WIPO Domain Name Decision: D2005-0716

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aventis Pharma SA. v. Awad Kajouk

Case No. D2005-0716

1. The Parties

The Complainant is Aventis Pharma SA of Antony, France, represented by Carole Tricoire, France.

The Respondent is Awad Kajouk, Manama, Bahrain.

2. The Domain Name and Registrar

The disputed domain name is <pharmacy-online-nasacort-aq.com>, which is registered with Wild West Domains, Inc.

3. Procedural History

This Complaint was originally filed under Case Number D2005-0401, which was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2005, together with a complaint by Merrell Pharmaceuticals Inc of Greenville, Delaware, United States of America, against the same Respondent, but in respect of the domain names <pharmacy-online-allegra.com> and <pharmacy-online-allegra-d.com> (WIPO Case No. D2005-0401).

On April 15, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On April 22, 2005, Wild West 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 for the administrative, billing, and technical contact.

The Center has verified that the Complaint satisfies 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 April 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2005.

The Center appointed Joseph Dalby as the sole panelist in this matter on May 22, 2005. 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.

In Case D2005-0401, the Panel, on its own motion, deliberated the admissibility of the Complaint and concluded that that Complaint had been commenced by two Complainants that, by reason of their joint statements within the Complaint, relied on divergent rights and interests, in respect of different domain names, albeit against a common Respondent.

In consequence in Case D2005-0401, on June 23, 2005, the Panel issued a Procedural Order severing the Complaint into two separate Complaints, and directing that the Complainant Aventis Pharma SA lodge an additional filing fee by June 29, 2005. The Complainant was unable to meet this deadline, but lodged the additional filing fee shortly thereafter. The Panel accepts the reason for the delay and extends the time for lodging the filing fee to the date it was duly lodged.

This Complaint, between Aventis Pharma SA. v. Awad Kajouk , in respect of the domain name <pharmacy-online-nasacort-aq.com>, now falls to be dealt with in the present case. In this regard the Panel has deemed that the relevant evidence that was submitted in Case D2005-0401 has having been submitted in the present Proceeding.

The Panel hereby finds that there are exceptional circumstances necessarily delaying a decision in this Complaint until now.

4. Factual Background

The Complainant is an incorporated company, established in Republic of France, which is a subsidiary of the Sanofi-aventis group. It develops and sells utility drugs in the field of respiratory and allergy diseases under a number of trademarks.

The brand name NASACORT is registered as a trademark in the France, Canada, and the UK and as European and an International trademarks. The Complainant has submitted copy registration certificates for these trademarks.

The Complainant also operates online, and is the incumbent registrant for <nasacort.com>, <nasacort-aq.com> and <nasacortaq.com>. The Panel notes that this domain name resolves to a live website advertising and offering for sale products and services commercialized under the registered trademarks.

The Respondent is identified as Awad Kajouk at an address in Bahrain. This information was obtained from a WHOIS search the Complainant executed prior to declaring its rights over the domain name, and is confirmed by the Registrar of the domain name. That Awad Kajouk is an individual appears certain by reason of an electronic mail dated April 11, 2005, from a person of that name, purporting to trade under the name of Get-Well Pharmacy.com.

The disputed domain name is, at the time of this decision, live and resolve to a web page of indeterminate association, displaying pornographic images and links to pages of similar content.

5. Parties’ Contentions

A. Complainant

The Complainant observes that the domain name in question contains its exact trademark, NASACORT. It adds that “aq” signifies “aqueos”. It contends that, notwithstanding the additional script in the domain name in question, it is either identical or confusingly similar to the trademark in which the Complainant has rights.

It observes that the domain name in question reproduces entirely the Complainant’s trademark, and the mere difference is the addition of neutral terms, which it adds is an addition that is not sufficient to alleviate the likelihood of confusion. The additional terms, it observes, are descriptive and will not prevent Internet Users from thinking that there is a link between the Respondent and the Complainant’s trademarks. This is further ascertained, it observes, by reason of the notoriety of the Complainant’s trademarks.

The Complainant asserts that it is obvious that the Respondent does not have any rights or legitimate interests to use the domain name in question as it bears no resemblance to the Respondent’s name. The Complainant adds that the Respondent has not been authorized by the Complainant to present or sell products under its registered trademark or to register any domain name incorporating the trademark.

Finally, the Complainant contends that the domain name in question was registered and used in bad faith because it corresponds to the trademark and domain names registered to the Complainant- this is a fact that the Complainant asserts that the Respondent was undoubtedly aware of at the time of registration of the domain name in question. Moreover it asserts that the likelihood of confusion between the domain name in question and the Complainant’s trademark is intended to encourage consumers to think that the Respondent’s website is the general website devoted to the sale of the Complainant’s products. To support this contention, the Complainant has put into evidence screenshots of a website with the URL “www.getwell-pharmacy” offering drugs and medicines to which it claims the domain names in question resolved.

B. Respondent

The Respondent has not, at least within this proceeding, formally replied to the Complainant’s contentions. However, it replied to the Complainant’s initial request to desist with the disputed domain registration. It pointed out that the Get Well Pharmacy is a legal affiliate of a legal distributor of the products without giving any further details. Finally it invited offers to purchase the domain name in question.

6. Discussion and Findings

The domain name in question is governed by the Policy, by virtue of the contract between the Registrar and Registrant/Respondent.

The Respondent has been given an adequate opportunity to deal with the allegations against him and it is thus noted that the Respondent has not offered any contentions in rebuttal of the claims and contentions made by the Complainant.

In this matter the Panel finds as follows:

A. Identical or Confusingly Similar

Although the trademark certificates supplied are not certified as identical to the original, in the absence of any challenge from the Respondent, they are deemed to be authentic copies.

The Complainant has proven that it has rights to an established and valid trademark. Other than the addition of neutral terms the domain name in question is identical to the trademarks relied upon. The additional text does not substantially alter the character and integrity of the domain name to render it any less identical or confusingly similar.

B. Rights or Legitimate Interests

Taking the Complaint in its entirety, the Complainant has satisfactorily demonstrated a prima facie case that the Respondent has no rights to or legitimate interests in the domain name. In default of the Respondent adducing any evidence to rebut this contention, the Complainant has adequately proved this element.

C. Registered and Used in Bad Faith

It is noted that none of the scenarios in paragraph 4(b) of the Policy are made out or relied upon.

Given that the Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain name is suggestive of bad faith. Had the Respondent demonstratively prepared to legitimately use the domain name for the purposes that he has been shown to pursue, he could not but have been aware of the Complainant’s established reputation and the notoriety of the trademarks relied upon. Accordingly, it is reasonable to infer that he must have been aware that he would be participating in intra-brand competition (that is pharmaceutical products under the Complainant’s trademarks) that requires authorization from the trademark holder to reproduce the trademarks referred to.

Furthermore, given the fame of the Complainant’s mark, the demand for payment for returning the domain name, when the Respondent has not demonstrated any rights or legitimate interests in the domain name, and the fact that the disputed domain name is connected to a pornographic site from which the Respondent possibly derives revenue, the Panel finds use 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, in respect of the domain name, <pharmacy-online-nasacort-aq.com>:

(i) The domain name is identical or confusingly similar to trademarks in which Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name in question;

(iii) The domain name in question was registered and is being used in bad faith;

(iv) The domain name in question be transferred to Complainant.

Joseph Dalby
Sole Panelist

Dated: July 13, 2005