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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis, Aventis Pharmaceuticals Holdings Inc., Aventis Pharma S.A. v. Secure Whois Information Service

Case No. D2006-1658

 

1. The Parties

The Complainants are Sanofi-Aventis, Paris, France, Aventis Pharmaceuticals Holdings Inc., Greenville, the United States of America and Aventis Pharma S.A, Antony, France (collectively, the “Complainant”) represented by Selarl Marchais De Candй of Paris, France.

The Respondent is Secure Whois Information Service, Denver, Colorado, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <globalrx-nasacort-pills.com> (the “Domain Name”) is registered with Spot Domain LLC doing business as Domainsite.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2006. On December 29, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 26, 2007, after multiple reminders from the Center, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was 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 January 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2007.

The Center appointed William P. Knight as the sole panelist in this matter on March 2, 2007. 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.

Sometime after panel appointment, the Registrar indicated that a privacy arrangement was in place and that it had mistakenly failed to provide to the Center the name of the beneficial registrant, whom it would be contacting in relation to the proceedings. No further communications have been received from the Registrar or the beneficial registrant. In the circumstances, it is clear that these proceedings have been properly initiated under the Rules and the claimed beneficial registrant may be deemed included in the Respondent. See, for example, TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 and WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975. The Panel adds here that, where privacy services are increasingly emerging as the norm, for the Policy to operate effectively, providers and panels (if not rights owners) need to be able to rely on the accuracy of information provided by registrars particularly in response to direct queries. Where such requested information is not forthcoming, or is inaccurate or received only very late in the process, these are matters between the listed and confirmed registrant of record and any underlying or beneficial owner.

 

4. Factual Background

The current registration of the Domain Name dates from April 23, 2006.

The Complainant is a very large, multinational group, form of a number of predecessor groups which have traded for many decades. The Complaint asserts and provides supporting information that it is the owner of the trademark NASACORT in many other countries, dating back to at least 1989, in relation nasal spray for the treatment of allergic rhinitis by the introduction of a steroid, supplied on prescription only. The Complainant is the owner of the following registered trademarks in respect of NASACORT in class 5, at least:

(a) US registered trademark No. 1,538,836, registered on May 16, 1989;

(b) Community trademark No. 002 303 493, registered March 4, 2004;

(c) French trademark No. 1 715 384, registered on December 7, 1991;

(d) Canadian trademark No. 421499, registered on December 24, 1993; and

(e) UK trademark No. 1504818, registered on December 27, 1991.

The Complainant is the owner of several domain names containing the word “nasacort” namely:

<nasacort.com> registered March 8, 1997;

<nasacort.org> registered November 20, 2001;

<nasacort.net> registered November 20, 2001;

<nasacort.biz> registered November 19, 2001;

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

<nasacort.us> registered on April 19, 2002.

The Respondent appears to be a service provider upon whose business an earlier Panel has commented in Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

The Domain Name is being used in a manner which, by means of several links using the word “nasacort” as well as other, related words such as “Online Drug”, “Prescription Medication”, “Prescription Drug”, and “Online Pharmacy” the user is taken through a maze of other links, some with further references to “nasacort”, which either lead to providers of online medicines, some which bypass the need for prescriptions, but none of which lead to the Complainant.

 

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:

(i) that the Domain Name is confusingly similar to the Complainant’s registered trademarks; and

(ii) that the Respondent 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.

In respect of (i) and (ii), in addition to the undisputed international reputation of the Complainant in the trademark NASACORT, the Complainant points out that the “pills” suffix is descriptive, in English, for medications – even though, paradoxically, the Nasacort medication produced by the Complainant is a nasal spray – and likewise the prefix, so far as it includes the word “global” which simply suggests worldwide or international and so far as it includes “rx” is no more than an abbreviation commonly used to indicate pharmaceutical prescriptions.

The Complainant refers the Panel to earlier decisions Oki Data Americas Inc v. ASD Inc. WIPO Case No D2001-0903 and Harrods Ltd v. AB Kohler & Co, WIPO Case No. D2001-0544 and Sanofi-aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377 which are among many to find that the mere addition to a well-known trademark of a descriptive or generic word (“parts” to “Oki”, “watch” to “Harrods” and “services” to “Aventis”, dropping the additional ‘s’) does nothing to distinguish a domain name. The Complainant also refers to the decision in Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094 which concerned the domain name <cheap-nasacort-on-line> (which in turn refers to Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493) which gives examples of preceding as well as succeeding words also failing to distinguish a domain name. The Complainant states that the expression “globalrx” appears to be widely used to refer to international offerings of pharmaceutical products.

