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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis, A. Nattermann & Cie GmbH v. OU Computernik

Case No. D2007-0073

 

1. The Parties

The Complainants are Sanofi-aventis, Paris, France and A. Nattermann & Cie GmbH of Cologne, Germany, both represented by Selarl Marchais De Candй Paris, France.

The Respondent is OU Computernik, Viljandi, Estonia, represented by Gunther Veidenberg.

2. The Domain Name and Registrar

The disputed domain name <essentiale.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2007. On January 19, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. Also, on January 19, 2007, eNom 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 January 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2007. The Response was filed with the Center on January 28, 2007.

The Center appointed David Perkins as the sole panelist in this matter on February 16, 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.

 

4. Factual Background

4.A.1 The Complainants

4.A.1.1 The First Complainant, Sanofi-aventis was formed in 2004 by the merger of Aventis S.A. and Sanofi-Sythelabo. In the Financial Year 2005 Sanofi-aventis achieved sales of Euros 273 billion and spent Euros 4 billion on research development. It employs over 97,000 people worldwide, including a sales force of 35,000 and more than 17,600 research staff. It is the largest pharmaceutical group in Europe and the third largest worldwide with a presence in more than 100 countries.

4.A.1.2 Sanofi-aventis has an established position in key therapeutic fields such as cardiovascular, thrombosis, oncology, diabetes, central nervous system, urology, internal medicines and human vaccines. It currently has 11 products that each generated over Euros 500 million in sales in 2005. It currently has 127 projects under development, of which 56 are at advanced stages and 71 are in pre-clinical development.

4.A.1.3 The Second Complainant, A Nattermann & Cie GmbH of Cologne, Germany is a Sanofi-aventis affiliate.

4.A.2 The ESSENTIALE product

4.A.2.1 ESSENTIALE is a drug developed and sold by the Complainants in the gastro-intestinal field. Its indication is the treatment of liver disorders, particularly as a liver care in chronic diseases. It is a combination of essential phospholipids, notably phosphatidylcholine.

4.A.2.2 The principal market for ESSENTIALE is Eastern Europe, in particular the Ukraine, Kazakhstan, Romania, Poland, the Czech Republic, Slovakia, Estonia, Lithuania, Latvia and Belarus. It is also sold in Germany, India and in China. In some countries it is supplied only by prescription and in others it can be bought over the counter.

4.A.3 The Complainant’s ESSENTIALE trademark

4.A.3.1 The ESSENTIALE trademark is registered in the following countries.

Country	Reg. No.	Mark	Class	Date applied for / Registered
International Registration *	435,496	ESSENTIALE	5	January 7, 1978
Belarus	8,243	ESSENTIALE (in cyrillic characters)	5	January 16, 1996
Bulgaria	29,316	ESSENTIALE	5	January 4, 1996
Bulgaria	29,317	ESSENTIALE (in cyrillic characters)	5	January 4, 1996
Kazakhstan	6,276	ESSENTIALE (in cyrillic characters)	5	January 17, 1996
Russia	151,183	ESSENTIALE	5	December 28, 1995
Tajikistan	3,640	ESSENTIALE (in cyrillic characters)	5	January 18, 1996
Turkmenistan	4,926	ESSENTIALE (in cyrillic characters)	5	August 31, 2000
Turkmenistan	4,931	ESSENTIALE	5	August 31, 2000
Ukraine	31,466	ESSENTIALE	5	November 14, 2000
Ukraine	15,379	ESSENTIALE (in cyrillic characters)	5	February 15, 2005
International Registration **	423,886	ESSENTIALE	5	June 26, 19976

* The countries covered by IR 435,496 are Belarus, Russian Federation, Kazakhstan and the Ukraine. It derives from an originating national registration in the former German Democratic Republic, registration No. 941,946 registered in March 9, 1976.

** The countries covered by IR 423,886 are Austria, Benelux, Egypt, Spain, France, Croatia, Italy, Liechtenstein, Morocco, Monaco, Portugal, Slovenia, Serbia and Montenegro.

These registered trademarks are in the name of the Second Complainant, A Nattermann & Cie GmbH.

 

5. Parties’ Contentions

5.A Complainants

5.A.1 The domain name in issue <essentiale.com> was registered on June 15, 2001. It is identical to the ESSENTIALE trademarks registered in the name of the Second Complainant and set out in paragraph 4.A.3.1 above.

5.A.2 The Complainants’ case is that the Respondent has no rights or legitimate interests in the domain name in issue. First, the Complainants have not licensed or otherwise authorised use by the Respondent of the ESSENTIALE trademark.

5.A.3 Second, the domain name in issue resolves to the “www.essentiale.com” website which links to other websites, including a website promoting the aesthetic products, implants and injectables of Prollenium Medical Technologies, Inc. So, the Complainants say, the Respondent is using their well-known ESSENTIALE trademark to direct users to a site where only products other than Essentiale can be purchased.

