WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis and Sanofi-Aventis Deutschland GmbH v. James Dorado
Case No. D2006-1090
1. The Parties
The Complainant is Sanofi-Aventis, of Paris, France and Sanofi-Aventis Deutschland GmbH of Frankfurt, Germany, represented by a legal representative of Marchais de Conde of Paris, France.
The Respondent is James Dorado, of Ohio, United States of America.
2. The Domain Name and Registrar
The disputed domain name <actamaryl.com> is registered with GO DADDY Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2006. On August 28, 2006, the Center transmitted by email to GO DADDY Software Inc a request for registrar verification in connection with the domain name at issue. On August 28, 2006, GO DADDY Software, Inc transmitted, by email, to the Center its verification response confirming that the Respondent is not listed as the registrant and providing the contact details for the administrative, billing, and technical contact of the correct registrant. The Center determined that an incorrect identification of the registrant was used in the Complaint and on August 29, 2006, notified the Complainant of a formal deficiency. On September 1, 2006, the Complainant filed an amendment to correct the Complaint with the Center. The Center then 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 September 4, 2006. In accordance with the Rules, under paragraph 5(a), the due date for Response was September 24, 2006. No Response was filed.
The Center appointed John Terry as the sole panelist in this matter on October 9, 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 has satisfied the Panel that the Complainant entities are each members of a large, multinational, pharmaceutical group operating in over one hundred countries. In the field of diabetes, Sanofit-Aventis has developed and sells throughout the world under the trademark AMARYL-a drug with demonstrated utility for correction of insulin deficiency. The product “Amaryl” was launched in 1995 and is sold in more than 100 countries.
Relevant information related to this product is available on a website, the address of which is “www.amaryl.com”, which is the Complainant’s official website as evidenced by Annexure 6 to the Complaint.
5. Parties’ Contentions
The Complainant contends that the domain name <actamaryl.com> is confusingly similar to the trademark AMARYL, in which the Complainant has rights and has trademark registrations, which are particularized in the Complaint. The Complainant contended for the application of the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No D2001-0903, 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 domain name <actamaryl.com> reproduces entirely the Complainant’s trademark AMARYL, which as itself has no particular meaning and is therefore highly distinctive.
The added prefix “act-” used in the present domain name <actamaryl.com> is not “sufficient to avoid the likelihood of confusion as this adjunction is too tenuous and insubstantial”.
The reproducing of the Complainant’s trademark in its entirety as the first and dominant part of the contested domain name is confusingly similar to the Complainant’s trademark regardless of additional elements.
The Complainant further relied on the principles in Dell Inc. v. Derick Appert, WIPO Case No D2005-0177.
The Complainant further contends:
(a) The Respondent has no rights or legitimate interest in the domain name and relies on evidence that the address “www.actamaryl.com” directs enquiry to a parking site having a home page, which is set out in the Complaint.
(b) The Respondent has no connection with the Complainant and has never been provided with any license or permission to register the present domain name in dispute.
(c) That the domain name was registered and is being used in bad faith, relying on the proposition that the mark “AMARYL” is a famous trademark of the Complainant which is the subject of several domain name registrations including <amaryl.com> and <amaryl.us> which lead to websites providing considerable details of its product, marketed under the trademark AMARYL.
(d) That the Internet address “www.actamaryl.com” leads to a home page having a number of hyperlinks to websites offering a large selection of drugs, including drugs for diabetes treatment and that the obvious intent of the Respondent was “to attract Internet users to the Respondent’s website in the belief that it has some connection with the Complainant’s trademark when in fact there was no such connection”.
(e) That a demand was served by email on the Respondent alleging that use of <actamaryl.com> constituted a breach of the Complainant’s prior rights in the trademark AMARYL. No Response whatsoever was received and the Complainant relies on the decision in The HongKong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915, that the Panel should draw on adverse inference against the Respondent and this reinforces bad faith, registration and use.
(f) That the Respondent intends to benefit from the fame of the Complainant’s trademarks for financial gain. The Respondent draws attention to links from the Respondents website and relies on the principles used in the decision of Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377.
(g) There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name <actamaryl.com> or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(h) The Respondent has not been commonly know by the domain name <actamaryl.com>.
(i) That the Respondent is not making a legitimate non-commercial or fair use of the domain name and that the Respondent has no rights or legitimate interests in respect of the domain name.
(j) That the proper remedy is transfer of the present domain name.
No Response was filed by the Respondent.
6. Discussion and Findings
For the Panel to find for the Complainant three elements must be satisfied under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The registered AMARYL trademark of the Complainant is wholly contained in and is the distinct portion of the disputed domain name.
