The Complainants are Sanofi-Aventis of Paris, France and Aventis Pharmaceuticals Inc. of New Jersey, United States of America. The Complainants are represented by Selarl Marchais De Candé, France.
The Respondent is Gervais Frechette of New York, United States of America.
The disputed domain name <sculptranewyork.com> is registered with Go Australia Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2009. On May 20, 2009, the Center transmitted by email to Go Australia Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 20, 2009, Go Australia Domains, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for a Response was June 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 2, 2009. 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.
The first Complainant, Sanofi-Aventis, is one of the largest pharmaceutical groups in the world, with consolidated net sales of 28 million Euros in 2007 and some 4,500 Euros billion in research and development expenditure.
Sanofi-Aventis offers a wide range of patented prescription drugs, mainly in the fields of cardiovascular diseases, thrombosis, metabolic disorder, oncology, central nervous system, internal medicine and vaccines.
The second Complainant, Aventis Pharmaceuticals Inc., is an affiliated company of the first Complainant, Sanofi-Aventis.
The Complainants developed and sold throughout the world a drug for restoration and/or correction of the signs of facial fat loss (lipoatrophy) for people with human immunodeficiency virus or cancer, under the name of “Sculptra”.
The Complainants have registered in the name of the second Complainant, Aventis Pharmaceuticals Inc., multiple trademarks around the world that are consisting of the wording “Sculptra”. For example, US trademark registration No. 3056196 for the SCULPTRA trademark with the filing date of June 25, 2003, Australian trademark registration No. 987968 for the SCULPTRA trademark with the filing date of February 6, 2004, UK trademark registration No. 2355273 for the SCULPTRA trademark with the filing date of February 6, 2004, Hong Kong SAR of China trademark registration No. 300154160 for the SCULPTRA trademark with the filing date of February 6, 2004 and many others around the world.
The Complainants have also registered in the name of the second Complainant, Aventis Pharmaceuticals Inc., multiple domain names that are consisting or including of the wording “Sculptra”. For example, <sculptra.com>, <sculptra.us>, and <sculptra.co.uk>.
The Respondent registered the disputed domain name <sculptranewyork.com> on July 21, 2008. The disputed domain name is used as a parked webpage with commercial links referring to beauty treatments.
The Complainants argue that the disputed domain name is identical or confusingly similar to the trademarks owned by the Complainants, seeing that it incorporates their trademark as a whole. The Complainants assert that the addition of the geographical datum point in the disputed domain name is irrelevant and should be ignored through the assessment of the similarity between the disputed domain name and the registered trademarks owned by the Complainants.
The Complainants further argue that they have exclusive rights to the SCULPTRA trademark and that this trademark is widely recognized with the Complainants and the Complainants' operations. Furthermore, the Complainants argue that they have not permitted the Respondent to register the disputed domain name.
The Complainants further argue that the Respondent registered the disputed domain name in bad faith, with the intent to divert Internet users from the Complainants' products and services and create a likelihood of confusion.
The Complainants further argue that the Respondent was aware of their existence and to their SCULPTRA trademark and products at the time he registered the disputed domain name.
The Complainants further argue that the Respondent is deliberately trying to gain unfair benefit of the Complainants' reputation by using the SCULPTRA trademark to divert Internet users to a parked webpage with commercial links referring to beauty treatments.
For all of the above reasons, the Complainants request the transfer of the disputed domain name.
The Respondent did not reply to the Complainants' contentions.
Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
A registered trademark provides a clear indication that the rights in the term shown in the trademark certificate belong to its respective owner. The SCULPTRA trademark is registered in the name of the Complainants in various jurisdictions around the world. For example, US trademark registration No. 3056196 for the SCULPTRA trademark with the filing date of June 25, 2003, Australian trademark registration No. 987968 for the SCULPTRA trademark with the filing date of February 6, 2004, and many others.
The disputed domain name <sculptranewyork.com> differs from the registered SCULPTRA trademarks only by the additional geographical datum point – New York.
The domain name <sculptranewyork.com> integrates the Complainants' trademark SCULPTRA in its entirety with a geographical location of the city – New York, as a suffix. Previous UDRP panels have held that an additional geographical datum point, or indication, in the disputed domain name that is absent from the registered trademark, is to be ignored in the assessment of similarity between the disputed domain name and the trademark at hand. See e.g. Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522.
“The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainants have shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainants have rights.
Once the Complainants establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii) and 2.1 of the WIPO Overview of WIPO Panel Views On Selected UDPR Questions).
In the present case the Complainants allege that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds the Complainants have established such prima facie case inter alia due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the SCULPTRA trademark. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainants must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides illustrative circumstances that may prove bad faith under paragraph 4(a)(iii).
It is suggestive of the Respondent's bad faith that the trademark of the Complainants was registered long before the registration of the disputed domain name. The Complainants submitted evidence, which show that the Complainants' trademark SCULPTRA is registered and is known in the healthcare and pharmaceutical industry and that its trademark would be recognized publicly.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other online location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainants' mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
A review of the website operating under the disputed domain name indicates that the disputed domain name is resolved to a parked webpage, having sponsored links, and referring to a GoDaddy.com search page. This service is likely to create confusion as to the source, sponsorship, affiliation or endorsement of the web site with those of the Complainants'.
Further review of the parked webpage operating under the disputed domain name indicates that the parked webpage also comprises of commercial links referring to beauty treatments, similar to the ones provided by the Sculptra product. Such use of the disputed domain name is clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainants and of the SCULPTRA trademark and product with the intent of operating a webpage which increases the likelihood that Internet users would be confused and identify the Respondent as either the source or associated with the Complainants, and constitutes bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
As noted, the disputed domain name is being used by the Respondent in connection with the offering of information regarding beauty treatments that are associated with the Sculptra product. Internet users are likely to be confused as to the source of the information on the web site and associate the web site and links available therein with the Complainants. Such use demonstrates bad faith.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sculptranewyork.com> be transferred to Aventis Pharmaceuticals Inc.
Jonathan Agmon
Sole Panelist
Dated: July 13, 2009