WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventis Pharmaceuticals Holdings Inc. and Aventis Pharma SA v. Next Wave LLC
Case No. D2006-1279
1. The Parties
The Complainants are Sanofi-Aventis, Paris, France, Aventis Pharmaceuticals Holdings Inc. Greenwille, Delaware, United States of America and Aventis Pharma SA, Anthony, France, represented by Selarl Marchais De Candé, France.
The Respondent is Next Wave LLC, Fitchburg, Wisconsin, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rxnasacortaq.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2006. On October 5, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 7, 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 October 11, 2006. On October 13, 2006, the Center received an e-mail communication from the Respondent agreeing to transfer the domain name to the Complainant. Upon request by the Complainant, the proceeding was suspended until November 17, 2006. On November 16, 2006, a further suspension was granted until December 16, 2006. On December 18, 2006, the Center reinstated the proceeding upon request by the Complainant. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2007.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 16, 2007. 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, Sanofi-Aventis is a leading pharmaceutical multinational. Aventis Pharmaceuticals Holdings Inc. and Aventis Pharma SA are companies of the Sanofi- Aventis group and are collectively referred to in these proceedings as “The Complainant”.
The Complainant has a strong world wide presence, with its sales and research and development expenditure running into billions of Euros. The Complainant claims it has a large portfolio of high growth drugs particularly in seven therapeutic areas, which are: cardio vascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
The NASACORT trademark, which is referred to in the present dispute, is used by the Complainant to market a drug which is used in the treatment of allergic rhinitis.
To demonstrate its rights in the mark the Complainant has furnished evidence of the following trademark registrations in Class 5.
NASACORT U.S. trademark number 1 538 836 registered on May 16, 1989, duly renewed.
NASACORT Community trademark number 002 303 493 registered in March 4, 2004.
NASACORT French trademark number 1 715 384 registered on December 27, 1991, duly renewed.
NASACORT International trademark number 587 802 registered on June 25, 2002, in class five duly renewed and designating among others Austria, Switzerland, China, Germany, Algeria, Egypt, Hungary, Italy, Morocco, Poland, Russia Federation, Benelux, Vietnam.
NASACORT Canadian trademark number 421 499 registered on December 24, 1993, in classes 3, 5, 21 and 31 and duly renewed.
NASACORT UK trademark number 1 504 818 registered on December 27, 1991, in class 5 and duly renewed.
The Complainant also maintains an official website at “www.nasacort.com” to post relevant information regarding this drug. In addition to the .com domain name registration, the Complainant has registered several domain names reflecting the mark in other gelds. The Complainant has furnished a list of these domain names and the corresponding dates of registration:
<Nasacort.com> registered on March 8, 1997;
<nasacort.org> registered on November 20, 2001;
<nasacort.net> registered on November 20, 2001;
<nasacort.biz> registered on November 19, 2001;
<nasacort.info> registered on July 31, 2001;
<nasacort.us> registered on April 19, 2002.
5. Parties’ Contentions
The Complainant claims that the disputed domain name <rxnasacortaq.com> is confusingly similar to its well established mark NASACORT. Citing WIPO Case No. D2001-0903, Oki Data Americas Inc v. ASD Inc. where it was found that a domain name that reproduces the trademark in its entirety is confusingly similar to the mark, the Complainant states that the use of the entire mark in the domain name by itself constitutes sufficient confusing similarity, regardless of the additional elements in the domain name.
The Complainant further alleges that a domain name which consists of the Complainant’s mark along with additional terms which are descriptive of the product or services of the Complainant, would add to the likelihood of confusion. The additional elements, here are, the prefix “rx” and the suffix “aq”. While the term “rx” stands for the generic abbreviation of pharmaceutical prescriptions, the suffix “aq” refers to “aqua” which is used for soluble pharmaceutical products. Complainant here relies on the WIPO Case No. D2005-0716, Aventis Pharma SA v. Awad Kajouk, where the domain name <pharmacy-online-nasacort-aq.com> was found confusingly similar to Complainant’s trademark NASACORT, and the WIPO Case No. D2001-0544 Harrods Lt. v. AB Kholer & Co. which held that use of additional descriptive words linked to the services of the Complainant would render such a domain name confusingly similar.
