
which, through “Popular Links” and “Popular Categories”,
leads to websites some of which offer for sale Complainant’s direct competitors’
5. Parties’ Contentions
The Complainant contends that:
- Sanofi-Aventis is a well known company in the pharmaceutical industry as well as in the general public as it is the number 1 pharmaceutical group in Europe and number 3 in the world since the year 2004 and is currently present in more than 100 countries across 5 continents;
- The Complainant holds several French national, international and Community trademark registrations;
- The Complainant also holds several registered domain names and operates a few websites under some of them;
- The Complainant’s trademarks and domain names are widely used notably in connection with pharmaceutical products;
- The Domain Name is confusingly similar to several Complainant’s registered trademarks as it incorporates them in their entirety;
With respect to the Respondent the Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name as:
(i) The Respondent’s name, Montanya lLtd, is not similar to Complainant’s trademarks;
(ii) The Complainant has not authorized the Respondent to use the Domain Name and there is no relationship whatsoever between the Complainant and the Respondent, which might have justified the use by the latter of the Domain Name;
- The Domain Name is being used to deceivingly attract, relying on the Complainant’s worldwide fame, and redirect Internet users to third parties’ sites (some of which offer online sale of products of the Complainant’s direct competitors) for commercial gain, derived from the collection of click-through fees.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the trademarks listed under paragraph 4 above, by submitting copies of several national, Community and international trademark registration certificates of the trademarks AVENTIS, SANOFI AND SANOFI-AVENTIS.
The Panel accepts that the Complainant’s name
and trademarks are well-known as evidenced by Annexes 3, 4 and 25 attached to
the Complaint and as confirmed by previous WIPO UDRP decisions (see among others
Sanofi Aventis v. Holger Kirgis, WIPO Case
No. DES2006-0007; Sanofi-Aventis, Aventis Pharma SA v. Rear View Photograph
Ltd., WIPO Case No. D2005-0625; Sanofi-Synthelabo
v. Nicki On, Case No. D2003-0871;
Aventis SA, Aventis Pharma SA. v. Nicki On, WIPO
Case No. D2003-0899).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks as it incorporates some of them in their entirety and since the addition of the generic suffix “salesjewlery” is not capable, to sufficiently differentiate the Domain Name from the Complainant’s trademarks.
Indeed, as established by several WIPO UDRP decisions: (i) the incorporation
in a domain name of a distinctive trademark in its entirety creates sufficient
similarity between that trademark and the domain name to create a likelihood
of confusion (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific
Wireless Communications, d/b/a/ prepaidcellularwide.com, WIPO
Case No. D2002 – 0313); and (ii) the addition of generic terms to
a domain name (such as “sales” and “jewlery” which obviously
stands for jewellery) incorporating a well-known trademark in its entirety,
not only does not eliminate a likelihood of confusion (F. Hoffmann-La Roche
AG v. Cheaptamiflu.net, WIPO Case No. D2005-1256;
Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories),
WIPO Case No. D2004-0917; Microsoft
Corporation v. 3D Roulette, WIPO Case
No. D2004-0232;) but may even reinforce the impression of an affiliation
among the domain name and the complainant (Viacom International Inc. v. Frank
F. Jackson and Nancy Miller, WIPO Case
Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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 established prima facie evidence that the Respondent
has no rights or legitimate interests in the disputed Domain Name under paragraph 4(c)
of the Policy. According to a consistent line of WIPO UDRP decisions, in such
a case the burden of proof shifts to the Respondent to rebut the evidence (see
among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO
Case No. D2002-0806; International Hospitality Management – IHM
S.p.A. v. Enrico Callegari Ecostudio, WIPO
Case No. D2002-0683). As a consequence, the Respondent’s failure to
rebut the Complaint’s allegations, allows the Panel to infer, taking into
consideration the circumstances of this case, that the Respondent has no such
rights or legitimate interests.
Moreover, the Panel finds, in line with previous WIPO
UDRP decisions, that the Respondent’s use of the Domain Name to divert
Internet users to its websites and redirect them to other websites, some of
which offer for sale the Complainant’s direct competitors’ products,
presumably receiving compensation for this misdirection, cannot be considered
a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy,
(see e.g.: Lyonnaise de Banque v. Richard J., WIPO
Case No. D2006-0142, Motorola, Inc. v. Mr. Josip Broz, WIPO
Case No. D2002-1063).
Consequently, the Panel deems that the Respondent has no rights or legitimate interest in the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As established in paragraph 6.A. above, the Domain Name is confusingly similar to the Complainant’s trademarks which were registered before the Domain Name registration by the Respondent.
Therefore, in the light of the above and in consideration of the notoriety
of the Complainant, the Panel finds it likely that the Respondent was aware
of the Complainant’s trademarks, at the time it registered the Domain
Name (see Nike, Inc. v. B. B. de Boer, WIPO
Case No. D2000-1397). Based on the above, the Panel finds that the Respondent
has registered the Domain Name in bad faith.
Moreover, the Domain Name is used as a referral portal to divert Internet users, through “Popular Links” and “Popular Categories”, to third parties’ sites, some of which offer for sale the Complainant’s direct competitors’ products. Furthermore, it is very likely that the Respondent’s purpose in such use, is that of collecting referral or click-through fees.
Both the above circumstances have been held by various
WIPO UDRP decisions as clear evidence of bad faith use of a domain name (see
Members Equity PTY Limited v. Unasi Management Inc., WIPO
Case No. D2005-0383; Media West-CPI, Inc., Media West-DMR, Inc., Media
West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ,
Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des
Moines Register and Tribune Co., Gannett Satellite Information Network, Inc.,
Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi,
Inc., WIPO Case No. D2005-1336; Volvo
Trademark Holding AB v. Unasi, Inc., WIPO
Case No. D2005-0556).
As a consequence, the Panel finds that the Complainant
has established the element of bad faith according to paragraph 4(a)(iii) of
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 <sanofiaventissalesjewlery.com> be transferred to the Complainant.
Date: December 22, 2006