The Panel concludes that the present domain name <actamaryl.com> is confusingly similar to the trademark in which the Complainant has established rights. The WIPO UDRP cases cited by the Complainant are highly persuasive and the Panel adopts and follows the principles in these cases.
The Panel finds the Complainant has satisfied paragraph 4 (a)(i) of the Policy.
Paragraph 4(c) provides a non-limiting list of circumstances in which a respondent may establish it has rights and legitimate interests in the domain name.
While the overall burden of proof rests with the complainant, previous WIPO UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. A complainant is therefore generally required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (cf Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455).
In the present case, the Respondent has filed no Response. The Panel has therefore considered whether the material in the Complaint is sufficient to establish a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name.
Of the three alternative subparagraphs in paragraph 4(c), clearly paragraph 4(c)(i) is not relevant as there is no evidence before the Panel that the Respondent has made any bona fide offering of goods or services under the domain name in dispute. Furthermore, there is no evidence that supports any finding under paragraph 4(c)(ii) because the Respondent has not established it has been commonly known by the domain name in dispute. Under subparagraph (iii), the only evidence of activity of the Respondent, with respect to the domain name in dispute, is the evidence of the Complainant with regard to the Respondent’s website.
The evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to be a parked page containing a number of “sponsored links” of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit through a click-through revenue-sharing agreement with the parking service provider. One of the sponsored links is titled “Stop Using Insulin”, others appear to relate to financial and/or legislative compliance services. The Complainant has argued, in the Panel’s view persuasively, that such use is likely to mislead consumers and tarnish the trademark at issue. The Panel finds in any case that such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of paragraph 4(c)(iii) of the Policy.
The Panel finds that the Complaint has established a prima facie case that none of the three circumstances potentially available to the Respondent under paragraph 4(c) are applicable, and that the Respondent lacks rights or legitimate interests in the disputed domain name. This has not been rebutted.
The Panel finds accordingly that the Complainant has established the second element of the Policy.
The Policy provides in paragraph 4 (a)(ii) that the Complainant must prove that the domain name has been registered and is being used in bad faith, and paragraph 4(b) lists four specific, non-limiting circumstances, which, if established by the Complainant, are deemed to lead to a conclusion of registration and use of a domain name in bad faith.
In the present case, the circumstances referred to in paragraphs 4(b) (i), (ii) and (iii) are not applicable, and are not indeed the subject of contentions by the Complainant. However, the circumstance of paragraph 4(b)(iv) is applicable, namely:
“(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 of a product or service on your website or location.”
The Panel accepts that the Complainant’s trademark is well-known internationally, and that the only evidence of use of the disputed domain name by the Respondent is consistent with the circumstances described under paragraph 4 (b)(iv) of the Policy.
The Panel notes in addition that the Respondent was in all likelihood aware of the existence of the Complainant’s trademark at the time of registration, as indicated by the inclusion of this highly distinctive mark in the disputed domain name. The resulting prospect for confusion between the Complainant’s well-known and distinctive mark and the disputed domain name must surely have been apparent at the time. The evidence before the Panel indicates that the Respondent has subsequently used (or allowed the use) of the domain name for the purpose of posting of “sponsored links” some of an apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith.
Further, in the event that the parked page at the disputed domain name has been established by a third party without active input from the Respondent, current bad faith use might be inferred from passive holding of a domain name in circumstances where (as in the present case) there is no evidence of any possible legitimate use of the domain name by the Respondent (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No.D2006-0003; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2006-0565).
The Panel finds accordingly that the disputed domain name was registered and used in bad faith.
7. Additional Remarks
This is not a case where complexity arises due to a characterizing part of the domain name in dispute being a trademark of a party not being the Complainant. Notwithstanding that the Complainant has not provided any evidence of use, adoption or rights in a trademark that is identical to the disputed domain name such as ACTAMARYL, the Panel accepts that the essentially non-distinctive prefix “act” in the present domain name is as discussed insufficient to offset a finding of confusing similarity. Having regard to the discussion above, this leads the Panel to decide that it is proper in all the circumstances to find the Complaint established and accordingly to order transfer of the domain name <actamaryl.com> to the designated member of the group of companies of the Complainant namely, Sanofi-Aventis Deutschland GmbH. In so doing the Panel is following the principles of numerous reported WIPO decisions such as Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005- 0037 and Inter-IKEA Systems B.V V. Technology Education Center WIPO Case No. D2000-0522.
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, <actamaryl.com> be transferred to the Complainant Sanofi-Aventis Deutschland GmbH.
Dated: October 11, 2006