5.A.4 The “www.essentiale.com” website also links to another website, “www.legalsteroids.com”. In this respect, the Complainants refer to Sigikid H. Scharrer & Koch GmbH & Others .v. Bestinfo, WIPO Case No. D2004-0990. That case involved the domain name <sigikid.com>. The complainant in that case owned the SIGIKID trademark for plush animals, toys and children’s clothing. The domain name in issue linked to other websites which offered goods and services unrelated to those of the Complainants. The Panel found that this was not use of the domain name in connection with bona fide offering of goods or services. Nor was this a fair use of the domain name, since it was diverting Internet traffic intended for the complainant to quite unconnected websites, which created the impression of association with the complainant.

5.A.5 As to registration in bad faith, the Complainants’ case is that at the date when the domain name in issue was registered (June 2001) the Respondent – whose address is in Estonia – must have been aware of the Complainants’ ESSENTIALE product. This is because the product has been one of the most prescribed pharmaceutical agents in Western and Eastern Europe for the past 20 years. Sanofi-aventis has a presence in the city of Tallinn, Estonia. Further, the ESSENTIALE product has been extensively advertised in Estonia where it (currently) has a 66% share of the market for products treating liver disorders, ahead of its competitor products CARSIL (31%) and CHOLOSAS (2$).

5.A.6 As to use in bad faith, the Complainants rely on the fact that the website to which the domain name in issue relates – “www.essentiale.com” only sells the Complainants’ ESSENTIALE product but also links to other websites selling unrelated products quite unconnected with the Complainants: see, paragraphs 5.A.3 and 5.A.4 above. This the Complainants say, is conduct falling fair and square within paragraph 4(b)(iv) of the Policy. Further, the Complainants’ point to the risk that confused Internet users may purchase such other products – for example, anabolic steroids – for use in liver treatment and, vice versa.

5.A.7 In this respect, the Complainants refer to Sanofi-aventis and Aventis Pharma S.A. .v. Advent Innovations [WIPO Case No. D2005-0377]. That case involved the domain names <aventiservices.com> and <aventisolutions.com>, which resolved to websites having links to other sites relating to tourism, travel, financial planning, business and finance, healthcare, health and beauty, and sports tickets. In holding use in bad faith of the AVENTIS trademark, the panelist said:

5.B. Respondent

5.B.1 The Respondent says he has owned the domain name since 2001 and knows nothing about the pharmaceutical product, essentiale.

5.B.2 The Respondent says that the website to which the domain name resolves has always been used as a “generic parking page”, which has never been restricted to offering only pharmaceutical products.

5.B.3 The Respondent points to third party products, including Opel cars, which can be reached by linking from the website “www.essentiale.com” to the website “www.domeen.org/opel.jpg”.

5.B.4 The Respondent also refers to registered trademarks in the United States of America which include the mark, ESSENTIALE. Those cited are US1,786, 204 CLUB ESSENTIALE in the name of [G&G Retail Inc]: US1,400,065 MARLYN ESSENTIALE (which the Panel has been unable to locate on the website of the Patent and Trademark Office of the United States of America) and US0,894,923 ESSENTIALE 303 NATTERMANN (which again the Panel has been unable to locate but which is presumably in the name of the Second Complainant). In the circumstances, the Respondent submits that the Complainants cannot have exclusive rights to the ESSENTIALE trademark. In that respect, the Respondent cites WWF-Worldwide Fund for Nature .v. Moniker Online Services LLC, WIPO Case No. D2006-0975. That case involved the domain name <wwf.com>. The Respondent states that there was conflicting evidence as to whether, at the time he acquired the domain name, the second respondent in that case, Mr. Ricks, was aware that the trademark rights in WWF really belonged to the Complainant. Because the panel took the view that such a dispute could only be resolved by a court after hearing evidence, it declined to find that the domain name had been registered in bad faith.

5.B.5 Addressing paragraph 4(c) of the Policy, the Respondent’s case is that his case meets all the circumstances in paragraph 4(c)(i) to (iii) of the Policy and, consequently, that he has rights to and legitimate interests in the domain name in issue.

5.B.6 Addressing paragraph 4(b) of the Policy, the Respondent’s case is that the Complainants cannot establish any of the circumstances in paragraphs 4(b)(i) to (iv) of the Policy and, consequently, are unable to demonstrate registration and use in bad faith.

 

6. Discussion and Findings

6.1 The Policy paragraph 4a of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 Paragraph 4c of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

A. Identical or Confusingly Similar

The Second Complainant has established rights in the ESSENTIALE trademark. It is the registered proprietor of that trademark. It is irrelevant for the purposes of the Policy that parties other than the Complainants may be the registered proprietors of trademarks including ESSENTIALE as a component of a registered trademark. In fact, of the three such trademarks referred to in the Response, one appears to be owned by the Second Complainant.

6.4 The domain name in issue is, but for the “.com” suffix, identical to the ESSENTIALE trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.5 Rights to and Legitimate Interests in the domain name

The Complainants have not licensed or otherwise authorized the Respondent to use the ESSENTIALE trademark. That fact is not challenged by the Respondent.

