WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Laboratoires Servier v. Cayman Trademark Trust
Case No. D2003-0667
1. The Parties
The Complainant is Les Laboratoires Servier of Neuilly sur Seine, France, represented by Claire Combot, France.
The Respondent is Cayman Trademark Trust of Georgetown, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <elservier.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2003. On August 26, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On that same date, BulkRegister.com 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. On August 28, 2003, the Complainant filed, as a supplement to its Annex 3 of its Complaint, the certificate of registration of the trademark SERVIER registered on July 14, 1997, in class 5 in Cayman Islands. 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 August 28, 2003. On August 29, 2003, the Center notified to the Respondent the amended Annex 3 of the Complaint. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 19, 2003.
The Center appointed the undersigned as the sole panelist in this matter on September 26, 2003. 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.
4. Factual Background
The Complainant is a pharmaceutical company known throughout the world under the name "SERVIER" (see Annex 12 to the Complaint) and is the owner of the trademark SERVIER registered and used in numerous countries; it also owns numerous trademarks including the word SERVIER (see Annex 3 and supplement to the Complaint), among others:
- the trademark SERVIER, registered in Germany under nį 30089241 on July 15, 2001, in class 38;
- the trademark SERVIER registered in Argentina under nį 1885382 on September 16, 2002, in class 38;
- the trademark SERVIER registered in Island under nį539/2001 on May 2, 2001, in class 5;
- the trademark SERVIER registered in Lebanon under nį89266 on December 15, 2001, in class 35;
- the trademark SERVIER registered in Myanmar under nį IV/4552/ on September 25, 2001, in class 5, 35, 42;
- the Romanian trademark registration SERVIER nį46523 on April 20, 2001, in class 5, 38;
- the Uruguayan trademark registration SERVIER nį 216655 on April 28, 1989, in class 5.
The Complainant also registered the trademark SERVIER on July 14, 1997, in class 5 in Cayman Islands.
In addition, the Complainant is the owner of the International trademark nį 549079 filed on January 19, 1990, covering numerous countries and the owner of numerous national trademarks, notably the English trademark nį1412514 registered in class 5 on January 3, 1990. Moreover, it is the owner of the International trademark nį 506404 registered on September 30, 1986, covering numerous countries.
The Complainant is also the registrant of numerous domain names which include "SERVIER" under gLTD and ccTLD that lead to active websites on health and pharmaceutical purposes in various languages (Annex 4 to the Complaint).
5. Partiesí Contentions
The Complainant mainly submits the following:
(i) The domain name <elservier.com> is confusingly similar to the marks and company name "SERVIER."
The disputed domain name contains its trademark in its entirety, the small difference between the two names being the prefix "EL" which is well recognized as the Spanish word for "the" by many people in numerous countries. Moreover, phonetically, "EL" is the twelfth letter of the alphabet which is the initial for laboratories/ "Laboratoires."
An Internet search for the words "L SERVIER" or "EL SERVIER" leads to numerous links relating to the Complainantís company notwithstanding the addition of "L" or "EL" (Annex 5 to the Complaint), thus creating confusion with its trademarks.
The disputed domain name resolves to a basic portal website containing a list of generic keywords which resolves to websites associated to each keyword. Among the generic keywords, one can find the word pharmacy which accesses to a list of online pharmacies selling products similar and identical to the Complainantís products. More importantly, a search on the Respondentís website for its trademark COVERSYL (Annex 5 to the Complaint) leads to online pharmacies selling the Complainantís products (Annex 6 to the Complaint).
An Internet user looking for the Complainantís website and opening the disputed domain name will not find any indication that he/she is not in the website he/she is looking for. More importantly, he/she will find on this website links to online pharmacy selling the Complainantís products and consequently might assume that he/she is on the Complainantís website.
Finally, it is pointed out that the origin of the pharmaceutical products being sold online and accessible via the disputed domain name are unknown to the Complainant and thus, the confusion between its trademark and corporate name and the disputed domain name could be dangerous for its patientsí health who might assume that the products being sold online come from the Complainantís company.
