WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventis Pharmaceuticals Holdings Inc. and Aventis Ltd v. Eugene Mandrea
Case No. D2005-1264
1. The Parties
The Complainants are Sanofi-Aventis of Paris, France, Aventis Pharmaceuticals Holdings Inc. of Greenville, United States of America, and Aventis Ltd of Dublin, Ireland (hereafter referred to, individually and collectively, as “Complainant”), represented by Selarl Marchais De Candé, France.
The Respondent is Eugene Mandrea, Chicago, Illinois, of United States of America.
2. The Domain Names and Registrar
The disputed domain names <sculptrachicagolasers.com> and <sculptrapaloslasers.com> are registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 8, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On December 9, 2005, Melbourne IT trading as Internet Names Worldwide 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 13, 2005. The Center verified that the Complaint, together with the amendment to 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”).
On December 13, 2005, the Center received the Complainants request for a 30 days suspension of the administrative proceedings, due to the fact that Complainant were in discussion with the Respondent in order to find an amicable settlement agreement. On December 14, 2005, the Center confirmed the suspension of the administrative proceedings until January 14, 2006.
On January 13, 2006, the Center received an e-mail from the Complainant, informing that the negotiations had been unsuccessful and asking the Center to re-institute the proceedings.
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 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2006. On January 19, 2006, the Center received an e-mail from the Respondent, stating that the disputed domain names had been annulled and that they were “nonexistent”. The Center informed the Respondent on the possibilities to submit an official Response. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2006.
The Center appointed Petter Rindforth as the sole panelist in this matter on February 13, 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.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
Sanofi-Aventis was founded in August 20, 2004, after the merger between Sanofi-synthelabo and Aventis. As a result of the merger, Aventis Pharmaceuticals Holdings Inc. and Aventis Ltd, are affiliate companies of the group Sanofi-Aventis.
The Complainant is a leading pharmaceutical company, offering a wide range of patented prescription drug to treat patients with serious diseases. In the field of dermatology, the Complainant has developed and sold throughout the world under the trademarks SCULPTRA a drug with demonstrated utility for restoration and/or correction of the signs of facial fat loss (lipoatrophy) in people with human immuno deficiency virus or cancer. A printout from the official website “www.sculptra.com” is provided as Annex 3 of the Complaint.
The Complainant is the owner of the following trademarks for SCULPTRA:
US Reg. No. 3056196, filed on June 25, 2003, and registered January 31, 2006 in Classes 5, 10 and 44.
Australian Reg. No. 987968
Belizean Reg. No. 2274.04
Benelux Reg. No. 0750639
Danish Reg. No. VR 2004 00968
French Reg. No. 03 3 257 464
German Reg. No. 30406574
Hong Kong Reg. No. 300154160
Irish Reg. No. 229548
Japanese Reg. No. 4770371
Mexican Reg. No. 840151
New Zealander Reg. No. 707819
Swiss Reg. No. 520384
United Kingdom Reg. No. 2355273
The trademarks are registered in respect of pharmaceutical products (class 5), surgical implants comprised of artificial material for therapeutic, cosmetic and esthetic surgery (class 10), and cosmetic, plastic and restorative surgery (class 44). Copies of Certificates of Registration and/or printouts from official databases are provided as Annexes 4 – 17 of the Complaint.
The Complainant is also the holder of several domain names to present its Sculptra product on the web, such as: <sculptra.com>, <sculptra.net>, <sculptra.org>, <sculptra.us>, <sculptra.fr>, <sculptra.co.uk>, and <sculptra.com.mx>, registered between March 2002 and April 2004 (printouts from respective Whois database provided as Annexes 18 – 24 of the Complaint).
The Respondent registered the domain names on March 2, 2005. No detailed information is provided about the Respondent’s business activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant states that the disputed domain names are confusingly similar to the trademark SCULPTRA, as they reproduce entirely -as the first and dominant part- the trademark SCULPTRA which as itself has no particular meaning and is therefore highly distinctive. The additional elements do not lessen the similarities to the mark. The Complainant refers to Oki Data Americas, Inc v. Asdinc.com, WIPO Case No. D2001-0903 in which the Panel held that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”
The suffixes “chicago” and “palos” do not distinguish the Respondent’s domain names as they are geographic indications corresponding to two US cities, namely, the location of the two offices of the Respondent Dr. Eugene Mandrea (Annex 27 of the Complaint). Furthermore, the word “lasers” is descriptive of an activity for removing certain cosmetic problems like lipoatrophy.
The Complainant further states that the Respondent is not a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks. The disputed domain names are linked to Respondent’s website under “www.lakeviewderm.com”, which promotes the Respondent’s business activities including medical and surgical dermatology solutions. Thus, the Respondent has no legitimate interest in the domain names.
