WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Rich Sites
Case No. D2003-0759
1. The Parties
The Complainants are A. Nattermann & Cie Gmbh, Köln, Germany and Aventis Pharma SA, Antony, France, represented by Selarl Marchais De Candé, France.
The Respondent is Rich Sites, Los Angeles, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <lipostabil2u.com> and <lipostabilnet.com> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2003. On September 29, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. Copy of the printout of WHOIS information, printed before the Notification of Complaint, confirms that the Respondent is listed as the registrant and provides 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 October 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 21, 2003. The Notification of Complaint and Commencement of Administrative Proceeding and a copy of the Amended Complaint (with attachments) were dispatched by FEDEX courier and email to the Respondent. The tracking record of FEDEX shows that delivery of these documents was unsuccessful like, apparently, notification via email. On the other side, the Complainants stated in their Complaint that a copy thereof had been sent by registered letter to the Respondent on September 26, 2003 (Complaint, para. 17 p.19).
The Panel is satisfied that the Center has complied with its obligations under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" (see e.g. Charles Schwab & Co, Inc. v Polanski, WIPO Case No. D2001-0959).
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2003.
The Center appointed Christophe Imhoos as the sole panelist in this matter on October 30, 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, and rendered his decision within the time-limit granted.
4. Factual Background
AVENTIS Holding and its affiliate companies A.NATTERMANN & Cie Gmbh and AVENTIS PHARMA SA, the Complainants in this administrative proceeding, are leaders among the pharmaceutical companies in the world.
AVENTIS offers a wide range of patented prescription drug to treat patients whilst, in the field of dermatology, A.NATTERMANN, wholly owned by the AVENTIS Group, has notably developed and sells throughout the world drugs under the trademark "LIPOSTABIL" which is an intravenous drug product containing phosphatidylcholine (commonly called lecithin) which is a lipid lowering agent which has been approved in a number of countries for the prophylaxis and therapy of fat embolisms (Annex 5 to the Complaint) and has been sold in many countries around the world such as, for example, the European Countries, South Africa and South America.
The Complainant submits that AVENTIS PHARMA S.A. has been designated by AVENTIS SA to manage all the domain names belonging to the AVENTIS Group.
A.NATTERMANN & Cie Gmbh has rights in the mark "LIPOSTABIL". These rights are evidenced by the numerous registered trademarks, all over the world, containing the word "LIPOSTABIL" (Annex 4 to the Complaint) :
- The German trademark "LIPOSTABIL" n° 675 648 registered on January 23, 1954, in class 5 and duly renewed;
- The Brazilian trademark "LIPOSTABIL" n° 006053963 registered on February 25, 1995, in class 5;
- The International trademark "LIPOSTABIL" n° 2R 186 130 designating Benelux, Croatia, Estonia, Italy, Slovenia, Spain, Switzerland and San Marino renewed twice, the last one being in July 11, 1995, in classes 1 and 5;
- The International trademark "LIPOSTABIL" n° R 435 495 designating Armenia, Belarus, Czech Republic, Georgia, Kazakhstan, Latvia, Lithuania, Russian Federation, Slovak Republic and Ukraine renewed once in January 7, 1998, in classes 1 and 5;
- The Nigerian trademark "LIPOSTABIL" n° 41765 registered on May 5, 1982, in class 5 (renewal in progress);
- The Russian Federation trademark "LIPOSTABIL" n° 168 131 registered on June 19, 1997, in class 5;
- The South African trademark "LIPOSTABIL" n° 2524/58 registered on July 31, 1972, duly renewed in 1982 and 1992, in class 5 (last renewal in progress);
- The Turkmenistan trademark "LIPOSTABIL" n° 6950 registered on September 16, 1998, in classes 1 and 5;
- The Ukrainian trademark "LIPOSTABIL" filed on October 1, 2002, in class 5 (registration in progress);
- The United Arab Emirates trademark "LIPOSTABIL" n° 4431 registered on August 5, 1992 (renewal in progress);
- The US trademark application for "LIPOSTABIL" on July 23, 2003, in classes 5 and 42;
- The Zambian trademark "LIPOSTABIL" n° 11/75 registered on January 8, 1975, in class 5 and duly renewed;
All of these trademarks are registered and are being used by their owner in connection with classes 1 and 5 of the international classification, i.e. pharmaceutical products.
