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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis , Aventis Pharmaceuticals Inc., Aventis Pharma S.A. v. Conor O' Connor

Case No. D2006-1310

 

1. The Parties

The Complainant is comprised of Sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharma S.A. Gentilly Cedex, France; the Complainant is represented by Selarl Marchais De Candй, Paris, France.

The Respondent is Conor O' Connor, Malaga, Spain.

 

2. The Domain Name and Registrar

The disputed domain names, <allegra-available-online.com> and <nasacort-available-online.com> are registered with BulkRegister.com.

 

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 BulkRegister.com a request for registrar verification in connection with the domain names at issue. On October 13, 2006, BulkRegister.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 contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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, 2006. In accordance with the Rules, Paragraph 5(a), the due date for the Response was December 6, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 7, 2006.

The Center appointed Jon Lang as the sole panelist in this matter on December 21, 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

Aventis Pharmaceuticals Inc. and Aventis Pharma S.A are companies of the Sanofi-Aventis group which is a multinational entity with a presence in more than 100 countries and which has a large portfolio of drugs. It offers a wide range of patented prescription drugs and has a leading position in a number of therapeutic areas including cardiology/thrombosis, oncology and diabetes.

Under the trademark NASACORT, Sanofi-Aventis has developed and sold a drug to treat allergic rhinitis, information about which can be found at the Complainant’s website “www.nasacort.com”.

Under the trademark ALLEGRA, Sanofi-Aventis has developed and sold a drug to treat the symptoms of seasonal allergies such as nasal congestion and sneezing, information about which can be found at the Complainant’s website, “www.allegra.com”.

The Complainant is the owner of the following trademarks and domain names:

NASACORT

NASACORT American trademark n° 1 538 836 registered on May 16, 1989, in class 5 for the products “steroid preparation for the treatment of allergic rhinitis”

NASACORT Community trademark n° 002 303 493 registered on March 4, 2004, in class 5

NASACORT French trademark n° 1 715 384 registered on December 27, 1991, in class 5

NASACORT International trademark n° 587 802 registered on June 25, 1992, in class 5,

NASACORT Canadian trademark n° TMA421499 registered on December 24, 1993, in classes 3, 5, 21 and 31

NASACORT UK trademark n° 1 504 818 registered on December 27, 1991, in class 5

The Complainant has also registered the following domain names:

<nasacort.com> registered on March 8, 1997;

<nasacort.org> registered on November 20, 2001;

<nasacort.net> registered on November 20, 2001;

<nasacort.biz> registered on November 19, 2001;

<nasacort.info> registered on July 31, 2001.

ALLEGRA

ALLEGRA US trademark n° 2 067 728 filed on June 3, 1997 in class 5.

ALLEGRA Canadian trademark n° TMA 492 711 filed on April 9, 1998 in class 5.

ALLEGRA Mexican trademark n° 504 960 filed on August 30, 1995 in class 5.

ALLEGRA Argentinean trademark n° 1 683 128, filed on July 26, 1996 in class 5.

ALLEGRA Brazilian trademark n° 819 351 520, filed on July 31, 1996 in classes 5, 14 and 19.

ALLEGRA South African trademark n° 97/08358, filed on June 4, 1997 in class 5.

The Complainant has also registered <allegra.com> (on June 4, 1998).

All of these trademarks and domain names are widely used by the Sanofi-Aventis group.

On May 1, 2003, the Respondent registered the disputed domain names <allegra-available-online.com> and <nasacort-available-online.com>. The websites to which these domain names resolve contain links ‘Buy Allegra-D’ and ‘Buy Nasacort-AQ’ respectively, which takes the internet user to another site of the Respondent, at “www.pillspillspills.com”, an online pharmacy containing a large selection of drugs.

The websites to which the disputed domain names resolve also contain links - ‘BUY ALLEGRA-D NOW’ and ‘BUY NASACORT NOW’ (found, respectively, on the sites to which the <allegra-available-online.com> and <nasacort-available-online.com> domain names resolve). These links divert the internet user to an online pharmacy called AMERIMED RX on which various drugs are offered for sale, among them Nasacort and Allegra (although the Complainant suggests that Nasacort cannot in fact be ordered on this site).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names incorporate entirely the Complainant’s trademarks and, despite the addition of the words ‘available’ and ‘online’, the disputed domain names are confusingly similar to the Complainant’s trademarks.

The Complainant has no relationship with the Respondent. The Complainant suggests that the Respondent has no legitimate need to use the disputed domain names as he carries out his activities using the domain name <pillspillspills.com>. The Complainant contends that the Respondent therefore has no prior right and/or legitimate interest to justify the use of the Nasacort and Allegra trademarks.

