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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi Aventis Sociйtй anonyme v. Balata.com Ltd.

Case No. DNL2008-0014

1. The Parties

The Complainant is Sanofi Aventis, Sociйtй anonyme, of France, represented by Novagraaf Belgium SA of Belgium.

The Respondent is Balata.com Ltd., of Hong Kong, SAR of China.

2. The Domain Name

The disputed domain name <sanofi-synthelabo.nl> (hereinafter the “Domain Name”) is registered with SIDN.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 23, 2008 the Center transmitted by email to SIDN a request for registration verification in connection with the domain name at issue. On May 27, 2008, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with article 16 of the Regulations, the Center provisionally decided that the procedure could continue in the English language.

In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2008. In accordance with the Regulations, article 7.1, the due date for Response was June 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2008.

The Center appointed Alfred Meijboom as the panelist in this matter on June 27, 2008. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.

4. Factual Background

The Complainant, Sanofi Aventis, is an international group acting in the pharmaceutical sector. It uses the name Sanofi Synthelabo for designating pharmaceutical services as research and development services in the pharmaceutical sector. Sanofi Synthelabo is the name of the pharmaceutical group, created in 1999 from the merger of the company Sanofi and the company Synthelabo (a subsidiary of the cosmetics group L’Oreal).

The Complainant holds the following trademark registrations:

- the Benelux word mark SANOFI-SYNTHELABO – L’essentiel cйst la santй (No. 674201), registered since April 14, 2000;

- the Benelux word mark SANOFI-SYNTHELABO – Because health matters (No. 674200), registered since April 14, 2000;

- the Community word mark SANOFI-SYNTHELABO (No. 2923522), registered since May 25, 2004;

- the international trademark I love SANOFI-SYNTHELABO (No. 805685), registered since April 8, 2003, with Benelux designation;

- the international word mark SYNTHELABO, (No. 328379), registered since November 28, 1966, with Benelux designation;

- the international word mark SYNTHELABO (No. 377469), registered since April 14, 1971, with Benelux designation;

- the Community trademark SANOFI (No. 596023), registered since February 1, 1999.

The Complainant holds various “sanofi-synthelabo” domain names.

The Domain Name <sanofi-synthelabo.nl> was registered on September 13, 2000. The Domain Name resolves to a website that at first sight appears to provide information on medicines, but when clicking through links to all kinds of different websites not medicine related. In the upper right corner of the home-page it is stated that the Domain Name is for sale.

On March 13, 2008, the Complainant sent the Respondent a cease and desist letter concerning the Domain Name. The same day the Respondent replied that it was willing to consider giving up the Domain Name, but that it expected to be compensated for the time and money spent on the registration process, suggesting a payment of EUR 550,-.

5. Parties’ Contentions

A. Complainant

The Complainant holds trademark rights in the above mentioned name SANOFI SYNTHELABO. Furthermore, the Complainant claims to hold trade name and company name rights in the name SANOFI SYNTHELABO, which is used all over the world. The Complainant has contended that the Domain Name is identical or confusingly similar to its trademarks and company name.

The Complainant has put forward that the Respondent has no rights to or legitimate interests in the Domain Name for the following reasons:

- the Respondent does not own a SANOFI SYNTHELABO trademark and has no prior rights;

- the Respondent is not commonly known by the mark SANOFI SYNTHELABO;

- the Complainant has not licensed or otherwise authorized the Respondent to use its trademark;

- the Complainant has prior and older trademark rights in the names SANOFI and SYNTHELABO;

- the Respondent does not make any legitimate non commercial or fair use of the Domain Name.

Furthermore, the Complainant has asserted that the Respondent has registered and is using the Domain Name in bad faith, as evidences by the following factors:

- Since the SANOFI SYNTHELABO trademark is famous and predates any of the Respondent’s activities, the Respondent must have been aware of the trademark when registering the Domain Name;

- The Domain Name redirects internet users to a website containing services competing with the Complainant, thus disrupting the Complainant’s business;

- The website mentions that the Domain Name is for sale and when the Complainant sent a cease and desist letter, the Respondent answered that it expected payment for the transfer. Both facts are proof of bad faith;

- The Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s trademark, which constitutes bad faith under the Regulations, article 3.2 (d);

