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Sanofi-Aventis v. Day Corporation [2005] GENDND 218 (25 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Day Corporation

Case No. D2004-1075

1. The Parties

The Complainant is Sanofi-Aventis, of Paris, France, represented by Bird & Bird Solicitors, France.

The Respondent is Day Corporation, C/O Chaille Garcia, Carson City, Nevada United States of America.

2. The Domain Names and Registrar

The disputed domain names <endotelon.biz>, <endotelon.com>, <endotelon.info>, <endotelon.net> and <endotelon.org> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2004. On December 20, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On December 20, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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 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 December 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2005. The Response was filed with the Center on January 9, 2005.

The Center appointed Nicoletta Colombo as the sole panelist in this matter on March 15, 2005. 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.

In the light of the tenor of Response from the Respondent, which states willingness to cooperate with the transfer of the contested domain names, the Center asked the Complainant to confirm whether the proceeding should be suspended to reach a settlement. The Complainant on January 14, 2005, confirmed its wish to suspend for 15 days the proceedings. On February 1, 2005, the Complainant asked an additional one month period of suspension because the parties were trying to find an agreement. On March 4, 2005, the Complainant asked to re-institute the proceedings and the Center on the same day informed the Respondent that the proceedings had been re-instituted.

4. Factual Background

The Complainant is one of the world’s top 20 pharmaceutical groups, founded in 1973 and merged with Synthelabo on May 1999, creating the second largest pharmaceutical company in France. The Complainant products are distributed in the United States of America through a number of channels and in particular through a website. Enotelon is a well –known drug produced by the Complainant since 1978 to cure chronic venous insufficiency. The Complainant has filed trademark applications for Endotelon in more that 100 countries.

The Respondent Day Corporation registered <endotelon.com> on December 31, 2002, <endotelon.info>, <endotelon.net> and <endotelon.org> on April 25, 2003, and <endotelon.biz> on April 25, 2004. The disputed domain names lead to a website which presents the Respondent product “Flavay” similar to Endotelon but better under many circumstances according to the Respondent.

5. Parties’ Contentions

A. Complainant

Complainants contend the following :

1) That the disputed domain names <endotelon.biz>, <endotelon.com>, <endotelon.info>, <endotelon.net> and <endotelon.org> are confusingly similar to trademarks in which Complainant has rights.

2) That the Respondent has no rights or legitimate interests in respect of the disputed domain names, that it is not commonly known by the disputed domain names and that it is not making any legitimate or fair use of the disputed domain names.

3) That Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to use them as part of the disputed domain names.

4) That the Respondent registered the disputed domain names in bad faith, knowing that ENDOTELON corresponds to a trademark as results clearly from the website run “endotelon.com” where it is explained what is “Endotelon” and where “Endotelon” is presented as a trademark with the sign “TM”.

5) The bath faith of the Respondent is also demonstrated by the fact that the disputed domain names lead to a website “www.opcs.com” which denigrates Endotelon product for the benefit of a product called “Flavay” which is supposed to get the same effects that Endotelon but in a safer way.

B. Respondent

The Respondent replied that it does not oppose the transfer of the contested domain names to Sanofi-Aventis.

About allegations and statements of the Complainant, the Respondent maintains that its predecessor registered the domain names in good faith because even if aware that Endotelon, it was unaware that the Complainant wanted to sell Endotelon product in USA. Day Corporation has never denigrated Endotelon; the purpose of the web pages associated to the Respondent website were purely to educate American consumers about the French origin of oligomeric proanthocyanidins and Day Corporation has stopped its plan in using the trademark Endotelon for its business.

6. Discussion and Findings

The Respondent, even if it tried to explain the reason of the registration of the contested domain names, did not oppose to the transfer of the disputed domain names to the Complainant. Several prior decisions in which the Respondent has consented to transfer the contested domain names conclude that the requirements of Paragraph 4 of the Policy are fulfilled (see eMusic.com, Inc. v. Mp3DownLoadCity, WIPO Case No. D2004-0967, Lonely Planet Publications Pty Ltd. v. Hoang Anh Minh and cicvn.com, WIPO Case No. D2003-0355, Desotec N.V. v. Jacobi Carbons Ab, WIPO Case No. D2000-1398. Therefore, considering this consent to a transfer of the domain names and other facts of the case, this Administrative Panel concludes that the requirements of Paragraph 4 of the Policy are fulfill.

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 names, <endotelon.biz>, <endotelon.com>, <endotelon.info>, <endotelon.net> and <endotelon.org> be transferred to the Complainant.

Nicoletta Colombo
Sole Panelist

Date: March 25, 2005