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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merrell Pharmaceuticals Inc. , Aventis Pharma SA. v. Filips Kostins

Case No. D2004-0943

1. The Parties

The Complainant is Merrell Pharmaceuticals Inc., Aventis Pharma SA., 3711 Kennett Pike, Suite 200, Greenville, Delaware 19807, United States of America; 20, Avenue Raymond ARON, 92160 Antony, France, represented by Carole Asenci, France.

The Respondent is Filips Kostins, Sievekingdamm 11, Hamburg, 20535, Germany.

2. The Domain Name and Registrar

The disputed domain name <buy-generic-allegra.com> (“the Domain Name”) is registered with Ascio Technologies Inc. (DK).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2004. On November 11, 2004, the Center transmitted by email to Ascio Technologies Inc. (DK) a request for registrar verification in connection with the domain name at issue. On November 12, 2004, Ascio Technologies Inc. (DK) 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 15, 2004. 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 November 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2004.

The Center appointed Adam Taylor as the sole panelist in this matter on December 9, 2004. 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.

4. Factual Background

The Complainant comprises two companies which are part of the US-based pharmaceutical group Aventis. Merrell Pharmaceuticals Inc. is a 100 % subsidiary of Aventis Inc., the US holding company of the group. Aventis Pharma S.A. is a wholly owned French subsidiary.

Aventis Pharma S.A. offers a wide range of patented prescription drugs to treat patients with serious diseases including respiratory/allergy, cardiology/thrombosis, oncology and diabetes.

Merrell Pharmaceuticals Inc. and Aventis Pharma S.A. have developed and have been selling throughout the world under the trademark ALLEGRA a drug to treat allergic rhinitis. The official website for this product is at “www.allegra.com”. This website is headed: “Allegra Fexofenadine HCI”

Merrell Pharmaceuticals Inc. owns the following registered trademarks for the word ALLEGRA in respect of pharmaceutical products in class 5 of the international classification:

- US No. 2 067 728 registered in 1997

- Canada No. TMA 492 711 registered in 1998

- Mexico No. 504960 registered in 1995

- Argentina No. 1683128 registered in 1998

- Brazil No. 819351520 registered in 1999

- South Africa No. 97/08358 registered in 1997

- China No. 1200260 registered in 1998

Merrell Pharmaceuticals Inc. and Aventis Pharma S.A. have sufficient interest in the Domain Name for them to be co-complainants in this action and the Panel will hereafter refer to both collectively as “the Complainant”.

The Respondent registered the Domain Name on August 30, 2004. The Respondent has used a website at the Domain Name to offer for sale a drug called “generic Allegra D (Fexofenadine)”.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes “buy” and “generic” are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the term ALLEGRA. Therefore, the terms BUY-GENERIC-ALLEGRA.COM and ALLEGRA are visually and phonetically similar, and create a risk of confusion on the part of the public. The Respondent has no rights in the Domain Name which is confusingly similar to the trademark ALLEGRA, owned and widely used by the Complainant, and the Complainant believes that the use of the Domain Name leads to confusion.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainants have owned registered trademarks for more than eight years in various countries including in the USA where the defendant is located. By using the Domain Name, the Respondent intentionally attempted to attract for financial gain internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products or services on the Respondent’s websites.

The Respondent’s use is strictly made in reference to the Complainant’s trademarks. The Respondent has not been authorised by the Complainant to offer or sell ALLEGRA products nor to use these trademarks or to register any domain name incorporating the trademarks. There is no relationship between the parties and this demonstrates the absence of rights or legitimate interests of the Respondent.

Registered and Used in Bad Faith

The domain name was registered in bad faith. At the time of registration, the Respondent was undoubtedly aware of the existence of the Complainant’s drug called ALLEGRA, the ALLEGRA trademarks, the Complainant’s domain name <allegra.com> and the Complainant’s website at that domain name. This knowledge is supported by the fact that the Domain Name is used in reference to the Complainant’s trademarks.

The Respondent has registered the Domain Name to take advantage of the Complainant’s fame and its well-known trademark. Moreover, the Respondent seeks to attract internet users who are seeking information about the Complainant’s products.

The domain name is being used in bad faith. The Domain Name is used to offer the Complainant’s products which leads to a risk of confusion. The Respondent sells ALLEGRA products on its website.

The reproduction of the Complainant’s trademarks without any authorization creates a confusion for consumers, who, when looking for information about the Complainant’s drugs ALLEGRA will access to the website at the Domain and automatically establish a link between the Complainant and Respondent.

Moreover, the Domain Name was registered and is being used for a commercial purpose. The reproduction of the Complainant’s trademarks without any authorization, creates confusion for consumers, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant does not want Internet users to believe there is a connection with it as this could prejudice the Complainant if users are unhappy with the products purchased on the site.

B. Respondent

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

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established trademark rights in the distinctive term ALLEGRA.

The Domain Name includes the Complainant’s trademark in its entirety together with the generic words “buy” and “generic”. The mere addition of such generic terms is not sufficient to avoid confusion between domain name and trademark. (See, e.g., Pfizer Inc. v. William James, WIPO Case No. D2004-0583 <buy-generic-viagra-sildenafil-citrate.biz> and Pfizer Inc v. Ian Herman WIPO Case No. D2004-0597 <shopgenericviagra.com>).

It is well established that domain suffixes are disregarded for the purpose of this comparison.

The Domain Name is therefore confusingly similar to the Complainant’s ALLEGRA trademark.

The Panel concludes that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

As to paragraph 4(c)(i), the Respondent has used the Domain Name in connection with an offering of goods. However the Complainant has not licensed or otherwise authorized the Respondent to use its trademark and the Respondent has not submitted a response to deny the Complainant’s assertions concerning the illicit nature of the Respondent’s use of its trademark. Furthermore, the Panel has concluded below that the Complainant used the Domain Name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances the Respondent’s offering could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) apply.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel is of the view that the Respondent registered and has been using the Domain Name in bad faith, to intentionally attract for commercial gain internet users to its website by trading on the goodwill associated with the ALLEGRA trademark and creating a likelihood of confusion with the trademark as to source, sponsorship affiliation or endorsement of Respondent’s website and of the goods offered on the site (paragraph 4(b)(iv) of the Policy).

The Respondent was clearly aware of the Complainant’s ALLEGRA trademark when it registered the Domain Name.

The Respondent sought to create confusion by suggesting a connection with the trademark through the Domain Name itself and also by means of the website at the Domain Name. The site is branded “Buy generic Allegra D (Fexofenadine) online” and it offers this product for sale in conjunction with a prominent image of packaging bearing the Complainant’s trademark ALLEGRA in similar stylized manner to that used by the Complainant (and which may well be the Complainant’s own packaging but that cannot be verified from the screenshots produced by the Complainant). See, e.g., Aventis Pharmaceuticals Products Inc., and Merrell Pharmaceuticals Inc. v. PBS Publishing, LLC, WIPO Case No. D2002-0343.

It can reasonably be inferred that the Respondent profited from the website at the Domain Name.

The Panel concludes that the Domain Name was registered and has been used in bad faith.

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 name, <buy-generic-allegra.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist

Date: December 22, 2004