The Complainant argues that the disputed domain names are registered and used in bad faith. When registering the domain names the Respondent had knowledge of the Complainant’s drug under the name Sculptra, the trademarks as well as the domain names and corresponding official web sites presenting Sculptra. This is evident given the fact that Respondent is referring to the trademark SCULPTRA under the web sites using the disputed domain names:
“Sculptra™ is a synthetic injectable biochemical material composed of Polylactic acid. Polylactic acid is biocompatible (it does not harm the body) and biodegradable (able to be disposed of by the body). It has been used for many years in absorbable sutures.
Sculptra™ works by stimulating collagen production by the skin's own fibroblasts, thereby thickening the skin. Thus, it can be used to correct certain cosmetic problems such as loss of fat in the cheeks and temples, undereye circles, mid and lower facial wrinkles, folds and furrows. It will not stop fat loss nor its cause, but it will correct deformities caused by fat loss resulting from aging, HIV lipoatrophy and other medical conditions.”
Respondent’s use of the domain names creates confusion for the consumers, who may even believe that the domain names point to the official web sites of the Complainant or at least that there is an official affiliation between Respondent and the Complainant.
Moreover, the Respondent is using the domain names not only for information, but also to make personal advertisement for his medical activities in order to attract new patients. By stating that “We are now using Sculptra in patients who need enhancement of their cheeks and reduction of deep wrinkles/furrows”, the Respondent creates the false impression that he is officially recognized, or even accredited, by the Complainant.
The Complainant states that there is no doubt that by using the disputed domain names, the Respondent intentionally benefit of the fame of the trademarks of the Complainant for financial gain.
The Complainant sent cease and desist letters via e-mail to the Respondent on May 11, 2005 and September 26, 2005. The Respondent did not reply. The lack of reply from Respondent is also an indication of bad faith. Complainant here refers to The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915, stating that “The Respondent did not respond substantively to the Complainant’s cease and desist letter. […] the Respondent has chosen not to respond to the complaint. All in all, the Panel finds that the Respondent’s failure to express any denial or explanation despite various opportunities offered to him reinforces the inference of bad faith registration and bad faith use.”
The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Panel issue a decision that the domain names be transferred to the Complainant Aventis Ltd.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s Domain Name 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 Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has several trademark registrations for the word mark SCULPTRA (Annexes 4 – 17 of the Complaint).
The relevant part of the domain names are “sculptrachicagolasers” and “sculptrapaloslasers”.
Both domain names consist of the Complainant’s registered trademark SCULPTRA, with additions. As stated by the Complainant, with references to previous UDRP decisions, the addition of other terms does not automatically create a domain name that is not identical or confusingly similar to an existing trademark.
In this particular case, the additions “chicago” and “palos” refers to two US cities and the term “lasers” is a descriptive term for a treatment used for cosmetic problems. It seems that the domain names are created in order to give the public the impression that the product under the trademark SCULPTRA may be found in Chicago and Palos (where Respondent also has his offices). “Lasers” refers to a medical cosmetic treatment and even if Sculptra is not used for or with laser technique, the said generic word associates both to the Complainant’s products and the services of the Respondent.
It is the opinion of this Panel that the two disputed domain names clearly associates with Complainant’s distinctive trademark, making both domain names confusingly similar to Complainant’s mark SCULPTRA.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark SCULPTRA.
By not submitting a formal Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain names.
Respondent’s use of the domain names for commercial web sites with advertisment for his own services, where treatment with Sculptra is mentioned together with other preparations, cannot constitute a bona fide use of the domain names pursuant to paragraph 4(c)(i) of the Policy. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).
The Panel therefore concludes that the Respondent has no legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Respondent is a medical doctor active in the cosmetic dermatology business (as shown by Annex 27 of the Complaint), and should as such be well aware of the fact that SCULPTRA is a trademark owned by another company. By the time of the registration of the disputed domain names, the Complainant had a pending trademark application in the US, registrations in a number of other countries and had advertised Sculptra on the Internet for several years through a number of web sites incorporating Sculptra in their URL’s.
Further, the Respondent is referring to Sculptra as a trademark on his web site, using the TM symbol, however with no reference to the Complainant as the trademark owner.
The generic additions of the name of the cities Chicago and Palos as part of the domain names also indicate bad faith. Respondent’s two offices are situated in Chicago and Palos (Heights), thereby making a direct reference to his practice and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or business.
The Panel finds it most likely that the domain names are created, registered and used by the Respondent in an intentional attempt to benefit of the goodwill of Complainant’s trademark for financial gain.
This Panel concludes that the domain names are both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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, <sculptrachicagolasers.com> and <sculptrapaloslasers.com> be transferred to the Complainant Aventis Ltd.
P-E H Petter Rindforth
Dated: February 27, 2006