WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy
Case No. D2006-1113
1. The Parties
The Complainants are Sanofi-Aventis of Paris, France and Merrell Pharmaceuticals, Inc. of Cincinati, Ohio (referred to in this decision as “the Complainants”) represented by Selarl Marchais De Candé of Paris, France.
The Respondent is Smart Med Pharmacy of Manitoba, Canada.
2. The Domain Names and Registrar
The disputed domain names are <plavixcanada.com> and <allegracanada.com> (collectively referred to as the “Domain Names”). These names are registered with Go Daddy Software Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2006. On September 1, 2006, the Center transmitted by email to Go Daddy Software Inc a request for registrar verification in connection with the Domain Names at issue. On September 1, 2006 Go Daddy Software Inc transmitted by email to the Center its verification response confirming that the Respondent was 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 September 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on October 4, 2006.
The Center appointed Antony Gold as the sole panelist in this matter on October 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.
4. Factual Background
The Complainants assert and provide evidence in support of the following facts which, unless otherwise indicated, the Panel accepts as established.
Sanofi-aventis was formed in 2004 as a result of a merger between Aventis SA and Sanofi-Synthelabo. This created the largest pharmaceutical group in Europe and the third largest in the world. Sanofi-aventis now has a presence in more than 100 countries across 5 continents.
Merrell Pharmaceuticals, Inc. is a company within the Sanofi-aventis group.
The group has a large portfolio of high growth drugs and employs almost 100,000 people worldwide.
Amongst the drugs developed and sold by Sanofi-Aventis is Allegra, which treats the symptoms of seasonal allergies and is marketed in a number of countries, including Canada. Another drug is Plavix, which is used for the treatment of certain cardiovascular and cerebrovascular diseases. Plavix has been commercialised since 1998 and is available in more than 80 countries.
The Complainants have extensive trademark protection for ALLEGRA. Details have been provided of registered marks in the US, Canada, Mexico, Argentina, Brazil and South Africa. Similarly, the trademark PLAVIX is protected as an international mark which designates a large number of countries as well as by (amongst other marks) trademarks in France, the UK, the US and Canada. The Complainant also has websites at <allegra.com> and <plavix.com> to promote its products.
The Complainant provides evidence that if the address at the website “www.plavixcanada.com” is accessed, it takes the user to a website at “www.smartmed.ca”. The home page of this site describes itself as a “Canadian pharmacy source for affordable Canada drugs”. Accessing the website at “www.allegracanada.com” takes the user to a site the home page of which purports to provide outline information about the Complainant’s drug Allegra. However, the links button on the home page of the site takes the user to a directory page. The contact page on the site takes the user to a page containing a banner ad which, when clicked, takes the user to the website at “www.smartmed.ca”.
5. Parties’ Contentions
The Domain Name is virtually identical and confusingly similar to the trademarks ALLEGRA and PLAVIX in which the Complainant has rights.
The Complainants contend that the Domain Name <allegracanada.com> is identical to and/or confusingly similar to the ALLEGRA mark because the Domain Name makes use of the ALLEGRA mark in combination with the word Canada. The same point is made in relation to the Domain name <plavixcanada.com> and the mark PLAVIX. The Complainants assert that confusing similarity is established when a domain name incorporates a Complainant’s trademark in its entirety despite the addition of other words. In support of this contention they refer to Oki Data Americas, Inc v. ASD, Inc; WIPO Case No. D2001-0903; as well as to America Online, Inc v. Dolphin@Heart; WIPO Case No. D2000-0713. This latter case related to a number of domain names including <aolfrance.com>, <aolgermany.com>, etc. In this case, the panel said that “A consumer or user of the internet viewing the address www.aolfrance.com is likely to assume that Complainant is the sponsor of or associated with the website identified by the disputed domain name.”. The Complainants say that the same applies to the addition of the geographic identifier Canada to their trademarks.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainants state that the Respondent has no right or legitimate interest in either of the Domain Names. The Complainants point out that Smart Med Pharmacy has nothing to do with and is completely different from the Complainants’ business. They say that the Respondent does not need to use the Domain Names as the Respondent is already the owner of a site, <smartmed.ca>, on which it presents its business. The Complainants says that they have never licensed or otherwise permitted the Respondent to use their trademarks or to register any domain names including the marks at issue here. They say that there is no relationship between the parties.
The Domain Name has been registered and is being used in bad faith
The Complainants say that the marks were clearly registered in bad faith because the Respondent was clearly aware at the time of the registration of the domain names of drugs bearing the trademarks PLAVIX and ALLEGRA, and manufactured and distributed by the Complainants. They assert also that the Respondent would have been aware of the Complainants’ domain names. The Complainants point out, in support of these contentions that Plavix is being offered for sale by the Respondent on its Smart Med website and that the Complainant’s marks are used by the Respondent at the site at “www.allegracanada.com”.
