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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis, Aventis Pharma SA, Merrel Pharmaceuticals Inc., Aventis Pharma Deutschland GmbH, Aventis Pharmaceutical Products Inc. v. Jeff Wilfong

Case No. D2006-1308

 

1. The Parties

The Complainants are Sanofi-Aventis, Aventis Pharma SA, Merrel Pharmaceuticals Inc., Aventis Pharma Deutschland Gmbh and Aventis Pharmaceutical Products Inc., Gentilly Cedex, France, represented by Selarl Marchais De Candй, France.

The Respondent is Jeff Wilfong, California, United States of America.

 

2. The Domain Names and Registrar

The disputed Domain Names <allegrawire.com>, <ambienwire.com>, <eloxatinwire.com>, <lantuswire.com>, <nasacortaqwire.com> and <plavixwire.com> are all registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2006. On October 13, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On October 13, 2006, and October 20, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant in respect of each of the Domain Names and providing in each case 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 October 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2006.

The Center appointed Ian Lowe as the sole panelist in this matter on November 22, 2006. 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 Sanofi-Aventis is one of the largest pharmaceutical groups in the world with consolidated net sales in 2005 of €27,311 billion. It has a presence in more than 100 countries across five continents.

The Complainants are variously the proprietors of an extensive portfolio of registered trademarks in respect of their pharmaceutical products, including:

ALLEGRA – registered in Mexico, the United States of America, Canada and other countries from April 9, 1998,

PLAVIX – registered in the United  Kingdom, the European Community, the United States of America, Mexico and many other countries from July 28, 1993,

AMBIEN – registered in the United Kingdom, the United States of America, Ireland and many other countries from May 31, 1991,

NASACORT – registered in the United States of America, the European Community, the United Kingdom and many other countries from May 16, 1989,

LANTUS – registered in the United Kingdom, the United States of America, Mexico and many other countries from August 31, 1992, and

ELOXATIN – registered in France, the United Kingdom, the United States of America and many other countries from June 6, 1995.

The Complainants operate websites presenting their products at “www.allegra.com”, “www.plavix.com”, “www.ambien.com”, “www.nasacort.com”, “www.lantus.com” and “www.eloxatin.com”.

The Domain Names were all registered on March 11, 2006.

 

5. Parties’ Contentions

A. Complainant

A summary of the contentions of the Complainants is as follows:

The Complainants are the proprietors of a number of registered trademarks throughout the world in respect of each of ALLEGRA, PLAVIX, AMBIEN, NASACORT, LANTUS and ELOXATIN. The trademarks have all been registered for many years and are widely used by the Complainants in respect in particular of pharmaceutical products.

Save in the case of <nasacortaqwire.com>, the Domain Names all comprise the Complainants’ registered trademarks together with the term “wire”. The Complainant asserts that this must be taken to mean “on line” and is a generic term suggesting that the product represented by the Complainants’ trademark is available on the Internet. According to the Complainant, none of the trademarks has any particular meaning and they are therefore distinctive. Previous panelists have held that the addition of a generic or descriptive term to a distinctive trademark to form a domain name does not exclude the likelihood of confusion between the trademark and the domain name.

In the case of <nasacortaqwire.com>, the Domain Name comprises the Complainants’ registered trademark together with the term “aq” and the term “wire”. The Complainant states that the term “aq” is the chemical formula of “agua” or “aqueous” and is usually used for soluble pharmaceutical products. The addition of the two terms is not sufficient to avoid the likelihood of confusion between the trademark NASACORT and the <nasacortaqwire.com> domain name.

Accordingly, the Complainant contends that the Domain Names are confusingly similar to the trademarks owned by the Complainants.

All of the Domain Names resolve to a website at “www.searchportal.information.com” that comprises a portal with links to other websites in various categories including Travel, Finance and Entertainment. Clicking on the links leads the user to websites offering to sell various products and services.