5. Parties’ Contentions
The Complainants submit the following :
(i) The domain names <lipostabil2u.com> and <lipostabilnet.com> are quite identical to the trademark "LIPOSTABIL" registered by the Complainants; the only difference are the suffixes "2u" or "net" which are not such as significantly influencing the overall impression produced by the domain name dominated by the term "LIPOSTABIL".
The domain names <lipostabil2u.com> and <lipostabilnet.com> entirely reproduce the term "LIPOSTABIL" which is a neologism invented by A.NATTERMANN & Cie Gmbh and is therefore highly distinctive.
The word LIPOSTABIL is a contraction of the words "LIPOSUCTION" and "STABILISATION".
Moreover, the term "2u" does not prevent the public from thinking that this domain name is somehow connected to the LIPOSTABIL trademark as it is well known that "2u" is the abbreviation of the English words "to you". As for the term "net" it is clear for every consumers that it refers to the word "internet".
The mere addition of "2u" or ‘net" which are added in second position in front of the dot com are terms of secondary importance and are not sufficient to suppress the likelihood of confusion which stems from the use of the word LIPOSTABIL which is the main and attractive word.
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the domain names that are the subject of the Complaint.
The Respondent does not have any legitimate interest to use the domain names <lipostabil2u.com> and <lipostabilnet.com> since neither the term "Rich" nor the term "SITES" has any resemblance with the word "LIPOSTABIL".
The domain name <lipostabil2u.com> leads to a home page describing the specifications of the drug created and sold by the Complainants (Annex 7.1 to the Complaint); moreover, a domain name <lipostabilnet.com> does not lead to any page but is also owned by Rich SITES (Annex 7.2 to the Complaint).
Moreover, Rich SITES has never been authorized to present or sell LIPOSTABIL products or to use this trademark or to register any domain names incorporating the above-mentioned trademark.
As a result, the circumstances described under Paragraph 4(b)(iv) of the Policy are met.
In addition, LIPOSTABIL is mentioned as an AVENTIS’ product on the Respondent’s websites (Annex 6.1. and Annex 7.1 to the Complaint).
The Respondent has clearly adopted the A.NATTERMANN & Cie Gmbh’s trademarks and AVENTIS’ trade name for his own use, and incorporated them into his domain names without the authorization of the Complainants.
This use is strictly made in reference to the LIPOSTABIL trademarks. The absence of rights or legitimate interests of the Respondent in respect of the domain name is therefore demonstrated.
(iii) The domain name should be considered as having been registered and used in bad faith.
The Respondent was aware at the time of the registration of the litigious domain name of the existence of the drug named "LIPOSTABIL" developed and sold by A.NATTERMANN & Cie Gmbh and AVENTIS, and the trademark "LIPOSTABIL" owned by A. NATTERMANN & Cie Gmbh and AVENTIS.
The Respondent registered its domain names in order to abusively take benefit from the Complainants’ notoriety. The LIPOSTABIL trademark has been created in the 50’s and since then, has become a world-famous trademark.
Moreover, by registering these domain names, the Respondent seeks to attract Internet users who mis-enter or misspell Complainants' name when seeking to find information about the LIPOSTABIL product.
Concerning the domain name <lipostabil2u.com>, its use made by the Respondent leads to a risk of confusion within the meaning of Paragraph 4(b)(iv) of the Policy.
The website contains a description of the LIPOSTABIL drug known for its use against fat and give the possibility to order it; the original packaging of the drugs sold by the AVENTIS Group is presented on the home page of the website (Annex 7.1 the Complaint); moreover, the Respondent’s website is used in reference to the trademark and trade name of the Complainants as on its website the Respondent keeps referring to AVENTIS (Annex 7.1 to the Complaint).
Consequently, the reproduction of the trademark, the trade name and the products of the Complainants, without having been authorized, creates a confusion for consumers who want information about the drug sold by AVENTIS and A.NATTERMANN & Cie Gmbh. The consumer may therefore believe that there is an official affiliation between the website "www.lipostabil2u.com" and the Complainants.
Furthermore, it must be pointed out that LIPOSTABIL has not been approved yet by the US Food and Drug Administration (FDA). Until this approval, the product cannot be marketed or sold directly to the consumers in this country (Annex 8 to the Complaint). Consequently, the fact that the website offers to sell LIPOSTABIL to the American consumers and that it states that it is "Now available in the US" (see Annex 6.1 and 7.1) and "Now used by doctors in the US" (see Annex 6.2), as if this product had received the US Food and Drug Administration (FDA) approval, is misleading and does not comply with the American drug legislation.