The Complainant states that the Respondent has no rights and legitimate interests in the domain name for the reasons that: the name of the Respondent “NEXT WAVE” bears no resemblance to the mark NASACORT; the Respondent has no prior legitimate rights; The Complainant has not licensed or permitted the Respondent to use the mark and there exists no relationship between the parties.
Lastly, the Complainant alleges bad faith registration and use of the domain name. To establish this, the Complainant states that the Respondent was undoubtedly well aware of the Complainant’s famous mark NASACORT when it registered the domain name, as this product is available in forty four countries world wide. The United States of America, where the Respondent is located, is one of the main markets for this product. NASACORT was the first intranasal corticoid dry aerosol formulation to contain hydrofluroalkane (HFA) which was approved by the U.S. Food and Drug Administration in April 2004.
The Complainant further states that the fame of the NASACORT mark has been acknowledged in a previous WIPO decision: WIPO Case No. D 2004 -0094 Aventis Pharmaceuticals, Aventis Pharma. S.A v. Goldie Fishero. The Complainant contends that by registering and using the disputed domain name, the Respondent has intended to benefit from the fame of the Complainant’s mark.
The Complainant argues that as the website of the Respondent is an online pharmacy, the Respondent’s choice of domain name was with the intention of creating consumer confusion and the likelihood of a false affiliation that the website linked to the disputed domain name is in some way accredited by the Complainant. The Complainant states the Respondent is seeking to use the domain name to exploit user confusion, by diverting internet users to its online pharmacy for its own benefit and commercial gain.
Snapshots of the WebPages and the corresponding links to each page are displayed in the Complaint to demonstrate the Respondent’s use of the domain name. It is alleged by the Complainant that by clicking on the links provided on the Respondent’s website, one is directed to a webpage that provides information on where the product NASACORT is available. One cannot however order the product NASACORT on that website, but can order other competing products. This, according to the Complainant, demonstrates how the Respondent is using the fame associated with the Complainant’s mark on the disputed domain name to sell competing products from other websites, which are also allegedly owned by the Respondent. The Complainant relies on WIPO Case No. D2000-1158, Novus Credit Services v. Personal to state that diverting users is this manner for commercial gain constitutes bad faith use of the domain name.
A cease and desist letter sent to the Respondent on August 11, 2006, by the Complainant, evinced no reply, and the lack of reply, according to the Complainant constitutes evidence of bad faith. The Complainant requests for a transfer of the domain name.
The Respondent here is Next Wave LLC of Fitchburg, Wisconsin United States of America. As per the WHOIS records the Respondent has registered the domain name on November 21, 2005.
The Respondent did not filed a formal response in these proceedings. However there is an email correspondence from William Erickson, who is identified in the email as the President and CEO of the Respondent Company Next Wave LLC. The email is dated October 13, 2006, and has been sent to the Complainant in reply to the initial Complaint.
The email states that he had purchased the domain name and that it is registered “untill sometime in 2007”. He further states that he had no intention of using the domain name in bad faith and goes on to state: “I am a online pharmacy (sic) selling many prescription medications including your product. Because I have added the RX symbol in front of your registered domain (sic) I meant no harm and hoped to sell your product”. He further states “Presently I have taken down the domain … I have no interest in making a big deal over this. If this domain legally belongs to you I will respectfully return it to you”. He then asks for a reimbursement of the registration amounts of 19.70 USD and 29.00 USD, and finally states that he is not going to contest the claim.
The Complainant on October 18, 2006 requested the Center to suspend the proceedings presumably to try and settle the dispute with the Respondent, in the light of the Respondent’s statements in the email.
6. Discussion and Findings
There is no information on record to indicate what transpired between the parties during the period purportedly for settlement negotiations between October 18, 2006 and December 18 , 2006. However as the proceeding was reinstituted upon request by the Complainant on December 18, 2006, the presumption is that the parties could not reach a desired settlement.
