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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharma Sa v. Daniel Kunkel

Case No. D2008-0638

 

1. The Parties

The Complainant is Sanofi-Aventis, Paris, France; Aventis Pharmaceuticals Inc., New Jersey, United States of America; Aventis Pharma SA, Antony, France, represented by Selarl Marchais De Candй, France.

The Respondent is Daniel Kunkel, Bellevue, Washington, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <nasacortonline.com> is registered with Schlund + Partner.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 24, 2008, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On April 25, 2008, Schlund + Partner transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on April 30, 2008. 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 May 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. The Response was filed with the Center on May 17, 2008.

The Center appointed Knud Wallberg as the sole panelist in this matter on May 28, 2008. 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.

On June 4, 2008, the following Panel Order was issued:

“On May 22, 2008, the Center received the Supplemental filing from the Complainant in this case. On June 3, 2008, the Supplemental filing was brought to the Panel’s attention. With reference to paragraph 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel hereby invites the Respondent to file a reply to the Complainant’s Supplemental filing if it so wishes.

In accordance with the Rules, paragraph 2, any submission made in response to this Procedural Order shall be made in electronic form using the following email address (Domain.Disputes@wipo.int) and, to the extent not possible by e-mail, by fax to +41 22 740 3700, with a copy sent to the other Party.

The reply invited above should be provided by the Respondent to the Center (for forwarding to the Panel) no later than June 11, 2008.

In order to accommodate this Procedural Order, the projected due date for Decision in this matter is hereby extended to June 18, 2008”.

The Respondent did not file further submissions.

 

4. Factual Background

The Complainant Sanofi-Aventis is one of the leading pharmaceutical companies in the world, of which the Complainant Aventis Pharma S.A. is the French subsidiary and the Complainant Aventis Pharmaceuticals Inc. is a US subsidiary. The details of the merger between Sanofi-Synthelabo and Aventis were widely publicized in the business press in 2004 and are therefore known to the Panel. The Complainant Sanofi-Aventis is the result of the takeover of the pharmaceutical company Aventis by the French pharmaceutical company Sanofi-Synthelabo in 2004. The name of Complainant Sanofi-Aventis was adopted by it on August 20, 2004. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in a number of therapeutic areas.

The Complainant is the owner of the trademark NASACORT, which has been registered for goods in international class 5 in several jurisdictions, including in the United States of America.

The Complainant further holds registrations of several top-level domain names incorporating the trademark NASACORT such as <nasacort.com>.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The domain name <nasacortonline.com> reproduces entirely the trademark NASACORT which as itself has no particular meaning and is therefore highly distinctive.

The reproducing of the Complainant’s trademark in its entirety as the first and dominant part of the contested domain name is confusingly similar to this trademark regardless the additional elements.

The only difference between this domain name and the Complainant’s trademark resides in the adjunction of the term “online” placed at the end of the litigious domain name. This additional element is not sufficient to avoid the likelihood of confusion especially since the word “online” is a descriptive, generic add-on in the context of the internet.

The disputed domain name is confusingly similar to the Complainant’s trademark as the suffix is made of a generic and descriptive term, which does not alter significantly the overall impression produced by the disputed domain name. Therefore, the domain name <nasacortonline.com> and the trademark NASACORT are visually and phonetically similar and this creates a risk of confusion.

The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent does not have any legitimate interest to use the domain name <nasacortonline.com> since his name has no resemblance with the word “nasacort”. Therefore, the Respondent has no prior right and /or legitimate interest to justify the use of the trademark NASACORT owned by the Complainant.

Secondly, contrarily to its contentions, the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain names including the above-mentioned trademarks. Therefore when the Respondent claims on its homepage to be “a fully-authorized, independent online pharmacy affiliate and only provides authentic Nasacort® manufactured by Sanofi-Aventis” this is not only untrue but also voluntarily enhances the likelihood of confusion between it and the Complainant.

Consequently, the absence of any permission and the lack of connection between the choice of the domain name <nasacortonline.com> and the Respondent’s website prove that the Respondent has no rights or legitimate interest in respect of the domain name.

The domain name was registered and is being used in bad faith

The website corresponding to the address “www.nasacortonline.com” is allegedly dedicated to Sanofi-Aventis medicine as it is explicitly indicated in a header on the homepage which sets forth: “Welcome to NasacortOnline.com, your source of independent information and feedback about Sanofi-Aventis’ Nasacort® AQ for and by people who suffer with allergies”.

