WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA

Case No: D2002-0290

1.1 The Complainants ("Complainant") in this administrative proceeding are AVENTIS Pharma SA, 20, avenue Raymond Aron, 92160 ANTONY – France and Merrell Pharmaceuticals Inc., 2110 East Galbraith Road, Cincinnati Ohio, 45215–6300, United States of America.

1.2 The Respondent in this administrative proceeding, according to the WHOIS database, is Rx USA, 38-38 13 Street, Long Island City, NY 11101, United States of America.

2.1 The Domain Names which are the subject of this dispute, are <anzemet.net> and <taxotere.net>.

2.2 The Domain Names are registered with TUCOWS, Inc., 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada.

3.1 The Complaint was initially filed electronically on March 27, 2002, and a hard-copy of the Complaint filed on April 4, 2002.

3.2 On March 27, 2002, an electronic communication was received by the Center from Respondent, followed on April 25, 2002, by the Respondent’s Response filed by e-mail with a hardcopy filed on April 30, 2002.

3.3 On April 3, 2002, the WIPO Arbitration and Mediation Center ("the Center") transmitted via e-mail a request for registrar verification to Tucows, Inc. in connection with this case. The Center received a verification response from the Registrar that same day.

3.4 Notification of Complaint and Commencement of Administrative Proceeding was sent to Respondent by the Center on April 8, 2002.

3.5 The Complainant elected to have the dispute decided by a single-member Administrative Panel.

3.6 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).

3.7 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00 has been made, payable to World Intellectual Property Organization.

3.8 The Complainant agreed that its claim and remedies concerning the registration of the Domain Names, the dispute, or the dispute’s resolution shall be solely against the Domain Names holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.

3.9 In accordance with paragraph 15 of the Rules, the single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and was duly appointed on May 13, 2002. The Panel was required to forward its decision to the Center by May 27, 2002

3.10 The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

4.1 Complainant, AVENTIS PHARMA SA (formerly RHONE-POULENC), says that it is a leader among pharmaceutical companies and offers a wide range of patented prescription drug to treat patients with serious diseases and in this regard has leading positions in a number of therapeutic areas, including respiratory/ allergy, cardiology/thrombosis, oncology and diabetes. In the field of oncology, Complainant has developed and sells throughout the world under the trademark Taxotere, a drug which has demonstrated an impressive tumour response rate in metastatic breast cancer as well as prolonged patient survival.

4.2 The Complainant, MERRELL Pharmaceuticals Inc is an affiliate of AVENTIS PHARMA SA and also one of the leaders of the pharmaceutical branch. It offers under the trademark ANZEMET a drug indicated in the prevention of nausea and vomiting due to chemotherapy and other cancer treatments. Material information related to TAXOTERE and ANZEMET products are available on the web sites <www.anzemet.com> and<www.taxotere.com>., which have been visited by this Panel.

4.3 AVENTIS Pharma SA is the owner of "TAXOTERE" trademarks, as follows:

- Canadian Trademark n° TMA390178 registered in 1991

- US Trademark n° 1999459 registered in 1996

- French Trademark n° 94 519 486 registered in 1994

- International Trademark n° 549018 registered with the WIPO in 1990

Copies of these registration details were annexed to the Complaint.

4.4 Merrell Pharmaceuticals Inc is the owner of the ANZEMET trademarks as follows:

- Canadian Trademark n° TMA488998 registered in 1998

- US Trademark n° 1863035 registered in 1994

- French Trademark n° 92448183 registered in 1993

Copies of these registration details were annexed to the Complaint.

4.5 All of the trademarks, as above, are registered and used widely by the Complainant in connection with class 5 of the international classification, i.e. pharmaceutical products.

5.1 The Complainant asserts that the Respondent registered on September 6, 2000 the Domain Names in issue here, <taxotere.net> and <anzemet.net>, in respect of which the Respondent has no rights nor legitimate interests insofar as they are strictly identical to the trademarks TAXOTERE and ANZEMET respectively owned and widely used by the Complainant.

5.2 Complainant asserts that "It is obvious that the two litigious domain names were registered with bad faith by RX USA" and in support thereof says that as a professional of the pharmaceutical market Respondent was aware of the existence of the above mentioned pharmaceutical products and trademarks.