In these proceedings, the Complainant has to establish the following under paragraph 4(a) of the Policy:
(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.
Reviewing these seriatim, the Panel finds:
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights in the NASACORT mark with numerous trademark registrations world wide as well as several domain names registrations incorporating the mark. All these registrations are dated prior to the registration of the domain name in dispute and this clearly indicate prior use of the mark by the Complainant.
The Panel finds the additional terms “rx” and “aq” which are used in the domain name along with the mark would not mitigate the confusion or render the domain name distinctive, as the dominant part of the domain name consists of the mark NASACORT. Use of additional pharmaceutical terms would as suggested by the Complainant, enhance the confusion as these terms are related to the product marketed by the Complainant.
In the WIPO Case No. D 2004-0453 Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., it was found that addition of drug related terms to the Complainant’s mark does not avoid confusing similarly. The prefix “phar” was added to the Complainant’s trademark “MEDCO” in that case to form the domain name <pharmedco.com> which was held to be confusingly similar to the Complainant’s trademark.
The Panel finds that the domain name here is confusingly similar to the Complainant’s trademark. The Complainant has fulfilled the requirement in paragraph 4(a) (i) of the Policy
B. Rights or Legitimate Interests
The Complainant has provided several reasons to indicate that the Respondent lacks rights or legitimate interests in the domain name. The Respondent is not known by the domain name, no authorization has been granted to the Respondent by the Complainant to use the mark, and there is no relationship between the parties. The Respondent is not a licensee nor obtained any authorization for use of the Complainant’s mark.
While the Complainant carries the initial burden of proof, see WIPO Case No. 2001- 0121, Julian Barns v. Old Barnes Studio, and WIPO Case No. 2004-0110, Belupo d.d v Wachem d o.o, the burden shifts to the Respondent to demonstrate any rights or legitimate interests it may have under the safe harbor provisions of paragraph 4 (c) of the Policy. The Respondent here has not demonstrated any rights or legitimate interests under paragraph 4 (c) of the Policy. On the contrary, the Respondent’s admission in the email indicates lack of legitimate rights in the domain name.
The Panel accordingly finds that the Respondent does not have any right or legitimate interests in respect of the domain name, and the Complainant has fulfilled the requirement under paragraph 4(a) (ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has demonstrated that it has been using the trademark NASACORT for a number of years. The Respondent is dealing in pharmaceuticals and has conceded knowledge of the Complainant’s mark. This is clearly indicated in the Respondent’s email. Given the fame of the Complainant’s mark, use of the mark in the domain name would no doubt be valuable for attracting customers to an on line pharmacy
The Panel notes and acknowledges the previous decisions where the Complainant’s rights have been upheld with respect to the same mark. See WIPO Case No. D2004-0094, Aventis Pharmaceuticals, Aventis Pharma. S.A v. Goldie Fishero, and WIPO Case No. D2005-0716, Aventis Pharma SA v. Awad Kajouk. In these prior cases it was found that the Respondent would be able to derive revenue by selling competing products on a website linking a domain name that uses the Complainant’s mark, and this was held to constituted bad faith use.
The Respondent’s website, which provides online pharmacy services, enables the Respondent to benefit financially from any misdirected or confused customers who are looking for the Complainant or its products. The Complainant has demonstrated by means of providing screen shots of the on-line pharmacy sites and the hyperlinks, how the Respondent diverts Internet traffic to its website to sell competing products. There are numerous cases that have held that where a Respondent attempts to intentionally divert Internet users to its website this constitutes bad faith use of the domain name. See for instance WIPO Case No. D2006-1057, Lilly ICOS LLC v. Insight Ventures /James Connell, WIPO Case No. D 2003-0327, AT&T Corp.v. Amjad Kausar, and WIPO Case No. D2003- 1051, Wal-Mart Stores, Inc. v. Steve Powers.
The Panel finds that the Respondent’s knowledge of the mark and the manner of use of the domain name by the Respondents indicates bad faith registration and use as enumerated in paragraph 4(b)(iv)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 <rxnasacortaq.com> be transferred to the Complainant.
Dated: January 31, 2007