Ares Trading S.A. v. Lava Marketing Services
Case No. D2006-0890
1. The Parties
The Complainant is Ares Trading S.A., Aubonne, Switzerland, represented by Ostrolenk, Faber, Gerb & Soffen, LLP, United States of America.
The Respondent is Lava Marketing Services, Miami Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <human-growth-hormone-saizen.org> (the “Domain Name”) is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2006. On July 13, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the Domain Name at issue. On July 13, 2006, 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. 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 July 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 24, 2006.
The Center appointed Antony Gold as the sole panelist in this matter on September 8, 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 Complainant asserted and provided evidence in support of the following facts which, unless otherwise indicated, the Panel accepts as established.
The Complainant is related to Serono S.A., a societe anonyme based in Geneva, and its American subsidiary Serono Inc. (collectively “Serono”). Serono is a pharmaceutical company specializing in the areas of reproductive health, multiple sclerosis, growth, metabolism and dermatology.
Serono produces a treatment administered by way of injection for sufferers of growth hormone deficiency, Turner’s Syndrome and chronic renal failure. The treatment is marketed and sold under the mark SAIZEN. Saizen works by replacing the growth hormone the body usually produces.
The Complainant is the owner and registered proprietor of US trademark registrations for the word mark SAIZEN (registered February15, 1994), and SAIZEN and design (registered August 24, 2004) which cover pharmaceutical preparations used to stimulate growth. In addition, the Complainant claims to have obtained numerous trademark registrations for its SAIZEN mark around the world. In point of fact, the trademark registration certificates submitted in support of the Complaint establish that these trademarks are actually registered to Ares Serono NV rather than to the Complainant.
The Complainant has registered the top level domain name <saizen.com>. The Complainant also claims to maintain country-specific websites and related domain name registrations. However, a number of the country specific domain names are actually registered in the name of other companies including, by way of example, Serono Canada Inc. (registrant of <saizen.ca>) and Serono Singapore Pte Ltd. (registrant of <saizen.com.sg>).
The Complainant contends that sales of Saizen totalled over USD $200 million worldwide in 2005. The Complainant further contends that over the past years Serono has expended significant time and effort in developing its mark SAIZEN. In addition, the Complainant submits that long and widespread use together with advertisement and promotion has resulted in it acquiring substantial goodwill in the SAIZEN mark.
The Complainant does not provide any details as to the initial registration and use of the Domain Name by the Respondent.
5. Parties’ Contentions
The Domain Name is virtually identical and confusingly similar to the trademark SAIZEN in which the Complainant has rights
The Complainant contends that the Domain Name is identical to and/or confusingly similar to the SAIZEN mark because the Domain Name makes use of the SAIZEN mark only in combination with the generic words “growth” and “hormone”. The Complainant relies on previous UDRP WIPO decisions namely Ares Trading S.A. v. Bill Edwards, Case No. D2005-0189 and Sanofi- Aventis v. V. Link, WIPO Case No. D2004-0810 to support its submissions in this respect.
The Complainant further contends that, given its own use of the SAIZEN mark on the Internet and as part of “www.saizen.com”, the Domain Name registered and utilised by the Respondent is likely to confuse those who see it or access it and will cause people to mistakenly believe that Serono is associated with the Domain Name or approves of the content of the website which is located there.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant states that the Respondent has no right or legitimate interest in the Domain Name. It is submitted that prior to the filing of this Complaint the Respondent had not used the Domain Name in connection with a bona fide offering of goods and services. In particular, the Complainant points out that the website which operates at the Domain Name prominently features an “Order Now” hyperlink to a third party website, “www.411pills.com”, where pharmaceutical products are offered for sale by companies other than the Complainant and the Respondent.
The Complainant contends that the promotion, advertisement and sale of third party goods by reference to its SAIZEN mark precludes any finding that Respondent is making a legitimate non-commercial or fair use of the Domain Name. The Complainant relies on the UDRP WIPO decision AltaVista v. Andrew Krotov, WIPO Case No. D2000-1091 in support of its submissions in this respect.
It is further submitted by the Complainant that there is no evidence that the Respondent is commonly known by or with reference to the Domain Name.