The presence of the trademark notice next to the word Nasacort is evidence that the Respondent was fully aware of the Complainant’s right on the sign NASACORT.

Therefore, the Respondent must have undoubtedly been aware of the Complainant’s trademarks and of the risk of deception and confusion that would inevitably follow when registering the disputed domain name since it could give the impression that his website, and thus even the Respondent himself, were somehow endorsed by the Complainant, when in fact they were not.

The contested domain name was not only registered in bad faith but is also being used by the Respondent in bad faith.

Though the website is “www.nasacortonline.com” indicates to advertise and provide information on Nasacort, it also contains many related and unrelated advertising. For example when clicking on the hyperlink “Buy Nasacort Online” just below the header one is automatically redirected to the website “www.rxhotline.com/product/Nasacort.php” which sells among a large selection of drugs competing anti-allergic products. Moreover, further down on its homepage, the Respondent has placed a hyperlink to another website, “www.relief-allergy.com” (where according to the Respondent “the discussion is much more open”). This hyperlink links to a website which is not only a forum, but also provides two hyperlinks to an online pharmacy at the following website

“www.buy-prescription.com/Allergy/index.php” where again various type of allergy relief medications are offered.

As a result of what precedes it clearly appears that the disputed domain name was without any doubt dedicated to attract Internet users to the website of the Respondent in the belief that it has some connection with the Complainant’s trademarks when in fact there is no such connection.

The Respondent’s bad faith is again at stake when it pretends selling the Complainant’s products. In pretending so it obviously omits the fact that on the right side of the homepage of “www.nasacortonline.com”, the Respondent has set a blue and yellow banner with no less than 37 links to other unrelated websites proposing notably “Funny Dumb Blondes Jokes”, “Natural Therapy” or even “US Bank Credit card”.

In doing so the Respondent is clearly seeking, in using the litigious domain name, to divert Internet users to various websites for its own benefit and commercial gain.

Moreover the advertisements and links proposed on the website “www.nasacortonline.com” would probably generate income for the Respondent dependent on the number of hits that are generate on the website.

B. Respondent

The following has with some minor editing been taken from the Response:

The Respondent acknowledges the Complainant’s interest in the trademark NASACORT and concedes that the domain name is similar.

However, the Respondent is using the trademark in a manner allowed as fair use. The Respondent is using the domain in the transmission of information and treatment alternatives, providing a method to legally acquire the drug online, and as a platform to disseminate information about the drug should it ultimately be learned by the Respondent that Nasacort is dangerous.

The use of the trademarked term is allowable as a nominative fair use for the sale of Complainant’s own product Nasacort AQ which they identify by the term, Nasacort. In US court cases, the court looks at three factors to determine whether the nominative fair use defense is appropriate, namely: 1) The products must not be readily identifiable without use of the mark; 2) only so much of the mark may be used as is reasonably necessary to identify the product; and 3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Further, the text on the website explicitly makes the point that the site is an independent source for the drug, and information about the drug. Furthermore, a disclaimer at the bottom of the page clearly indicates the Sanofi-Aventis as the owner and manufacturer of the product.

Also, the addition of the word “online” in “nasacortonline” is appropriate, and communicates to Internet users that this is a link to purchasing the drug online.

No attempt at selling the domain has been made by the Respondent, nor has the Respondent attempted to prevent Sanofi-Aventis from utilizing their trade name since they already own rights to <Nasacort.com>, <Nasacort.org>, <Nasacort.net>, <Nasacort.biz>, <Nasacort.info>, <Nasacort.us>, etc.

As the Respondent is selling genuine products, there cannot be any confusion about the trademark, since the trademark distinctly represents the Complainant’s product. The text makes it essentially impossible that any online visitor would confuse us for the Complainant.

The Complainant, although being aware of the Respondent’s use of the domain name, has delayed filing a Complaint for at least 2 years since first contacting the Respondent.

