WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merrell Pharmaceuticals Inc. v. Awad Kajouk
Case No. D2005-0401
1. The Parties
The Complainant is Merrell Pharmaceuticals Inc of Greenville, Delaware, United States of America, represented by Carole Tricoire, France.
The Respondent is Awad Kajouk, Manama, Bahrain.
2. The Domain Names and Registrar
The disputed domain names are <pharmacy-online-allegra.com> and <pharmacy-online-allegra-d.com>, which are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2005, joined together with a complaint by Aventis Pharma SA of Antony, France, against the same Respondent, but in respect of the domain name <pharmacy-online-nasacort-aq.com> (WIPO Case No. D2005-0716).
On April 15, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names 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.
On its own motion, the Panel deliberated the admissibility of the Complaint. The 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 on June 23, 2005, the Panel issued a Procedural Order severing the Complaint into two separate Complaints, and giving various consequential orders. This Complaint, between Merrell Pharmaceuticals Inc. v. Awad Kajouk, in respect of the domain names <pharmacy-online-allegra.com> and <pharmacy-online-allegra-d.com> now falls to be dealt with in the present case. In this regard, the Panel will disregard evidence relevant to domain names other than the domain names in question.
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 United States of America, 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 ALLEGRA is registered as a trademark in the US, Canada, Mexico, Argentina, Brazil, South Africa and China. Additionally the brand name ALLEGRA-D is registered as a trademark in the US and Taiwan. The Complainant has submitted copy registration certificates for these trademarks.
The Complainant also operates online, and is the incumbent registrant for <allegra.com>, <allegro-d.com> and <allegrad.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 names are, 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
The Complainant observes that the domain names in question contains its exact trademarks, ALLEGRA and ALLEGRA-D, and contends that, notwithstanding the additional script in the domain names in question, they are either identical or confusingly similar to a trademark in which the Complainant has rights.
It observes that the domain names in question reproduce entirely the trademarks, 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 names in question as they bear 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 trademarks or to register any domain name incorporating the trademarks.
Finally, the Complainant contends that the domain names in question were registered and used in bad faith because they correspond to trademarks 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 names in question. Moreover it asserts that the likelihood of confusion between the domain names in question and the Complainant’s trademarks 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.get-well-pharmacy” offering drugs and medicines to which it claims the domain names in question resolved.
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 word “Allegra” is used in connection with a hotel in Germany. It added 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 names in question.
6. Discussion and Findings
The domain names in question are 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 names in question are identical to the trademarks relied upon. The additional text does not substantially alter the character and integrity of the domain names to render them 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 names. 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 names is suggestive of bad faith. Had the Respondent demonstratively prepared to legitimately use the domain names 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 names, when the Respondent has not demonstrated any rights or legitimate interests in the domain names, and the fact that the disputed domain names are connected to a pornographic site from which the Respondent possibly derives revenue, the Panel finds use 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, in respect of the domain names, are <pharmacy-online-allegra.com> and <pharmacy-online-allegra-d.com>:
(i) The domain names are 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 names in question;
(iii) The domain names in question were registered and are being used in bad faith;
(iv) The domain names in question be transferred to Complainant.
Dated: July 13, 2005