WIPO Domain Name Decision: D2005-1349

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis, Aventis Pharmaceuticals Holdings Inc., and Aventis Pharma S.A. v. Reale Medical

Case No. D2005-1349

1. The Parties

The Complainants are Sanofi-aventis of France, Aventis Pharmaceuticals Holdings Inc. of the United States of America, and Aventis Pharma S.A. of France, represented by Selarl Marchais de Candé, France.

The Respondent is Reale Medical, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nasacortonlinepharmacy.com> (the “Domain Name”) is registered with Go Daddy Software, Inc., United States of America (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2005. On December 28, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On the same date, the Registrar 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 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2006.

The Center appointed Assen Alexiev as the sole panelist in this matter on February 10, 2006. 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 accordance with the Rules, paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.

4. Factual Background

Sanofi-aventis, of which Aventis Pharmaceuticals Holdings Inc. and Aventis Pharma S.A. are affiliate companies, is nowadays one of the leaders among the pharmaceutical companies. The Complainant is a multinational company present in more than 100 countries across five continents.

Sanofi-aventis offers a wide range of patented prescription drug to treat patients with serious diseases and has leading positions in a number of therapeutic areas, including respiratory/allergy, cardiology/thrombosis, oncology and diabetes.

In the field of respiratory and allergy diseases, the Complainant has developed and sells throughout the world a drug with demonstrated effectiveness for the treatment of allergic rhinitis bearing the trademark NASACORT. All relevant information related to this product is available on the website “www.nasacort.com”, which is an official website of the Complainant.

The Complainant is the owner of the following trademarks:

- NASACORT, a Community trademark with registration No. 002,303,493, registered on March 4, 2004, for goods in class 5;

- NASACORT, a French trademark with registration No. 1,715,384, registered on December 27, 1991, for goods in class 5;

- NASACORT, an International trademark with registration No. 587,802, registered on June 25, 2002, for goods in class 5, designating among others Austria, Switzerland, China, Germany, Algeria, Egypt, Hungary, Italy, Morocco, Poland, Russian Federation, Benelux, and Vietnam;

- NASACORT, a Canadian trademark with registration No. 706,328, registered on December 24, 1993, for goods in classes 3, 5, 21 and 31; and

- NASACORT, a UK trademark with registration No. 1,504,818, registered on June 23, 1992, for goods in class 5.

The Complainant has also registered the following domain names to present its product on the Internet: <nasacort.com>, <nasacort.org>, <nasacort.net>, <nasacort.biz>, <nasacort.info>, and <nasacort.us>.

The Respondent registered the Domain Name on November 2, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant has made the following contentions in its Complaint:

i) The Domain Name is confusingly similar to the NASACORT trademarks in which the Complainant has rights.

The Domain Name 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 Domain Name makes it confusingly similar to the Complainant’s trademarks regardless the additional elements. As the panel held in Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903, “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite of the addition of other words.”

The difference between the Domain Name and the Complainant’s trademarks is that the words “online” and “pharmacy” are placed at the end of the Domain Name. These two additional words are not apt to influence significantly the overall impression produced by the Domain Name and to avoid the likelihood of confusion. The first one is a logical, generic add-on in the context of the Internet while the second one is descriptive of the service proposed. The whole combination leads users to think that the website corresponding to the Domain Name is a virtual pharmacy where one can buy the NASACORT drug. Therefore, the Domain Name is confusingly similar to the trademarks in which the Complainant has rights. Aventis Pharmaceuticals Inc, Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094, Sanofi-aventis and Aventis Pharma SA v. Jonathan Valicenti, WIPO Case No D2005-1082, Harrods Lt v. AB Kohler & Co., WIPO Case No. D2001-0544.

ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.

Neither the term “reale” nor the term “medical” of the Respondent have any resemblances with the word NASACORT. Therefore, the Respondent has no prior rights or legitimate interests to justify the use of the trademark of the Complainant.

The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain names. There is no relationship whatsoever between the parties.