The Complainant also states that the Respondent registered the disputed domain names in bad faith. It contends that the Respondent must have been aware of the Complainant’s trademarks, domain names, websites and drugs (Nasacort and Allegra). Indeed, the websites to which the disputed domain names resolve refer to the Complainant’s trademarks and, on the Respondent’s “www.allegra-available-online.com” site, the packaging of the Allegra product is reproduced. The Complainant says that it is obvious that the intention of the Respondent is to create confusion for the consumers who could believe that there is some form of official affiliation between the Complainant and Respondent, and that the disputed domains are officially recognized or accredited by the Complainant.

The Complainant contends that the disputed domain names are used to attract internet users to the Respondent’s websites in the belief there is a connection with the Complainant and makes reference to the ‘Buy Nasacort –AQ’ and ‘Buy Allegra-D’ links (referred to earlier) directing users to the Respondent’s online pharmacy (at “www.pillspillspills.com”). On this site there is a large selection of other drugs. The Complainant alleges that by registering the domain names in dispute it is clear that the Respondent intended to make use of the well-known character of the Complainant’s trademarks by exploiting user confusion and diverting internet users to his own site (“www.pillspillspills.com”) to generate profit for his own benefit and commercial gain.

The Complainant further contends that the disputed domain names are being used in bad faith relying on the fact that the websites to which the domain names resolve advertise not just Allegra and Nasacort, but provide a list of links to websites promoting other drugs e.g. Viagra.

Moreover, the Complainant contends, that when clicking on the ‘BUY NASACORT NOW’ and ‘BUY ALLEGRA-D NOW’ links (presumably on the websites to which the domain names in dispute resolve), an internet user is diverted to the AMERIMEDRX site on which there is also a variety of other drugs offered (but on which the only drug that cannot be ordered is Nasacort). It is obvious therefore, the Complainant suggests, that the domain name <nasacort-available-online.com> is being used by the Respondent to lead consumers to another site offering to sell a variety of drugs, but without the possibility of Nasacort (the Complainant’s drug) being sold. The Complainant also contends that these links probably provide income to the Respondent and that he failed to respond to a ‘cease and desist’ letter sent in relation to the <nasacort-available-online.com> domain name

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4 (a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is

(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that he has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The disputed domain names incorporate the Complainant’s marks in their entirety and add the words ‘available’ and ‘online’. The disputed domain names also include two hyphens, not used in the trademarks. The suffix ‘.com’ is to be disregarded for comparison purposes. Does the addition of the descriptive words ‘available’ and ‘online’, and the hyphens turn what would otherwise be an identical domain name into one that is not confusingly similar?

In Oki Data Americas, Inc v. ASD, Inc., WIPO Case D2001-0903, it was said ‘As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (“parts” added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v. Off Road Equipment Parts, NAF Case No. FA0008000095497 (“parts” added to mark CAT in <catparts.com>); Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995 (“-parts” added to mark KOMATSU in <komatsu-parts.com>).’

Whilst this Panel is not of the view that the addition of other words in circumstances where the entire trademark has been incorporated in to a disputed domain name can never lead to a finding other than one of confusing similarity, in this case, given the words are merely descriptive (in the case of ‘available’ and ‘online’) and perhaps generic (in the case of ‘online’), and that the hyphens cannot be said to be of much significance, this Panel is satisfied that the additional words and hyphens (over and above the trademark) are not such to avoid a finding that the domain names are confusingly similar to the Complainant’s trademarks, and this Panel so finds.

In fact there would seem to be very close authority for such a finding in the WIPO Domain Name decision of Aventis Pharmaceuticals Inc., Aventis Pharma SA v Goldie Fishero, WIPO Case No. D2004-0094 where the panelist said this: ‘The disputed domain name <cheap-nasacort-on-line.com> contains, in addition to the Complainant’s NASACORT trademark, the word “cheap” and the phrase “on-line.” The first is descriptive of the drug Nasacort while the second is a logical, generic add-on in the context of the Internet. In sum, the Respondent’s disputed domain name is saying the Respondent sells the Complainant’s trademarked drugs cheaply on the Internet.