Therefore, having undoubtedly the knowledge of the Complainants’ trademark LIPOSTABIL, the Respondent can be assumed to have been aware of the risk of deception and confusion that would inevitably follow when using the domain name, since this could give the impression that the website, and thus the Respondent, was somehow endorsed by the Complainants.
Moreover, this domain name was registered and is being used for a commercial purpose as the domain name <lipostabil2u.com> is not only a website giving information to patients and consumers, but also selling LIPOSTABIL (see Annex 7.1).
The Respondent creates a confusion for consumers who may believe that there is an official affiliation between the owners of the trademark, i.e. the Complainants, and the website <lipostabil2u.com>. By using on this website the trademark of the drug sold by the Complainants, its original packaging and the trademark AVENTIS itself, the Respondent intentionally benefits of the fame of the trademark of the Complainants for financial gain.
As a result, the circumstances described under Paragraph 4(b)(iv) of the Policy are met.
Concerning the domain name <lipostabilnet.com> it does not lead to any page but is also owned by the Respondent. This absence of use demonstrates the bad faith of the Respondent whom doesn’t need this domain name.
There is no doubt that the disputed domain names are registered and being used in bad faith with the only purpose to benefit from the reputation of the trademark and trade name of the Complainants.
The Respondent did not reply to the Complainants’ 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) Respondent’s 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) Respondent’s 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 Complainants have established their rights in the trademark "LIPOSTABIL" with various registrations for such a name (see Annex 4 to the Complaint), especially in the country where the Respondent is registered, i.e. in the USA.
The Complainants have submitted conclusive evidence that their trademark "LIPOSTABIL" is confusingly similar to the domain names <lipostabil2u.com> and <lipostabilnet.com>.
The main difference between the disputed domain name and the Complainants’ mark is the addition of "2u", respectively "net" before the Complainants’ mark which does not render the disputed domain names totally distinctive from the Complainants’ 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 instant matter to depart from these decisions under the circumstances described above and not rebutted by the Respondent.
For the above reasons, the Panel finds that the disputed domain is confusingly similar to Complainants’ trademark "LIPOSTABIL".
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.
Absent evidence to the contrary, the Complainants, as underlined in their Complaint, have not granted any license or otherwise permitted the Respondent to use the trademark in question or to apply for any domain name incorporating the said trademark. In addition, the Respondent is not commonly known by the domain names in question as rightly submitted by the Complainants.
Furthermore, it is worth mentioning that, at least, the Respondent is using the domain name <lipostabil2u.com> for commercial purpose.
Regarding the domain name <lipostabilnet.com>, it cannot be inferred from the evidence available in the file that Respondent has undertaken 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 within the meaning of Paragraph 4(c)(I) of the Policy referred to above.
Under these particular circumstances, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain names 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 complainant’s 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 names in issue.
Much to the contrary based on the contentions restated above, it is the Panel’s finding that the Complainant has established, with conclusive evidence, (see Annex 6 to the Complaint) a prima facie case that the Respondent, clearly, behaved according to the circumstances described under Paragraph 4(b)(iv) of the Policy, at least as far as the domain name <lipostabil2u.com> is concerned.
Regarding the domain name <lipostabilnet.com>, the related web site is not active. The issue then is whether passive use constitutes bad faith registration and use. This may be so according depending on the circumstances of the case (see Telstra Corporation Ltd. V. Nuclear Marshmallows, WIPO Case No. D2000-0003). Considering that the Registrant, i.e. the Respondent, also registered <lipostabil2u.com> under the circumstances described above, the bad faith use of <lipostabilnet.com> should be admitted, at least within the general meaning of Paragraph 4(b) of the Policy.
As regards bad faith registration, the Administrative Panel follows the Complainants’ contentions that the Respondent was undoubtedly aware, at the time of the registration of the domain names in issue, of the existence of the "LIPOSTABIL" product developed and sold by the Complainants.
Therefore, the Administrative panel finds that the domain names <lipostabil2u.com> and <lipostabilnet.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 names <lipostabil2u.com> and <lipostabilnet.com> be transferred to Aventis Pharma SA.
Dated: November 13, 2003