The Domain Name has been registered and is being used in bad faith
The Complainant asserts that the Respondent’s registration and use of the Domain Name as a means to attract consumers of Serono and its SAIZEN branded products to its own website for commercial gain (by linking visitors to its website to a third party website) demonstrates bad faith. The Complainant suggests that the referral of visitors by the Respondent to third party websites must be in return for some form of remuneration. The Complainant relies on UDRP WIPO decision Abbott Laboratories v. United Worldwide Express Co., Ltd, WIPO Case No. D2004-0088 in support of this submission.
In addition, the Complainant contends that the Respondent’s registration and use of the Domain Name creates confusion with the Complainant’s mark, SAIZEN, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. It is submitted that the unauthorized marketing and sales of third party products under and by reference to the Domain Name is damaging the Complainant’s reputation.
Finally the Complainant contends that the Respondent has provided false contact information as its e-mail and express mail to the Respondent were returned to the Complainant as “undeliverable”. The Complainant submits that the provision of false contact information further demonstrates bad faith. The Complainant concludes the failure of the Respondent to respond to its letter sent by FedEx (and received by the Respondent as confirmed by FedEx) also demonstrates bad faith. The Complainant relies on UDRP WIPO decision Nike Inc. v. Azumano Travel, WIPO Case No. D2000-1598 in this respect.
The Respondent did not reply to the Complainant’s submissions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires a Complainant to be able to establish the following in order to succeed with its Complaint;
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns rights in the mark SAIZEN as evidenced by its US trademark registrations together with the registration and use of the top level domain name <saizen.com>.
The Panel notes that not all of the trademark registrations or domain names referred to in support of the Complainant’s Complaint are registered to the Complainant but are registered to companies connected to the Complainant and which form part of the same group. The extent to which these registrations support the Complainant’s position is not fully explained in the Complaint. However, given the US trademark registrations and the registration of <saizen.com> to the Complainant, the registration of trademark rights and domain names to different legal entities in the same group does not detract from the fact that the Complainant has established that it has rights in the mark SAIZEN.
The Panel finds that the Domain Name is confusingly similar to the mark SAIZEN. The Domain Name incorporates the mark in question in its entirety. Such inclusion of a distinctive trademark in this way can alone render a Domain Name confusingly similar to a Complainant’s mark or a mark in which a Complainant has rights. The addition of the generic words “growth” and “hormone” merely describe SAIZEN and the type of product it is. The addition of these words does not prevent the Domain Name from appearing to be connected to the Complainant and in addition, they do not change the Panel’s finding that the Complainant’s mark SAIZEN and the Domain Name are confusingly similar.
Accordingly, the Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the absence of any response from the Respondent, the Panel accepts that there are no known circumstances which might suggest that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant states that the Respondent registered the Domain Name without the permission of the Complainant. There is no evidence which demonstrates or suggests that the Respondent is commonly known under or by reference to the Domain Name.
The Panel further accepts that the current use of the Domain Names does not amount to a bona fide offering of goods or services and there is no evidence which suggests that the Respondent is preparing to use the Domain Name in that way.
The Respondent has not taken the opportunity to rebut the Complainant’s submissions in this respect or at all and the Panel can find no evidence to suggest that any circumstances set out in paragraph 4(c) of the Policy are applicable. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect if the Domain Names and that the Complainant satisfies paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non exhaustive list of circumstances which are regarded as evidence of the Respondent’s bad faith in registering the Domain Name. Paragraph 4(b)(iv) provides that such evidence can be found in the event that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant contends that the Respondent’s registration and use of the Domain Name is a means to attract consumers of Serono and its SAIZEN branded products to its own website and subsequently to the websites of third party companies which offer pharmaceuticals for sale. As such, it is submitted that the Respondent’s registration and use of the Domain Name is for commercial gain. The Complainant further submits that the use of the generic words “growth” and “hormone” together with its trademark SAIZEN is so similar as to cause a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website or location. The Panel accepts the Complainant’s submissions in this respect and concludes, given the above, that the Complainant has successfully demonstrated all points necessary under paragraph 4(b)(iv) of the Policy required to demonstrate bad faith on behalf of the Respondent.
Accordingly, the Panel finds that the Domain Name was registered in bad faith and the Complainant also satisfies paragraph 4(a)(iii) of the Policy. Having concluded that the Domain Name was registered and used in bad faith, it is not necessary to consider whether there are any additional circumstances which might also constitute evidence of bad faith pursuant to the non exhaustive list of factors set out in paragraph 4(b) 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 Name <human-growth-hormone-saizen.org> be transferred to the Complainant.
Dated: September 22, 2006