Other Panels have reached similar results in this fact situation. In one instance where the disputed domain name was <4microsoft2000.com>, the Panel stated: “Therefore, the Sole Panelist finds that the matter in the Domain Name other than the Microsoft mark is non-distinctive and descriptive.” Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

B. Rights or Legitimate Interests

One of the ways in which a respondent may demonstrate its rights to and legitimate interest in a domain name for the purposes of Paragraph 4(a)(ii) of the Policy is to show ‘…….your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;’ Whilst the Respondent has not advanced this argument, or any other given that he has chosen not to join in these proceedings, it is worth ‘testing’ the most obvious argument the Respondent could employ to see whether the Panel is prepared to accept that the Complainant has made out a prima facie case of an absence of rights or legitimate interests, such that the burden of proof shifts to the Respondent to show such rights or legitimate interests. (On the Complainant’s and the Respondent’s burdens of proof in this situation, see Cornell Trading, Inc. v. Web-Interactive.com Inc., WIPO Case No. D2000-0887; and Tremco Incorporated v. IA Consulting, Inc., WIPO Case No. D2003-0997).

The Complainant relies, on amongst other matters, the fact that the Respondent is not an authorized reseller. But this in itself does not necessarily mean that the sale is not bona fide or otherwise proper. More must be shown if a Complainant is to succeed. This area has been recognized by past Panels as difficult but there has emerged a line of authority which provides some guidance.

Thus in the Domain Name Decision of Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, also a case where the domain name owner was not authorized to sell products by the trade mark owner, the Panel said:

‘The extent to which a seller of legitimate goods or services can reflect that fact by using the manufacturer’s name as part of a domain name is a difficult issue. Some uses may be legitimate, others not, depending on the extent to which they accurately reflect the user’s connection with the mark owner (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

In this case, there is no dispute that the websites under the disputed Domain Names offer Porsche goods and services since prior to the commencement of this case. Internet users are invited to view offers for the purchase of used Porsche cars or to place advertisements for the sale of used Porsche cars. The only issue before the Panel, then, is whether the Respondent’s offerings may be characterized as bona fide.

To be bona fide, the offering must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Those include, the following:

- A respondent must actually be offering the goods or services at issue;

- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;

- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;

- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.’

Adopting this criteria, it appears to this Panel that the there is sufficient in the factual matrix to throw the burden of proving rights or legitimate interests (in the disputed domain names) on to the Respondent. In particular, the domain names resolve to websites that advertise drugs not manufactured by the Complainant. Whether there is the prospect for switch selling (because the other drugs may all have a very different purpose) is not discernible from the evidence. But the fact remains – the Respondent has used the domain names in dispute to attract internet users to a site advertising drugs other than those of the trademark owner (as well as those of the trademark owner).

Moreover, it would appear that it is not the sites to which the domain names resolve that are actually selling drugs. These sites contain links to other sites, one of which has a clear connection with the Respondent (“www.pillspillspills.com”). The other is the AMERIMEDRX site at “www.amerimedrx.com”. It would appear therefore that an internet user cannot actually buy Allegra on the site linked to the <allegra-available-online.com> domain name, or Nasacort on the site linked to the <nasacort-available-online.com> domain name.

The other circumstances identified in Paragraph 4(c) of the Policy as indicating rights and legitimate interests e.g. legitimate noncommercial or fair use would not seem naturally to avail the Respondent. Whilst the list of circumstances in Paragraph 4(c) is non-exhaustive, the Respondent has not advanced any argument to support an assertion that he does have a right or legitimate interests in the disputed domain names.

Given the circuitous route an internet user must follow to actually get to a position of being able to purchase the Complainant’s products, (and then perhaps being able to purchase only one of the products reflected in the domain names in issue i.e. Allegra), and the fact that numerous other drugs are advertised on the websites to which the disputed domain names resolve, this Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain names in dispute. The burden to demonstrate such rights or legitimate interests therefore falls on the Respondent. As the Respondent has not come forward with a Response or taken any other action to address the Complaint in any respect, this Panel finds the Complainant has fulfilled the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii) of the Policy, Paragraph 4(b) provides a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.

The Complainant appears to rely on the last of these circumstances– ‘by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location’

There is no relationship between the Complainant and the Respondent. However, this Panel accepts the contentions of the Complainant that there is a likelihood of internet users being confused in to thinking that there is some form of affiliation with or endorsement by the Complainant in relation to the Respondent’s site. Moreover, it appears to be the case that the Respondent is making use of the Complainant’s trademarks by their incorporation into the disputed domain names to attract internet users to sites advertising or selling drugs other than those of the Complainant (i.e. those of competitor companies) in circumstances where a) it is assumed that there is some commercial benefit to the Respondent in doing what he is doing and b), as found by this Panel, he has no rights or legitimate interests in the disputed domain names. For the purposes of the Policy, these circumstances are indicative of both registration and use of the domain names in issue 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, <allegra-available-online.com> and <nasacort-available-online.com>be transferred to the Complainant.

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Jon Lang
Sole Panelist

Dated: January 13, 2007