- The Respondent is often cited as respondent in domain name disputes. In all decisions it has been evidenced that the Respondent had registered the domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

Language of proceedings

The Complainant filed the Complaint in the English language without providing the reason why it was not filed in the Dutch language, which would have been expected pursuant to the basic presumption of the Regulations, article 16 (AB Electrolux v. Marcel Vlaar; WIPO Case No. DNL2008-0005). As the Respondent is a limited liability company from Hong Kong SAR of China, it should be expected to understand English, especially as its response to Complainant’s cease and desist letter was in English, so that Respondent’s right of defense was not prejudiced by the choice of English as the language of the procedure. The Panel therefore affirms with the provisional decision of the Center that the language of the procedure is English.

The Regulations, article 7.4, provide that, in the event that a respondent fails to submit a response, the complaint shall be granted, unless the Panel considers it to be without basis in law or in fact.

According to the Regulations, article 2.1, the requested remedy can be granted if the Complainant asserts and establishes each of the following:

“a. that the Domain Name is identical or confusingly similar to

I a trademark, or trade name, protected under Dutch law in which the Complainant has rights;

II a personal name registered in a Dutch municipal register of persons (“gemeentelijke basisadministratie”), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and

b. that the Respondent has no rights to or legitimate interests in the Domain Name; and

c. that the Domain Name has been registered or is being used in bad faith.”

A. Identical or Confusingly Similar

The Complainant holds various trademark registrations with validity in the Benelux for SANOFI, for SYNTHELABO and for SANOFI-SYNTHELABO. Therefore, the Panelist finds that the Complainant has rights in these trademarks protected under Dutch law.

Furthermore, the Complainant has claimed trade name and company name rights in the name SANOFI SYNTHELABO. However, the Complainant failed to submit arguments and/or evidence that the name should be considered to be protected under Dutch law as required in the Regulations, article 2.1(a)(I). Therefore, the Panelist cannot establish that the Complainant holds trade name rights protected under Dutch law.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the SANOFI, SYNTHELABO and/or SANOFI-SYNTHELABO trademarks in which the Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name. Consequently, the Panelist considers the Domain Name <sanofi-synthelabo.nl>, identical to the Complainant’s SANOFI-SYNTHELABO trademark and confusingly similar to the Complainant’s SANOFI and SYNTHELABO trademarks.

B. Rights or Legitimate Interests

According to the Regulations, article 2.1(b), the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut that showing by for example providing evidence of one of the three circumstances mentioned in the Regulations, article 3.1.

The Complainant has contended that it has not licensed or otherwise authorized the Respondent to use its SANOFI-SYNTHELABO trademarks and the Respondent did not dispute the Complainant’s claim to that effect. Nor could the Panelist establish any indications that the Respondent, (a) before having notice of the dispute, made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, (b) is commonly known by the Domain Name, or (c) is making a legitimate noncommercial use of the Domain Name. For these reasons, the Panelist finds that the Complainant has satisfied the Regulations, article 2.1(b).

Consequently, the Panelist concludes that the Respondent has no rights or legitimate interest in the Domain Name.

C. Registered or Used in Bad Faith

The Regulations, article 2.1(c), provides that the Domain Name has been registered or is being used in bad faith.

The Panelist considers that the SANOFI-SYNTHELABO trademark is not descriptive for goods and services in the pharmaceutical sector and clearly has distinctive character. Both the SANOFI and SYNTHELABO as well as some SANOFI-SYNTHELABO trademark registrations predate the registration of the Domain Name. The Domain Name resolves to a website that at first sight appears to provide information on medicines, but when clicking through links to all kinds of different websites not medicine related. Under these circumstances the Panelist finds it is reasonable to conclude that the Domain Name, which consists of the SANOFI-SYNTHELABO trademark in its entirety, must have been registered by someone who was familiar with the Complainant’s SANOFI-SYNTHELABO trademark. Therefore the Panelist finds that the Domain Name was registered in bad faith.

The Panel thus finds that the Complainant has satisfied the Regulations, article 2.1(c), and because of this finding there is no need to discuss whether the Domain Name is also being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with the Regulations, articles 1 and 13, the Panel orders that the domain name <sanofi-synthelabo.nl> be transferred to the Complainant.

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Alfred Meijboom
Sole Panelist

Dated: July 3, 2008