Consequently, in the absence of any permission and connection between the choice of the Domain Name and the Respondent’s website, the Respondent has no rights or legitimate interests in respect of the Domain Name.

iii) The Respondent has registered and used the Domain Name in bad faith.

The Respondent has registered the Domain Name in bad faith. The Respondent was undoubtedly aware at the time of the registration of the Domain Name of the existence of the trademarks NASACORT of the Complainant, of the domain names including the term NASACORT registered by the Complainant, and of the official website “www.nasacort.com” of the Complainant.

During the month of August 2005, the Domain Name was associated to the website where a large selection of drugs was offered for sale. It was obvious that the intention of the Respondent was to create confusion among consumers, who could believe that there was an official affiliation between the Complainant and the website, and that the website was officially recognized, or even accredited, by the Complainant. The Domain Name was intended to attract Internet users to the website of the Respondent by creating the false impression that it has some connection with the Complainant.

On August 30, 2005, Sanofi-aventis sent by e-mail a cease and desist letter to the Respondent, where it explained that the registration of the Domain Name constituted an infringement of the prior rights of Sanofi-aventis over the trademark NASACORT. Sanofi-aventis requested the immediate cancellation of the Domain Name.

On September 16, 2005, the Respondent replied to Sanofi-aventis in the following terms:

“Hello,

This domain is expiring in 45 days and we will not renew it, so this will be discontinued.

Thanks.”

Despite this commitment, the Domain Name was renewed on November 2, 2005. On November 29, 2005, Sanofi-aventis sent another e-mail message to the Respondent asking once more for the cancellation of the Domain Name. The Respondent never answered.

By intentionally renewing the Domain Name despite its commitment not to do so and in spite of the Complainant’s warning, the Respondent intended to benefit of the fame of the trademarks of the Complainant for financial gain. This attitude is clearly within the scope of the Policy, paragraph 4(a)(iii).

The Domain Name was not only registered in bad faith but is also being used by the Respondent in bad faith.

The website at the Domain Name contains many links to other websites. Many of them are dedicated to the health care and the pharmaceutical industry and related to allergic rhinitis medication and treatment. When an Internet user clicks on one of these links, it is automatically redirected to the corresponding website.

The Respondent is also seeking, in using the litigious domain name, to exploit user confusion by diverting Internet users to the Respondent’s website for its own benefit and commercial gain. Diverting users in this misleading manner is further evidence of bad-faith use. Novus Credit Services v. Personal, WIPO Case No. D2000-1158.

The advertisements and links proposed on the website at the Domain Name are probably a source of income for the Respondent related to the number of hits that are generated by Internet users. Sanofi-aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No D2005-0377.

In order to be considered as bona fide offering of goods or services within paragraph 4(c)(i), the offering on the Respondent’s website must meet several minimum requirements, including that the Respondent must actually be offering the goods or services at issue; the Respondent must use the website to sell only the trademarked goods; and the website must accurately disclose the Respondent’s relationship with the trademark owner. Oki Data Americas, Inc v. ASD Inc., WIPO Case No. D2001-0903. In the present case, the Respondent has not met these requirements and the consulting of this site clearly shows that whatever goods or services are on offer on the website, there are not the goods or services of the Respondent. On the opposite the Respondent seems to exercise little control over the way in which the Domain Name is used and only takes benefit.

For all of these reasons, there is no doubt that the Domain Name was registered and is used by the Respondent in bad faith.

iv) Remedy requested.

The Complainant requests that the Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the Respondent has registered and is using the domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of the Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “ Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence for the registration of the trademark NASACORT as a Community trademark, as well as for the territories of France, United Kingdom, Canada, and many other countries by Aventis Pharma SA. As this entity is the Complainant in this administrative proceeding, the Panel finds that the Complainant has established its rights in the trademark NASACORT, as required by Policy, paragraph 4(a)(i). The Panel notes that the Complaint also refers to two trademarks registered in the United States of America. As they appear to be owned by a different entity, even though seemingly belonging to the Aventis group of companies, the Panel will not assess them in deciding the first element of the Policy.

