WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis, Aventis Pharmaceuticals Holdings Inc. and Aventis (Ireland) Ltd v. Skin Provement
Case No. D2006-0100
1. The Parties
The Complainants are Sanofi-aventis, Aventis Pharmaceuticals Holdings Inc. and Aventis (Ireland) Ltd, Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.
The Respondent is Skin Provement, New York, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2006. On January 23, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On January 24, 2006, Go Daddy Software 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 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2006.
The Center appointed Zbynek Loebl as the sole panelist in this matter on March 1, 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.
4. Factual Background
The Complainants are Sanofi-Aventis, and its affiliate companies Aventis Pharmaceuticals Holdings Inc. and Aventis (Ireland) Ltd. Sanofi-Aventis is one of the leading pharmaceutical companies. Sanofi-aventis has developed and sold throughout the world under the trademarks SCULPTRA and NEWFILL/ NEW-FILL a drug used for the restoration and/or correction of facial lipodistrophy in people with human immunodeficiency virus or cancer.
Aventis (Ireland) Ltd. owns SCULPTRA trademarks registered for classes 5,10 and 44 in numerous countries (including the USA, Australia, Benelux, Denmark, France, Germany, Hong Kong, Ireland, Japan, Mexico, New Zealand, Switzerland, and the UK).
Aventis Pharmaceuticals Holdings Inc. owns the following trademarks:
- LIPOATROPHY for classes 38, 41 and 42 in France;
- Community trademark NEWFILL in classes 5 and 42;
- American NEW-FILL trademark in classes 5, 10 and 44;
- NEWFILL and NEW-FILL trademarks in several other countries.
The Complainants registered among others the following domain names:
- <scupltra.com>, registered on March 23, 2002,
- <scupltra.net>, registered on June 10, 2003,
- <scupltra.org>, registered on June 10, 2003,
- <scupltra.us>, registered on April 8, 2004,
- <sculptra.fr>, registered on April 8, 2004,
- <sculptra.co.uk>, registered on April 2, 2004,
- <new-fill.com>, registered on June 6, 2000,
- <lipoatrophy.us>, registered on November 27, 2003,
- <lipoatrophy.info>, registered on September 29, 2003,
- <lipoatrophy.org>, registered on September 29, 2003, and
- <lipoatrophy.net> registered on September 29, 2003.
The Respondent registered the following domain names on June 23, 2004:
- <sculptramanhattan.com> and
5. Parties’ Contentions
The Complainant contends that the domain names <newfill.biz>, <scupltra.biz> and <lipoatrophy.biz> reproduce entirely trademarks owned by the Complainant and are confusingly similar to the trademarks and domain names in which the Complainant has rights.
With respect to the domain names <sculptranewyork.com> and <scupltramanhattan.com>, the Complainant contends that the reproducing of the Complainant’s trademark SCUPLTRA in its entirety as the first and dominant part of the contested domain names is confusingly similar to this trademark, and the suffices “New York” and “Manhattan” do not provide any elements of distinction, since they constitute only geographic indications.
With respect to the domain name <sculptralipodystrophy.com>, the Complainant contends that it is confusingly similar since it reproduces entirely the trademark SCUPLTRA of the Complainant regardless of its other element, which is only descriptive of the medical problem for which Sculptra is applied.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the above mentioned domain names and that the domain names were registered and used in bad faith, since i) before the registration of these domain names, the Respondent must have been aware of the existence of the drugs, trademarks mentioned above as well as the related domain names registered by the Complainant and ii) the stated purpose of the web site reached through the contended domain names is to make advertising relating to the activity of Skin Provement, which is a dermatology center. The Complainant sent to the Respondent a cease and desist letter explaining that the use of the six domain names mentioned above constituted a breach of the prior rights of Sanofi-aventis to the related trademarks, to which the Respondent did not answer.
The Complainant requests transfer of the domain names <newfill.biz>, <lipoatrophy.biz>, <lipoatrophy.biz>, <sculptra.biz>, <sculptralipodystrophy.com>, <sculptramanhattan.com>, and <scupltranewyork.com> to Aventis Pharmaceutical Holdings Inc.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names wholly incorporate the Complainant’s trademarks and domain names, which is sufficient to establish confusing similarity despite the addition of other words to the trademarks (See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Adding geographic suffixes as in the case of the <sculptramanhattan.com>, and <scupltranewyork.com> domain names or adding words descriptive of the medical problem the trademarked product is used to cure , as in the case of the <sculptralipodystrophy.com> domain name, contribute to possible confusion.
The generic tld indicator such as “biz” is not to be taken into consideration when assessing identity and confusing similarity (See, e.g. Hay&Robertson International Licensing AG v. C.J. Lovik, WIPO Case No. D2002-0122 or BG Bank v. Kim Hansen, WIPO Case No. D2002-0643).
The Respondent’s domain names are confusingly similar to the Complainant’s trademarks. The condition of Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
There is no evidence that the Respondent makes non-commercial and fair use of the domain name in dispute without intention to divert consumers, as addressed under Paragraph 4(c) of the Policy. Furthermore, there is no evidence that the Respondent has any connection or affiliation with the Complainant.
No one from the group Sanofi-aventis has consented to the Respondent’s use of the trademark or the application for any domain name incorporating the terms newfill, lipoatrophy, sculptra or sculptralipodystrophy..
In addition, the Complainants’ evidence shows that the websites reached through the disputed domain names leads customers to dermatology center that proposes treatments regarding lipodystrophy disease as well as drugs competing with the Complainant’s products. Therefore, it appears that the Respondent is using the disputed domain name to misleadingly divert consumers for commercial gain.
Based on the record and in the absence of any submission by the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in respect to the domain name, as set forth in the Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Despite the fact that it must have known of the Complainant’s domain names, websites, trademarks, and products, the Respondent still registered confusingly similar domain names to the Complainants’ trademarks. The fact that the Respondent is aware of the Complainant is proven by the use of the disputed domain names in reference to the Complainants’ trademarks and on the websites to which the domain names lead to, which offer solutions for the treatment of facial lipodistrophy with use of competing drugs to the Complainants’ products..
The Panel finds that the Respondent intentionally attracts Internet users to its website for commercial gain and creates confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, as addressed within the meaning of Paragraph 4(b)(iv) of the Policy.
In light of the above, the Panel finds that the disputed domain name has been registered and is being 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, <newfill.biz>, <lipoatrophy.biz>, <sculptra.biz>, <sculptralipodystrophy.com>, <sculptramanhattan.com>, and <sculptranewyork.com> be transferred to Aventis Pharmaceutical Holdings Inc.
Dated: March 13, 2006