The only apparent purpose and use of the Domain Name is to point to a website which, in the main, directs users to suppliers of drugs with and without prescriptions, including, it appears, Nasacort itself, but also supposed copies of the Nasacort product of uncertain provenance, formulation and efficacy. The Respondent, being of course a proxy registration service provider of some kind, obviously has no legitimate of any kind in the Domain Name other than as such.

In support of (iii), the Complainant asserts that registration and use in bad faith is evidenced by the fact of the Respondent must have registered the Domain Name in circumstances where it knew full well of the Complainant’s legal rights to the trademark NASACORT and intended to exploit that by selling click-through to on-line suppliers of pharmaceutical products, including some so-called ‘generic’ products offered as alternatives to Nasacort, as well as other products and services. The Complainant relies upon an email written by it to the Respondent dated August 11, 2006, at its contact address, drawing to the Respondent’s attention the Complainant’s concern and seeking resolution. The Complainant did not receive the courtesy of any reply at all, let alone an explanation.

B. Respondent

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

 

6. Discussion and Findings

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.

However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if the Respondent had chosen to take advantage of the opportunities afforded to it, expressly, by paragraph 4(c) of the Policy.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent. See Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v.Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011 among numerous other decisions.

A. Identical or Confusingly Similar

It is clear that the Complainant is the owner of the NASACORT trademark, through registration of the trademarks and use throughout the world.

For the reasons proposed by the Complainant and set out above, the Panel agrees that the mere addition of a generic word before and/or after a complainant’s trademark will not be sufficient to distinguish the disputed domain name if the dominant impression given by the disputed domain name remains the complainant’s trademark, as in this case.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark NASACORT and, accordingly, Policy paragraph 4(a)(i) is satisfied in this case.

B. Rights or Legitimate Interests

The Respondent was entitled, and had every opportunity, to demonstrate that it had some right or legitimate interest with respect to the Domain Name. The Respondent has given no such explanation.

The only use that has been made of the Domain Name has been to attract Internet users who might be interested in the supply of the Complainant’s product away from the Complainant on a pay-per-click basis, in some cases to suppliers of drugs of uncertain provenance, formulation and efficacy.

The Panel, therefore, agrees with the Complainant’s submission that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the Domain Name has been registered and used in bad faith. This issue has been dealt with in earlier decisions under the Policy, notably Telstra Corporation Ltd v. Nuclear Marshmallows WIPO Case No. D2000-0003; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423 and Red Nacional De Los Ferrocarriles Espanoles v.Ox90, WIPO Case No. D2001-0981.

So far as concerns the first limb of this requirement, registration in bad faith, since this is a case in which:

(a) the Respondent registered the Domain Name in circumstances where it must have been aware of the pre-existing rights of the Complainant;

(b) there is virtually no commercial use which could be made of the Domain Name which would not infringe the legal rights of the Complainant and be misleading and deceptive upon the public; and

(c) if the Respondent had any intention to make some legitimate use of the Domain Name, it has had ample opportunity either to do so or otherwise to explain its conduct, but has done neither.

Based on the foregoing this Panel concludes that the Respondent registered the Domain Name with bad faith, in the sense required by the Policy.

Turning now to the second limb of this requirement, “use in bad faith”:

(a) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its registration as a trademark and use in many countries;

(b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name, and its present use is plainly intended to attract Internet users interested in the Complainant’s product to various suppliers of pharmaceutical and other products, often not offering the Complainant’s product at all;

(c) the Respondent has not responded to the email sent to it on August 11, 2006; and

(d) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

The Panel therefore concludes that the Respondent has registered and is using the Domain Name in bad faith.

 

7. Decision

In the light of the findings in paragraph 6 above, the Panel concludes that:

- the Domain Name is confusingly similar to the trademark NASACORT belonging to the Complainant; and

- the Respondent has no rights or legitimate interests in the Domain Name; and

- the Domain Name has been registered and is being used in bad faith.

Accordingly, the Panel orders in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the Domain Name <globalrx-nasacort-pills.com> be transferred to the Complainant.

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William Peter Knight
Sole Panelist

Dated: March 26, 2007