It is an established practice to disregard the gTLD “.com” for the purposes of the comparison under Policy, paragraph 4(a)(i), so the relevant part of the Domain Name to be considered is the sequence “nasacortonlinepharmacy.” The first eight letters of this sequence are identical to the trademark NASACORT of the Complainant, and the remaining part of it represents the English expression “online pharmacy.” This expression is descriptive of sales of medicines in the Internet. As the Domain Name starts with “Nasacort,” consumers are likely to relate the Domain Name to sales of the NASACORT medication on the Internet. So, rather than distinguishing the Domain Name from the Complainant’s trademark, the addition of the expression “online pharmacy” makes the Domain Name confusingly similar to the trademark.. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727.

Therefore, the Complainant has established the first element of the test, required under Policy, paragraph (4)(a).

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.

Thus, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once the Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.

The Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for the registering or using the disputed Domain Name, it could have provided it. In particular, the Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) - or any other circumstance - is present in its favor.

In fact, the only information available about the Respondent is the Whois information, provided by the Registrar, the correspondence between the parties, and the content of the website, associated to the Domain Name.

The Whois information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name, apart from its rights as a registrant of the latter.

In its reply to the Complainant’s cease and desist letter of September 16, 2005, the Respondent did not claim to have any rights or legitimate interests in the Domain Name, and practically declared its lack of interest in the Domain Name.

The website associated to the Domain Name contains information about the product NASACORT of the Complainant, offers for sale many pharmaceutical products, and includes links to other websites in the field of health care and pharmaceuticals.

The question is whether such an offering of goods or services is bona fide under paragraph 4(c)(i). The answer to this question depends on the finding whether the use of the disputed Domain Name in connection with the offering otherwise constitutes bad-faith registration or use of the Domain Name under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. UltSearch, Inc., WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith).

The Panel concludes that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services. It is clear that the Respondent knew at the time of the registration of the disputed Domain Name about the Complainant’s products and trademarks and their popularity. “Nasacort” is the only distinctive part of the Domain Name, and the NASACORT trademark is strongly connected to the Complainant. The Respondent simply has no legitimate interests in using this trademark as part of the Domain Name that directs Internet users to the website where various pharmaceutical products are offered for sale. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith.” Accordingly, the finding by the Panel regarding the Respondent’s bad-faith registration and use of the disputed Domain Name precludes a finding that the offering of goods or services by the Respondent is bona fide. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296.

Therefore, as the evidence supports the contentions of the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

As shown by the Complainant, the website associated to the Domain Name contains a description of the Complainant’s product, offers a large selection of drugs for sale and contains links to other websites including such dedicated to the health care and the pharmaceutical industry and related to allergic rhinitis medications and treatment. The placement of such links is commonly made for financial gain, as an income is generated according to the number of hits by Internet users.

The analysis of the website and of the elements of the Domain Name shows that the Respondent was aware at the time of the registration of the Domain Name of the existence of the trademark of the Complainant and its goodwill.

Further, the correspondence between the parties, as evidenced by the Complainant, shows that the Respondent did not claim any rights or legitimate interests in respect of the Domain Name, and undertook not to renew it upon its expiration. Instead, in full knowledge of the Complainant’s rights, the Respondent renewed the registration of the Domain Name.

Taken together, these facts support a finding that the intention of the Respondent in registering and using the Domain Name was to attract Internet users and to divert them to the Respondent’s website for its own benefit and commercial gain, by creating a likelihood of confusion that there was an affiliation between the Complainant and the website, and that the website was officially recognized, or even accredited, by the Complainant. Such conduct is one of the typical cases of bad-faith registration and use, as envisaged by Policy, paragraph 4(b)(iv).

For all of these reasons, and in the absence of any rebuttal by the Respondent, the Panel finds that the Domain Name was registered and 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 <nasacortonlinepharmacy.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist

Dated: February 24, 2006