6.6 The question is whether the Respondent’s conduct falls within paragraph 4(c) of the Policy. As to paragraph 4(c)(i) the evidence is compelling that the Complainant’s ESSENTIALE pharmaceutical product was well known in the Respondent’s country of residence, Estonia, well before the domain name in issue was registered in June 2001: see, paragraph 5.A.5 above and the fact that ESSENTIALE has been sold in countries of the former Soviet Union, of which Estonia was a part, since 1978 (paragraph 4.A.3.1 above]. On the balance of probabilities, it is simply not credible that the Respondent could have been unaware of the Complainant’s product prior to receiving notice of this dispute.

6.7 As to paragraph 4(c)(ii), other than a bare assertion, there is no evidence that the Respondent, OU Computernik or its authorized representative, Mr. Veidenberg, have been commonly known by the domain name.

6.8 As to paragraph 4(c)(iii), the evidence is that the domain name resolves to a website which offers, inter alia, a number of medicinal products as well as the Complainants’ ESSENTIALE product for the treatment of liver disease. For example, medication for Parkinson, growth hormone and anabolic steroids. It also links to sites offering such products and other products, for example OPEL motor cars.

6.9 This is not denied by the Respondent. Indeed, the Respondent refers to its use as a “general parking page” from which a variety of products and services, including pharmaceuticals, can be accessed directly and by hyperlinks. The issue, therefore, is whether such use is a fair use of the domain name in issue. Certainly, there is no issue that the domain name has been used by the Respondent for commercial gain.

6.10 The decision in Sigikid H. Scharrer & Koch GmbH & Others .v. Bestinfo, WIPO Case No. D2004-0990 to which the Complainants refer [see, paragraph 5.A.4 above] is by no means the only decision under the Policy where use of the complainant’s trademark to direct Internet users to the goods and services of third parties has been held not to constitute fair use. See, for example Amphenpol .v. Applied Interconnect, WIPO Case No. D2001-0296 and the second requirement in Oki Data Americas Inc .v. ASD Inc, WIPO Case No. D2001-0903. In the same way, this Panel takes the view that the Respondent’s use of the domain name in this case is not fair use within paragraph 4(c)(iii) of the Policy.

6.11 In the circumstances, the Panel takes the view that the Respondent has failed to show rights to or legitimate interests in the domain name in issue. Consequently, the Complainants meet the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.12 As to registration in bad faith, the Panel repeats its conclusions in paragraph 6.7 above. The Complainants’ ESSENTIALE pharmaceutical products had been advertised and sold in Estonia for very many years before the domain name in issue was registered in June 2001. It is, from its indication, by far the biggest selling liver treatment product on the market in the country.

6.13 With regard to the aforementioned WWF Case upon which the Respondent relies, the decision in that case on registration in bad faith turned, in this Panels view, on the particular chain of events which applied to the <wwf.com> domain name. Comparable facts do not arise in this case. The similarity between the two cases is the length of time between registration of the domain name in issue and the Complaint. In this case, a period of some five and a half years. There is, as the panel in the WWF Case held no time limit for filing a Complaint under the Policy, nor does the equitable doctrine of laches have any place in the Policy. However, it is to be regretted that trademark owners are not more vigilant in promptly protecting their trademarks against unauthorized use in domain names and in this particular case one is left to wonder why Sanofi-aventis failed to take action many years ago.

6.14 The five and a half year delay does not, however, preclude a finding of registration in bad faith. Here, the Panel is not convinced by the Respondent’s denial that it had no knowledge of the ESSENTIALE trademark before being put in notice of this dispute. For the reasons stated in paragraph 6.7 above, the Panel finds that the domain name was registered in bad faith.

6.15 As to use in bad faith, the issue is whether the Complainants’ case succeeds under paragraph 4(b)(iv) of the Policy. This ground is, essentially, the obverse of paragraph 4(c)(iii). Indeed, the evidence supporting a holding that the Respondent lacks rights to or legitimate interests in the domain name in issue is commonly of equal application when finding bad faith use. This case is no exception. The Respondent’s bare denial (see, paragraph 5.B.6 above) is not enough.

6.16 Certainly, the Respondent’s use of the domain name in issue is, by his own admission, for commercial gain. That on its own is quite legitimate and not a breach of the Policy. However, by using the Complainant’s ESSENTIALE trademark to attract Internet user’s to the website to which the domain name resolves and to other websites by hyperlink – which offer goods and services quite unconnected with that trademark – the Respondent is trading off that trademark to the detriment of that mark. Such is not good faith use. Further, where such trademark misuse occurs, inevitably it creates a likelihood of confusion of the types set out in paragraph 4(b)(iv) of the Policy.

6.17 In the circumstances, the Panel holds that the domain name in issue has been registered and is being 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 <essentiale.com> domain name be transferred to the Complainant.

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David Perkins
Sole Panelist

Dated: March 5, 2007