5.3 Further, it is asserted that the Respondent "was undoubtedly aware at the moment of the registration of the said domain names of the existence of the drugs named TAXOTERE and ANZEMET respectively developed and sold by the Complainant, along with the trademarks as above, and the registration by Complainants of the domain names <taxotere.com>, <taxotere.org>, <anzemet.com> and <anzemet.org>, on which the Complainant presents its products. Thus, the Respondent has intentionally attempted to benefit from Complainant’s trademarks by registering and commercially using the Domain Names in issue, thereby intentionally attempting to attract for financial gain, Internet users to the registrant’s web site 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 the registrant’s web site or location or of a product or service on the registrant’s web site or location.

5.4 The Complainant further asserts that the Respondent has registered the two Domain Names for the purpose of selling them to the owners of the above-mentioned trademarks for valuable consideration in excess of the Domain Name registrant’s out-of-pocket costs directly related to the Domain Name. In support of this, the Complainant refers to a series of communications between the attorneys for AVENTIS Pharma SA and the Respondent commencing with a cease and desist letter of 16 November, 2001, and culminating with an e-mail communication on behalf of the Respondent of 30 November, 2001, in which the Respondent says "We would entertain the sale of the 2 sites/names. Our asking price for each site would be $100,000 each, of course subject to working out appropriate releases and contracts acceptable to both sides."

5.5 Respondent accepts the accuracy of the Complainant’s assertions as to their ownership and use of the trademarks in question here, and referred to in paras. 4.3 and 4.4 above, and also admits that it maintains the web-sites associated with the Domain Names in question in this matter, "offering some products for sale at discounted prices."

5.6 Respondent disputes the Complainant’s contention that RX USA has no rights to the Domain Names in issue, "as they are used for the purpose of selling Taxotere and Anzemet manufactured by the Complainant."

5.7 The Respondent "vigorously disputes bad faith" in that it is a licensed pharmacy, authorized to sell Complainant’s products, among other things, and is legitimately referring to the products for sale by their brand names. It does not assert any sponsorship or affiliation with AVENTIS or its subsidiaries other than the fact that they manufactured some of the products for sale, in compliance with all applicable rules and regulations, by Respondent. The Respondent asserts that there is no question of passing off, as the products for sale are those of the Complainant, sold under the brand name trademarked by the Complainant, and correctly referred to by said brand name. Furthermore, nothing the Respondent has done constitutes bad faith, passing off, or trademark infringement, or creating confusion as to source, or harms the goodwill of Complainant’s trademark.

5.8 The Respondent says that it registered the Domain Names in question for the purpose of providing information on and selling pharmaceutical products. The offer to sell domain names was made after RX USA was approached by AVENTIS, asking for alternatives to litigating the trademark issue. At no point did RX USA intend to register the Domain Names in question for the purpose of selling them to AVENTIS. RX USA merely offered them for sale in an effort to reach an amicable resolution, reflecting the development costs, marketing effort, and sales generated by RX USA’s legal and legitimate offering of the prescription drugs, purchased through legal wholesale channels in the United States of America, which AVENTIS has not been willing to do. The price, says the Respondent, was determined by a fair estimate of impact on future sales, combined with expenditures for establishing and developing the Domain Names in question, which became active September 6, 2000, and were maintained and operated for over a year for the stated purpose of retailing Complainant’s products before AVENTIS contacted RX USA on November 23, 2001. The offer, solicited by AVENTIS as an alternative to this litigation, says the Respondent, was not made until a week later on November 30, 2001, after a dialogue between the parties, and was intended as an offer to resolve the situation in a manner acceptable to both parties. In fact, says the Respondent, the offer was made in response to Complainant’s request for possible resolutions to the situation. Indeed, the Respondent takes umbrage with the Complainant’s allegation that the sale of the names was the original purpose for registering them, and says that such allegation "smacks of deceit and manipulation", and "such conduct would be a violation of evidentiary and procedural rules and would expose the Complainant to sanctions by the Court" in the U.S.

5.9 According to the Respondent, "[t]he central issue in this case is whether the goodwill surrounding Complainant’s trademark has been damaged by Respondent’s use of the domain names <taxotere.net> and a<nzemet.net>." According to the Respondent, "[t]he purpose of trademark law has been to allow easy identification of a product, thereby protecting the goodwill associated with a brand name." Further, the Respondent says that trademark law exists to protect the consumer by preventing the passing off of one product in the place of another, which was not done in this case. Nor, asserts the Respondent, was there any tarnishment of the marks.