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.
From the date of the registration - i.e. from March 16, 2003 - until today, the Respondent has not used the domain name in connection with a bona fide offering of goods or services, nor had it made preparations to do so: neither the statement nor the reproduction of the disputed domain name can be considered as a description of the Respondentís business.
The Respondent registered numerous domain names such as, for example, <toshibalaptop.com>, <yamahadirtbike.com>, <yamahadirtbikes.com>, <nelson-mandela.com>, <subroza.com>, <illinois.org>, <americanfront.com>, <bigtiger.com>, <wheels.net>, <ornament.org>, <magazines.org> which all resolve to the same basic portal website and contain, like <elservier.com>, the introductory heading and the statement "welcome to (domain name)" (Annex 8 to the Complaint). That is further evidence that the Respondent has no legitimate interest in the disputed domain name.
In addition, most of the domain names mentioned above that resolve to Respondentís website are identical or confusingly similar to valuable, registered and famous trademarks.
As mentioned above, the domain name in dispute resolves to a basic portal website containing a collection of generic keywords which leads to websites associated to each keyword. Each website associated to the keywords contains a listing and a search "list your site here with shopFind integrated search results" which resolves to another website "www.shopfind.com" where the process of getting a website included in the listing is discussed. Among the generic keywords, one can find the word pharmacy which accesses to a list of pharmacies on line, selling products similar and identical to the Complainantís products. The Respondent is therefore making a commercial use of the disputed domain name with the intent of diverting Internet traffic away from the Complainantís website for its own commercial gain. The Respondent also earns revenues from several pop-adds and banners advertisements which open from the website and from the website "www.shopfind.com" associated with the web page accessed by the disputed domain name whose registrant is the Respondent (Annexes 7 and 9 to the Complaint).
Furthermore, the Respondent is not commonly known under the name ELSERVIER and there is no trademark ELSERVIER registered by the Respondent (Annex 9 to the Complaint).
Moreover, the Complainant never assigned nor sold or transferred any rights in its trademarks to the Respondent and never granted the Respondent permission to use or register its mark as a domain name.
Lastly, as established in Georgia Boot LLC v. Modern Limited - Cayman Web Development, NAF Case No. FA00149173, the Respondent has registered over 2í200 domain names and is in the business of acquiring and selling domain name registrations (Annex 11 to the Complaint).
(iii) The domain name should be considered as having been registered and used in bad faith.
Firstly, the contact details of the registrant are incomplete. Secondly, the domain name was registered primarily with the intent to profit from the goodwill attributable to the Complainantís trademark and/or for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant as the owner of the corresponding trademark or service mark. At the date of the registration the Respondent was certainly well aware of the Complainantís prior rights since it is very well known on the Internet: almost all the results for a search on the Internet for the words "SERVIER," "LES LABORATOIRES SERVIER" or "SERVIER LABORATORIES" lead to links to the Complainantís websites or to websites relating to the Complainantís company (Annex 12 to the Complaint); in addition, the latter company is active in 140 countries and consequently well known throughout the world.
The Respondent is in the habit of preventing trademark owners from reflecting their marks in a corresponding domain name: numerous complaints have been filed against the Respondent (see Annex 10 to the Complaint) all decisions of which were in favor of the complainants.
By using the domain name <elservier.com>, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondentís website, by creating a likelihood of confusion with the company's mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website: as it appears from the website, the Respondent derives revenues from the several pop-adds and banner advertisements which opens on the website and also from the "www.shopfind.com" associated website. Numerous other domain names resolve to the same website and are also well-known mark on which the Respondent has certainly no rights. Moreover, a search conducted on the Respondentís website for the Complainantís trademark COVERSYL leads to a list of online pharmacies with the introductory heading "COVERSYL websites" (see Annex 6 to the Complaint). This fact demonstrates that the Respondent adopted the disputed domain name because of its value, with the full knowledge of the existence of the Complainantís prior rights and that is a further evidence that it is using the domain name to attract internet users to its website for commercial gain by creating a likelihood of confusion with our mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark "SERVIER" with various registrations for such a name (see Complainantís Annex 3), especially in the country where the Respondent has its registered offices (see supplement to Annex 3).