None of the Complainants or affiliate companies has ever licensed the Respondent to use the trademarks and there is no relationship between the Complainants and the Respondent. Therefore, the Complainant contends that the Respondent has no legitimate interests in respect of the Domain Names.

The Complainant further contends that before registering the Domain Names the Respondent must have been aware of the existence of:

- the drugs Allegra, Ambien, Lantus, Eloxatin, Plavix and Nasacort developed and sold by the Complainants;

- the trademarks ALLEGRA, AMBIEN, LANTUS, ELOXATIN, PLAVIX and NASACORT owned by the Complainants;

- the domain names <allegra.com>, <ambien.com>, <lantus.com>, <eloxatin.com>, <plavix.com> and <nasacort.com> registered by the Complainants, and the associated websites.

The webpage at “www.information.com” to which all of the Domain Names resolve includes a search portal, and entering the products of the Complainants as a search term results in a page of links to various websites advertising or selling equivalent medical products or generic medication.

Accordingly, the Complainant states that the Respondent is intentionally attempting to attract for financial gain Internet users to the web sites or other online location by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Registrant’s website or location or of a product or service on the Respondent’s websites or location.

The Complainants do not want Internet users to believe wrongly that the Sanofi-Avantis group has in some way authorized or guaranteed the information given and products sold on the websites linked to the Respondent’s webpage since this could be prejudicial to Sanofi-Avantis.

The Complainant contends that the Domain Names were registered in bad faith and are being used in bad faith for a commercial purpose, without any rights or legitimate interest by the Respondent, with the purpose of disrupting the business of a competitor.

B. Respondent

The Respondent did not reply to the Complainants’ contentions save that on November 9, 2006 the Respondent sent an email to the Center stating: “We would like to resolve this. We only have no interest in these domains.”

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainants must prove that:

(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have adduced uncontroverted evidence of numerous trademark registrations around the world in respect of the marks ALLEGRA, AMBIEN, LANTUS, ELOXATIN, PLAVIX and NASACORT (the “Marks”) and of the widespread use of the Marks in relation to sales of the Complainants’ pharmaceutical products. The Panel finds that the Complainants have clearly established rights in the Marks.

Each of the Domain Names comprises the whole of one of the Marks together with the word “wire” or, in the case of <nasacortaqwire.com>, the words “aq” and “wire”. Each of these words is generic and non-distinctive. In making a comparison between the Complainants’ Marks and the Domain Names it is appropriate to leave these generic words largely out of account, as many previous panelists have found. Accordingly, the Panel finds that each of the Domain Names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not replied to the Complainants’ contentions and has not therefore displaced the assertion on the part of the Complainants that the Respondent does not and cannot possibly have any rights or legitimate interests in any of the Domain Names. The email from the Respondent confirmed that the Respondent had no interest in the Domain Names. The Panel accepts the assertion on the part of the Complainants that the Marks are widely-known and that the Respondent must have had them in mind when registering the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in any of the Domain Names.

C. Registered and Used in Bad Faith

The Complainants have adduced evidence that prior to the filing of the Complaint each of the Domain Names resolved to a search engine and linking portal which offered links in turn to various websites advertising or selling equivalent medical products or generic medication. The Respondent has not countered this evidence and the Panel accepts the Complainants’ contention that the Respondent is most likely to have derived a financial benefit from web traffic diverted through the Domain Names to the search engine and linking portal, particularly if such traffic then followed the links referred to. The Panel therefore accepts that the Respondent has intentionally attracted internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location.

In view of the notoriety and distinctiveness of the Complainants’ Marks and the nature of the limited use of the Domain Names, the Panel finds that the Respondent can have had no legitimate or good faith reason for registering any of the Domain Names.

Accordingly, the Panel finds that the Respondent has registered and used each of the Domain Names 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 Names <allegrawire.com>, <ambienwire.com>, <eloxatinwire.com>, <lantuswire.com>, <nasacortaqwire.com> and <plavixwire.com> be transferred to the Complainants.

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Ian Lowe
Sole Panelist

Date: December 7, 2006