5.10 The Respondent goes on to say:

5.11 While RX USA does not buy directly from AVENTIS, the medications are obtained through legitimate wholesalers in the US, and are legally distributed through RX USA’s web site, and locally to pharmacies in the area. There is no issue of passing off, as the product in question is the Complainant’s product. As to confusion regarding the source, the ultimate source is indeed the Complainant. It should be noted as well that AVENTIS is not legally able to sell directly to the consumer in the United States, the market which RX USA sells to. As a result, any Taxotere or Anzemet will have been purchased for resale from a wholesaler, who originally purchased from AVENTIS.

5.12 The web site clearly states that RX USA is a New York State licensed pharmacy. Respondent is using the web sites in question to dispense Taxotere and Anzemet manufactured by the Complainant. The Respondent uses the brand name to indicate what products are being offered for sale and that they are in fact "brand" names, not "generic" equivalent drugs.. The trademark, used to identify source and quality, is being legitimately used in the course of commerce. RX USA at no time represents any affiliation or endorsement by Aventis, or any subsidiary. RX USA uses the names Taxotere and Anzemet to indicate what products are offered for sale.

5.13 In response to the allegations by the Complainant that the Respondent registered the Domain Names and is using them for the purpose of selling the names in question to the Complainant, that it has been operating the sites in question for 13 months prior to Complainant raising the issues until the Respondent was approached by Complainant, with the sale offer in question being made only as a settlement offer. Respondent states that RX USA would prefer to keep the Domain Names and continue using them for the legitimate purpose for which they were registered.

5.14 The Respondent says "[w]hile Complainant does have intellectual property rights in the trademark, these do not include the right to unilaterally prevent use by a subsequent purchaser of their product at any time. … The case at hand is simply not a case of cyber squatting. To order transfer of the domain names in question would run contrary to established trademark law, and grant the Complainant rights it does not have under established principles of trademark law, and deny a legitimate online Pharmacy the due process property right for legitimate compensation for the intellectual property created by Rx USA’s efforts." Furthermore, the Respondent provides attachments showing dozens of sites containing the words "Taxotere" and "Anzemet". The site specifically states that their exists no association with AVENTIS, other than the Complainant being the source of manufacture of certain products.

5.15 The Respondent asserts that there is no question of confusion of source, sponsorship, affiliation, or endorsement regarding the web site in question as it specifically states that there exists no association with AVENTIS other than the company being the source of manufacture of certain products.

5.16 Subject to the request by the Complainant for a Supplemental Filing, mentioned below, the Panel has not received any other requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

As preliminary matter, subsequent to receiving this file by electronic means and in hard copy, this Panel was advised that a Supplemental Filing had been received by the WIPO Center on May 22^nd, 2002, by e-mail. Complainant’s attorneys were advised that the Administrative Panel would be informed of the fact of the Center’s receipt of this Supplemental Filing and that it would be in the sole discretion of the Panel to determine whether to admit and consider the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any. This Panel has not seen the Supplemental Filing as it is satisfied that it is able on the material available to make a decision without any further submissions.

6.1 The Domain Names are identical to the Complainant’s trademarks, and the Respondent does not dispute this.

6.2 It has been held by previous Panels that, while a Respondent is permitted to use any trademark as a means of indicating the goods being sold by it, this is a non-exclusive right in that it must not impinge on the right of the trademark holder, nor on the right of other third parties equally to use the same trademark to indicate goods they are selling. As one Panel has said:

Société Civile Agricole Chateau Margaux v. Goldman Williams Ltd, WIPO Case No. D2001-1147.

The Respondent has its own web-site, <rxusa.com>, through which its business operations are conducted. The web-sites associated with the Domain Names in question in this case merely feeds customers to this site on which order forms are to be found for the various products sold by the Respondent. It, like the Chateau Margaux case, has no need for the Domain Names <taxotere.net> or <anzemet.net> and can sell the Complainant’s pharmaceutical products on the Internet without using the Domain Names in issue.

This case is not in the same category as those where there is a distributorship, agency or other like relationship between the Complainant and Respondent. There is no evidence that the Complainant was even aware of Respondent prior to writing the cease and desist letter to it in November 2001. In cases where there are such relationships some Administrative Panels have been loath to make a determination that Respondents have no rights or legitimate interests to the names in question. (See: Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006, and Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717.) Although, even in these cases it may be presumed, in the absence of evidence to the contrary, that any such right would automatically expire on the termination of this relationship: UVA Solar GmbH v. Madi Kragh, WIPO Case No. D2001-0373. Quite simply, there is no relationship between the parties here. The Respondent says it has a legitimate right to sell the trade-named pharmaceutical products Taxotere and Anzemet, manufactured by the Complainant which the Respondent has acquired, not from the Complainant, and therefore it is allowed to use Domain Names which are identical or confusingly similar to the trademarks owned by the Complainant. The Complainant disputes this.