The Complainant has submitted conclusive evidence that its trade and service marks "SERVIER" are confusingly similar to the domain name <elservier.com>.
The main difference between the disputed domain name and the Complainantís mark is the addition of "el" before the Complainantís mark which does not render the disputed domain name totally distinctive from the Complainantís trademark.
Administrative Panels have found domain names to be identical or at least confusingly similar when based on "close variant" or "close misspelling" of the mark in question (e.g. AltaVista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848; Yahoo!Inc. v. Eitan Zviely et al., WIPO Case No. D2000-0273). There is no reason in the current matter to depart from these precedents. Clearly under the circumstances described above and not rebutted by the Respondent, the present case is typically a "typosquatting" example in the use of domain names.
For the above reasons, the Panel finds that the disputed domain is confusingly similar to Complainantís mark SERVIER.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules already cited above.
The instant case is quite similar to another administrative proceeding referred to by the Complainant (The Sportsmanís Guide Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305) from which the same conclusions can be drawn.
As the Complainant contends, there are only two references to the domain name on the web page accessed by the disputed domain name. First, the domain name itself is reproduced at the top of the web page and second, immediately after the heading "looking for something," there is a statement starting with "welcome to elservier.com. Weíve collected a list of sources sites to help you find exactly what are you looking Ö.." Neither the statement nor the reproduction of the disputed domain name can be considered to be a description of the Respondentsí business in connection with a bona fide offering of goods.
Moreover, the Respondent is not commonly known under the name ELSERVIER and there is apparently no trademark registered under that name, as the Complainant submits.
In addition, as pointed out by the Complainant, the latter has not granted any license or otherwise permitted the Respondent to use its trademarks or to apply for any domain name incorporating the said trademark.
Regarding the circumstance provided by Paragraph 4(c)(iii) of the Rules, the finding adopted in the The Sportsmaní sGuide Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305, mentioned above shall also apply to the current matter. There is no evidence that the Respondent is making a legitimate noncommercial or fair use nor making an educational, political satirical or other use of the disputed domain name that implicates free speech principles or any other recognized category of fair use. As it appears to be from the website accessed by the disputed domain name, the Respondent earns revenues from the several pop-adds and banner advertisements, which open on the website and also from the "www.shopfind.com" website associated with the web page accessed by the disputed domain name, whose registrant is the Respondent (see Annex 9 to the Complaint).
Under these particular circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue.
Much to the contrary based on the contentions reproduced above, it is the Panel's finding that the Complainant has established a prima facie case the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location pursuant to Paragraph 4(b)(iv) of the Policy .
First of all, the Complainant has submitted prima facie evidence that its trademark is well know throughout the world and the Respondent could not ignore registration thereof at its place where it has registered offices (see Annexes 12, 3 and 4 to the Complaint).
Secondly, the same conclusion adopted in the The Sportsmanís Guide Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305, cited above can be drawn in the present case as to the use of the disputed domain name for commercial gain: as the Complainantís contends and as it appears to be from the website to which the disputed domain name resolves, the Respondent earns revenues from the several pop-adds and banner advertisements which opens on the website and also from the "www.shopfind.com" associated website (see Annex 9 to the Complaint); such an inference results also from the fact that the Respondent who has not filed a Response, has not denied these allegations of the Complainant.
Lastly, the Respondentís behaviour, who registered numerous domain names under circumstances similar to the present matter, may be characterized as "bad faith" within the general meaning of Paragraph 4(b) of the Policy.
Therefore, the administrative panel finds that the domain name <elservier.com> should be considered as having been registered and used 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 domain name <elservier.com> be transferred to the Complainant.
Dated: October 8, 2003