1797
Nominet UK Dispute Resolution Service
DRS 01797
Sanofi-Synthelabo SA -v- Chris Noot
Decision of Independent Expert
1. Parties:
Complainant: Sanofi-Synthelabo SA
Country: France
Respondent: Chris Noot
Country:
2. Domain Name:
sanofi-aventis.co.uk and sanofiaventis.co.uk ("the Domain Names")
3. Procedural Background:
The Complaint was received by Nominet on 27 May 2004. Nominet validated the Complaint and sent a copy to the Respondent on 2 June 2004.
No Response was lodged by the Respondent.
On 2 July 2004 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as the Expert with effect from 9 July 2004.
4. The Facts:
The Complainant is a pharmaceutical company. It owns a number of UK trade mark registrations for (or including) the mark SANOFI. The Complainant has been in merger talks with Aventis SA, with press coverage in March and April 2004.
On 20 April 2004 the Respondent registered the Domain Names.
5. The Parties' Contentions:
Complainant:
In summary, the Complainant's submissions are as follows:
1. The Complainant has rights in a trade mark which is similar to the Domain Names:
(1) The Complainant is the owner of numerous UK registered trade marks incorporating the word SANOFI, including registration number 1483425, dated 21 November 1991, for the word mark SANOFI.
(2) In addition, Aventis SA has a number of registered UK and Community trade marks for the word mark AVENTIS as well as other marks incorporating the word AVENTIS, including UK trade mark number 2182304. Aventis has written to Nominet to confirm that it considers the registration of the Domain Names by the Respondent to be abusive and that it agrees to any transfer of the Domain Names to the Complainant. Aventis has also seen the Complaint in draft and approved it.
(3) The Domain Names in dispute are identical or similar to a name or mark in which the Complainant has rights.
2. The Domain Names are an Abusive Registration in the hands of the Respondent:
(1) Both Domain Names consist exclusively of the Complainant's and the Aventis trade marks.
(2) The Complainant has been in widely publicised merger talks with Aventis, with much press coverage, in particular, in March and April 2004. For example, there were articles appearing The Times on 14 April 2004 and in the Financial Times on 16 April 2004.
(3) The First Domain Name (sanofi-aventis.co.uk) resolves to a web page with a banner for registrar uk2.net across the top and side and of the page, and a search engine with the term "Aventis Sanofi-Synthelabo" automatically inserted into the browser, with the first ten results displayed. The second Domain Name (sanofiaventis.co.uk) currently displays a holding page for the registrar uk2.net.
(4) The Domain Names constitute abusive registrations in that, at the time when the registrations took place, they took unfair advantage of the Complainant's rights. The registration of the Domain Names is abusive because it blocks registration of the Domain Names by the Complainant and the Domain Names include the Complainant's trade mark SANOFI (and Aventis' trade mark AVENTIS) and infringe the Complainant's rights.
Respondent:
The Respondent has not filed a Response.
6. Discussion and Findings:
No Response
The Respondent has not filed any Response. In spite of this, it is still for the Complainant to prove its case on the balance of probabilities.
General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must, for each of the Domain Names, prove on the balance of probabilities that:
i it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
The Complainant owns a number of UK trade mark registrations for various forms of the SANOFI mark, including the plain word itself. It therefore has Rights in the SANOFI mark.
Given that both the Domain Names start with the word "sanofi", I find that they are similar to the SANOFI mark.
The Complainant has therefore proved what is required under the first part of paragraph 2 of the Policy.
Abusive Registration
Paragraph 1 of the Policy defines an "Abusive Registration" as:
"A Domain Name which either:
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
The Respondent registered the Domain Names very shortly after there was a good deal of press coverage on the merger talks between the Complainant and Aventis. Articles on the proposed merger appeared in The Times on 14 April 2004 and in the Financial Times on 16 April 2004. The Domain Names were registered on 20 April 2004. In the light of this timing, and the unusual combination of the names Sanofi and Aventis, the Respondent must have been aware of the publicised proposed merger and, for the purposes of this decision, I find on the balance of probabilities that the Respondent was so aware.
One then has to ask why the Respondent chose to register the Domain Names. It is very difficult to think of a bona fide reason. That being the case, and taking into account the timing of the registrations, I find on the balance of probabilities that the Respondent registered the Domain Names in bad faith and with a view to selling the Domain Names to the Complainant. This is one of the non-exhaustive list of factors which may be evidence of Abusive Registration (see paragraph 3aiA of the Policy).
In addition, given the make-up of the Domain Names, it is difficult to contemplate how the Domain Names could be used in a way which would not be likely to confuse people into believing that they are registered to, operated or authorised by, or otherwise connected with the Complainant.
Following my conclusion that the Respondent registered the Domain Names in order to sell them to the Complainant, I find that the registration of the Domain Names took unfair advantage of or was unfairly detrimental to the Complainant's Rights, and that the Domain Names therefore constitute Abusive Registrations under paragraph 1 of the Policy (as set out above). This conclusion is reinforced by the fact that any use of the Domain Names would be likely to cause confusion.
These conclusions are corroborated by the Respondent having chosen not to put forward any explanation of how he came to register the Domain Names.
7. Decision:
Having found that the Complainant has Rights in respect of a name or mark which is similar to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert directs that the Domain Names, sanofi-aventis.co.uk and sanofiaventis.co.uk, be transferred to the Complainant.
Jason Rawkins
Date: 12 July 2004