national arbitration forum

 

DECISION

 

sanofi-aventis S.A. and sanofi-aventis U.S. LLC v. Shawn Sefcik / The Hubcap Store, Inc.

Claim Number: FA1104001385488

 

PARTIES

Complainant is sanofi-aventis S.A. and sanofi-aventis U.S. LLC (“Complainant”), represented by G. Mathew Lombard of Lombard & Geliebter LLP, New York, USA.  Respondent is Shawn Sefcik / The Hubcap Store, Inc. (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sanofigenzyme.us> and <sanofi-genzyme.us>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 25, 2011; the Forum received a hard copy of the Complaint on April 25, 2011.

 

On April 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 2, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”). 

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On May 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <sanofigenzyme.us> and <sanofi-genzyme.us> domain name are confusingly similar to Complainant’s SANOFI mark.

 

2.    Respondent does not have any rights or legitimate interests in the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names.

 

3.    Respondent registered and used the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, sanofi-aventis U.S. LLC, is a licensee of Complainant, sanofi-aventis S.A., and is authorized to use Complainant sanofi-aventis S.A.’s marks. The Complainants thus have a sufficient nexus to bring this Complaint and will be collectively referred to as “Complainant” throughout the rest of the decision template. Complainant owns a trademark registration for the SANOFI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,129,809 issued January 20, 1998). Complainant also owns the USPTO registered GENZYME mark (Reg. No. 1,291,567 issued August 28, 1984) through its acquisition of  the previous owner, Genzyme Corp., on February 16, 2011. Complainant uses these marks in connection with pharmaceutical preparations; healthcare- and fitness-related educational services and printed publications; computer software in the field of healthcare and medical practice management; and its website featuring information on healthcare, health information, lifestyle, philanthropy, and pharmaceutical products.

 

Respondent, Shawn Sefcik / The Hubcap Store, Inc., registered the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names on August 2, 2010. The disputed domain names resolve to generic link-filled pages advertising other products and services, including pharmaceutical products that compete with Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant owns a trademark registration for the SANOFI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,129,809 issued January 20, 1998). The Panel finds that this USPTO trademark registration establishes Complainant’s rights in the SANOFI mark for the purposes of Policy  ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)). Complainant also owns the USPTO registered GENZYME mark (Reg. No. 1,291,567 issued August 28, 1984) through its acquisition of  the previous owner, Genzyme Corp., on February 16, 2011. The Panel finds that this USPTO trademark registration proves Complainant’s rights in the GENZYME mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

 

Complainant contends that Respondent’s <sanofigenzyme.us> and <sanofi-genzyme.us> domain names are confusingly similar to Complainant’s SANOFI mark because the disputed domain names combine Complainant’s mark with one or more of the following elements: Complainant’s GENZYME mark, a hyphen, and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that combining Complainant’s mark with another of Complainant’s marks is not sufficient to defeat a claim of confusing similarity. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”). The Panel also finds that a hyphen adds no distinguishing feature to the disputed domain name under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to [UDRP] ¶ 4(a)(i).”). Finally, the Panel concludes that the ccTLD “.us” does not differentiate the disputed domain names from Complainant’s mark. See CDW Computer Centers, Inc. v. The Joy Company, FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD does not differentiate the disputed domain name from Complainant’s mark). The Panel thus determines that Respondent’s <sanofigenzyme.us> and <sanofi-genzyme.us> domain names are confusingly similar to Complainant’s SANOFI mark according to Policy ¶ 4(a)(i).

 

The Panel holds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <sanofigenzyme.us> or <sanofi-genzyme.us> domain names. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names. The WHOIS information identifies Respondent as “Shawn Sefcik / The Hubcap Store, Inc,” which indicates no facial association with the disputed domain names. Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain names and does not possess rights and legitimate interests under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent is using the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names to link Internet users to a web page featuring links to other websites, including websites offering pharmaceutical products in competition with Complainant. The Panel finds that Respondent’s use of the disputed domain names to misdirect Internet users to a web directory of links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) or Policy ¶ 4(c)(iv). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration or Use in Bad Faith

 

Respondent’s <sanofigenzyme.us> and <sanofi-genzyme.us> domain names resolve to a website filled with links to other third-party websites, some of which offer pharmaceutical products in competition with Complainant. The Panel finds that Respondent’s use of the disputed domain names facilitates competition with Complainant, disrupts Complainant’s business, and thus signals bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

The Panel presumes that Respondent profits through the receipt of pay-per-click fees from the competing and other links advertised on the resolving websites. The Panel finds that Respondent’s use of Complainant’s marks in the disputed domain names intends to attract Internet users seeking Complainant and create a likelihood of confusion as to the affiliation of Respondent’s resolving websites in order to profit commercially from the pay-per-click links. The Panel finds these activities demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith).

 

Complainant also argues that Respondent registered the disputed domain names only one month after the first press report came out regarding the possible acquisition of Genzyme by Complainant and during the time in which the possible acquisition was the subject of intensive news coverage. Complainant thus contends that the circumstances and timing of the registration of the disputed domain names show opportunistic bad registration, which the Panel finds is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change.  This is also evidence of bad faith.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do.  The panel finds a negative inference from this.”).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sanofigenzyme.us> and <sanofi-genzyme.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  June 7, 2011

 

 

 

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