While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with these goods in connection with their sale, this does not give it the right to register and use the mark as a Domain Name without the consent of the holders of the trademarks. Thus, it is prevented from having prior rights to or legitimate interests in the Domain Name as against the Complainant. (See Ullfrottè AB v. Bollnas Imports, WIPO Case No. D2000-1176; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292.)

This Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names <anzemet.net> and <taxotere.net>.

6.3 By, admittedly, having knowledge of the Complainant’s mark, Respondent can be assumed to have been aware of the risk of deception and confusion that would inevitably follow if it registered and used the Domain Name under the ".net" gTLD since this could give the impression that the site and thus the Respondent was somehow endorsed by the Complainant: See Ullfrottè AB v. Bollnas Imports, WIPO Case No. D2000-1176. Not only was the Respondent not endorsed by the Complainant, it had no consensual relationship with Complaint at all. Any representation, such as here, to the contrary is clearly bad faith.

The Respondent has provided copies of both subject web sites as of April 24, 2002 in order to show a disclaimer. In bold writing the following appears:

Rx USA Inc. and its affiliates, subsidiaries, or officers, never have been and are not now affiliated in any way with any of the above with any of the above products or companies and / or any other copyrighted name or product sold on this or any website owned and / or supported by Rx USA. All company, brand, product names and logos that appear on this site are the trademarks or registered trademarks of their respective owners. RxUSA is a licensed Pharmacy, filling prescriptions for many medications.

Rx USA Inc. and its affiliates, subsidiaries, or officers, has never been, and is not now affiliated in any way with Aventis Pharma SA, or Merrell Pharmaceuticals Inc., the registered owner(s) of the trademarked drug, Taxotere®, RxUSA is a licensed Pharmacy, filling prescriptions for Taxotere®.

On the same date the <anzamet.net> website carried a purported disclaimer which incorporated only the first of the two paragraphs mentioned above.

The fact that the present disclosure was not there earlier is clear from site shots taken by the Complainant and annexed to the Complaint. Annex 23, which shows that the website for <anzamet.net> as of December 6, 2001, says in the last paragraph:

The information on this page is provided for general informational purposes only and does not substitute or constitute qualified medical advice. This information is in no way guaranteed to be true or substantiated in any way. Further information may be obtained at the manufactures website. All company, brand, product names and logos that appear on this site are the trademarks or registered trademarks of their respective owners. webmaster copyright © 2000.

On March 26, 2002, the day before the Complaint was filed and served, the Complainant took a website shot of <taxotere.net> which contained the same language as above.

The Complainant’s cease and desist letter to the Respondent is dated 16 November, 2001. At 3:38am on March 27, 2002, the Complainant’s attorney sent by electronic communication the Complaint in this matter, concerning the Domain Names <taxotere.net> and <anzamet.net>, to the WIPO Arbitration and Mediation Center, to the Respondent, and to the Registrar. At 7:38pm on the same date the Respondent sent an e-mail to the Complainant’s attorney which said:

PLEASE VISIT THE SITES IN QUESTION TO VIEW DISCLAIMERS WHICH SHOULD MAKE CLEAR THAT THERE IS NO RELATIONSHIP OR VIOLATION OF ANY TRADEMARK QUESTION

Thereafter, the e-mail set out in full the revised version of the so-called disclaimer.

The Respondent fails to mention when the new language first appeared on the websites in question. As it is the party who asserts this material fact, which is not self-evident and as the means of proof of this material fact is available to it and is not reasonably available to the Complainant, the Respondent bears the onus of proving it. (See Leonard Asper v. Communication X Inc., WIPO Case No. D2001-0539) It is likely that this occurred on March 27, 2002, at the earliest. In any event, from the time that the websites in question were activated until well after the Respondent had notice of this dispute, there was no appropriate disclaimer.

This Panel finds that the Respondent registered and used the Domain Names <taxotere.net> and <anzemet.net> in bad faith contrary to the provisions of para. 4(b)(iv) of the Policy as follows:

7.1 This Administrative Panel decides that the Complainant has proved each of the three elements of para. 4(a) of the Policy. Accordingly, this Administrative Panel requires that the Domain Names <taxotere.net> and <anzemet.net> be transferred to the Complainant.