The Complainants say also that the customers accessing the website at “www.allegracanada.com” would believe that the site is recognised by or accredited by the Complainants and that the site at “www.plavixcanada.com” is attracting customers to purchase not only the Complainants’ drugs but also drugs developed by their competitors. In this respect the Complainants rely on the Oki Data case (full reference above), which says that an agent of trademarked goods can use a trademark in issue for a domain name provided that (amongst other criteria) it sells only the trademarked goods. The Complainants say that is not the case here.
The Complainants say that the Domain Name <plavixcanada.com> is being used for financial gain for the Respondent by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the registrant’s website. In relation to <allegracanada.com> the Complainants say that the pages on the site contain links to the site at <smartmed.ca>, which is being used for a commercial purpose and clicking on these links will generate income dependent on the number of hits that are made on the website. In this respect the Complainants refer to Sanofi-aventis and Aventis Pharma SA v Advent Innovation; WIPO Case No. D2005-0377.
Lastly the Complainants refer to correspondence exchanged with the Respondent in August 2006, in which he offered to sell the domain names for $300 per site in response to a cease and desist letter - the Complainants say that this should be seen as registering the domain names for the purposes of selling or otherwise transferring them for valuable consideration in excess of the Respondent’s out of pocket costs.
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 Complainants own rights in the marks ALLEGRA and PLAVIX as evidenced by, amongst, other matters, the trademark registrations referred to in section 4 above for PLAVIX and ALLEGRA coupled with the evidence of extensive use of the marks.
It should be pointed out that not all the ALLEGRA trademarks produced are owned by Merrell Pharmaceuticals, Inc. (some are owned by Merrell Dow Pharmaceuticals, Inc. and the ownership of some others is not clear). However, some of the marks are owned by Merrell Pharmaceuticals, Inc. and the Panel concludes that Merrell Dow Pharmaceuticals is another company within the Sanofi-Aventis Group, which is also a Complainant in these proceedings. Similarly, some of the PLAVIX marks are owned by companies such as Sanofi, Elf Sanofi and Sanofi-Synthelabo. The Panel finds that these are companies within the Sanofi-Aventis group and that between the Complainants, they have rights in the names.
Does the addition of the word CANADA to each Domain Name operate to prevent the Domain Names from being similar to the trademarks in which the Complainants have rights? The Panel finds that the names are confusingly similar for a number of reasons. First, the marks are used in their entirety. Second, the addition of a geographical term such as Canada does not prevent the Domain Names from appearing to be connected to the Complainant. In this respect, the Panel endorses the findings of the Oki-Data case (WIPO Case No. D2001-0903) and the America Online case (WIPO Case No. D2000-0713) to which the Complainants have referred.
Accordingly, the Panel finds that the Complainants satisfy paragraph 4(a)(i) of the Policy, and that the Domain Names are confusingly similar to the trademarks in which the Complainants have rights.
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 Names. The Complainants state that the Respondent registered the Domain Names without the permission of the Complainants and that they have not licensed or otherwise permitted the Respondent to use the Domain Names.
There is no evidence which demonstrates or suggests that the Respondent is commonly known under or by reference to the Domain Names.
The Respondent has not taken the opportunity to rebut the Complainants’ 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 of the Domain Names, and that the Complainants satisfy 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 of a product or service on the respondent’s website.
The Panel accepts the Complainants’ submissions that the Respondent was aware at the time of registration of the Domain Names of their rights in the marks PLAVIX and ALLEGRA. The Panel also accepts that the use of the Domain Names is such as to create the possibility of confusion to consumers who might believe that there is a connection between the Complainants and the Respondent, and that Smart Med Pharmacy is in some manner endorsed by the Complainants. It is evident that the site at “www.smartmed.ca” is a commercial website and that by using Domain Names which (in the case of <plavixcanada.com>) forward to this site and (in the case of <allegracanada.com>) contains links which forward to <smartmed.ca> and a home page which purports to contain information about the drug Allegra, the Respondent the Complainants’ trademarks in order to generate profits for his own business. The Panel endorses the finding in Sanofi-aventis and Aventis Pharma SA v. Advent Innovations (D2005-0377) that this constitutes bad faith use of the Domain Names.
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith, and the Complainants therefore also satisfy 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 the offer to sell the Domain Names for $300 each 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 Names <plavixcanada.com> and <allegracanada.com> be transferred to the Complainants.
Dated: October 27, 2006