The Complainant makes a point that the Respondent is not a directly authorized reseller. The fact is that the Respondent is a fully authorized, independent online pharmacy affiliate. The Respondent has no direct communication or agreements with the Complainant, but instead works with one or more of the Complainant’s pharmaceutical distributors. It is standard business practice that these pharmaceutical distributors distribute the Complainant’s products to legitimate pharmacies. The agreements between the Pharmacies we work with and the Complainant allow for our sub-affiliation status to resell their drug using their trade name. This chain of companies links the Respondent to the Complainant, giving the Respondent a legitimate interest in the name representing the product they sell, and as platform to share information about the drug. Therefore, the Respondent does in fact have a legitimate business reselling the Complainant’s products even though there is not a direct affiliation to the Complainant.

The links from the Respondent’s website, “www.NasacortOnline.com” lead directly to links for the genuine Nasacort product. No links, nor advertising exist on the website NasacortOnline advertise competitive allergy medicine products. The Complainant routinely allows it’s trade name to be advertised alongside other competing products in the course of making sales to end users. A distributor’s use of advertising multiple products is implicitly permitted when it is the trademark holder’s standard practice.

In fact, the Complainant distributors and resellers are encouraged to make sales of it’s products using its trademark. This is in fact core to the Complainant’s method of doing business. In addition, the Complainant has not provided any evidence that it’s business, which actually promotes it’s products, has been disrupted by the Respondent’s activities.

The Respondent respectfully requests that the Panel denies the remedy requested by the Complainant.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(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.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

The contested domain name contains the Complainant’s distinctive and widely known trademark NASACORT in its entirety. Neither the addition of the descriptive suffix “online” as suffix nor the inclusion of the gTLD denomination “.com” alters the fact that the domain name is confusingly similar to the Complainant’s trademark.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

There is no dispositive evidence before the Panel that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.

The Complainant alleges and has made a prima facie showing that the Respondent has no rights in the domain name. The Respondent has not, in this Panel’s view, persuasively rebutted this.

The Complainant further alleges that the Respondent has no legitimate interest in the domain name. The Respondent replies to this by stating that it “is using the domain in the transmission of information and treatment alternatives, providing a method to legally acquire the drug online, and as a platform to disseminate information about the drug should it ultimately be learned by the Respondent that Nasacort is dangerous”.

However, it is clear from corresponding website that it is not only used as indicated, but is also used for selling Nasacort products, cf. the wording: “NasacortOnline.com is a fully-authorized, independent online pharmacy affiliate and only provides authentic Nasacort® manufactured by Sanofi-Aventis”. Further, as the Complainant has pointed out, and which is clear from the content of the website including the many links, the website under the contested domain name contains many related and unrelated advertising including advertising for and links to websites selling also competing products with Nasacort.

In the circumstances, even if the Respondent was authorized by the Complainant or otherwise allowed to sell pharmaceutical products bearing the Complainant’s mark NASACORT, which is a disputed issue in this case, this would not necessarily give the Respondent the right to incorporate this trademark into its domain name. See inter alia Hoffmann-La Roche Inc. v. # 1 Viagra Propecia Xenial & More Online Pharmacy, WIPO Case No. D2003-0793. This is particularly so when the contested domain name is also de facto being used for the sale of other competing products and for matters completely unrelated to the Nasacort product. See to this effect Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. The sale of products other than those of the trademark holder on the website takes this case outside of the ambit in which previous panels have been prepared to find re-seller rights. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.

Given the notoriety of the Complainant’s trademark, the coined nature of the word “nasacort”, and the extensive promotion of the trademark, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark. This seems to be recognized or at least not rebutted by the Respondent in the Response. The Panel notes in this regard that the Complainant’s trademark is registered in the country of residence of the Respondent.

As described above, the disputed domain name is used to not only as informational platform, but is also used for selling Nasacort products, as well as for many related and unrelated advertising including advertising for and links to websites selling also competing products with Nasacort. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. See, inter alia, Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; LґOrйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and Hoffmann-La Roche Inc. v. Online Pharma WIPO Case No. D2006-0628.

The fact that the Respondent has put a disclaimer at the bottom of the corresponding website cannot of itself cure bad faith, when bad faith has been established by the other factors, see inter alia Estйe Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.

Therefore, the Panel finds that the domain name was registered and is being used in bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.

 

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 <nasacortonline.com> be transferred to the Complainant Aventis Pharma SA.

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Knud Wallberg
Sole Panelist

Dated: June 18, 2008