WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis Inc., Sanofi-Aventis Deutschland GmbH, Sanofi-aventis v. Brad Pittersones
Case No. D2008-1076
1. The Parties
The Complainants are Aventis Inc., United States of America, Sanofi-Aventis Deutschland GmbH., Germany and Sanofi-aventis, France, represented by Selarl Marchais De Candé, France.
The Respondent is Brad Pittersones, France.
2. The Domain Names and Registrar
The disputed domain names <acomplia-without-prescription.com>, <allegra-fexofenadine.com> and <amaryl-glimepiride.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2008. On July 16, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On July 17, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to 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 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 12, 2008.
The Center appointed Adam Taylor as the sole panelist in this matter on August 19, 2008. 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 part of a large French pharmaceutical group “Sanofi Aventis” with a presence in more than 100 countries including the United States of America (“United States”) and employing approximately 100,000 people worldwide.
The Aventis Inc. Complainant produces ALLEGRA, which treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat. Aventis Inc. owns a number of ALLEGRA trademarks worldwide including, by way of example, United States trademark number 2067728 dated June 3, 1997 in class 5.
The Sanofi-Aventis Complainant produces AMARYL, a medication for type 2 diabetes. The Sanofi-Aventis Deutschland GmbH Complainant owns a number of AMARYL trademarks worldwide including, by way of example, German trademark number 2017807 dated June 24, 1992, in class 5.
Sanofi-aventis also produces ACOMPLIA, a medication for treatment of overweight and obese patients. Sanofi-aventis owns a number of ACOMPLIA trademarks worldwide including, by way of example, Community Trademark number 3565678 dated December 2, 2003, in class 5.
All of the above products are distributed extensively worldwide.
The Respondent registered <acomplia-without-prescription.com>, on September 20, 2007, and <allegra-fexofenadine.com> and <amaryl-glimepiride.com> on September 21, 2007.
On unspecified dates (the printouts supplied by the Complainants are undated), all of disputed domain names resolved to parking pages with sponsored links to websites offering products competing with those of the Complainants.
5. Parties’ Contentions
Identical or Confusingly Similar
The addition of the descriptive terms “fexofenadine” and “glimepiride” to the Complainants’ trademarks in the case of <allegra-fexofenadine.com> and <amaryl-glimepiride.com> respectively are insufficient to prevent the likelihood of confusion because the additional terms reflect the active ingredients in ALLEGRA and AMARYL: “fexofenadine hydrochloride” and “glimepiride” respectively.
The domain name <acomplia-without-prescription.com> consists of the Complainants’ trademark ACOMPLIA in its entirety, followed by the words “-without-prescription”. The latter words have a clear and direct descriptive meaning in respect of pharmaceutical products, for which prescriptions are often required. Internet users encountering the disputed domain name are likely to understand it as denoting a website offering the Complainants’ ACOMPLIA products without the need for a prescription. The additional terms reinforce the message that the disputed domain name relates to the Complainants’ product.
Likelihood of confusion also arises because of the fame of the various trademarks of the Complainants.
Rights or Legitimate Interests
The Respondent does not have any rights or legitimate interest in the respect of the disputed domain names.
The name “Brat Pittersones” has no resemblance to ALLEGRA, AMARYL or ACOMPLIA. The Respondent has consequently no prior rights and/or legitimate interest to justify the use of these well-known and worldwide trademarks.
The Complainants have never licensed or otherwise permitted the Respondent to use their trademarks or to register any domain name including the trademarks.
The Respondent has adopted the Complainants’ trademarks and domain names for its own use and incorporated them into its domain names without the Complainant’s authorization.
The absence of any permission from the Complainants proves that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Registered and Used in Bad Faith
At the time of the registration of the disputed domain names, the Respondent was well aware of the existence of the drugs named ALLEGRA, AMARYL and ACOMPLIA, developed and sold by the Complainants. The Respondent has registered not one but three domains names corresponding to three well-known trademarks owned by the Complainants.
The disputed domain names registered by the Respondent are used in reference to the trademarks of the Complainants to re-route the web users to websites that sell the generic equivalent for these products.
The use of the trademarks of the Complainants without any authorization creates confusion for consumers seeking information about the drugs ALLEGRA, AMARYL and ACOMPLIA.
Consumers may believe that there is an official affiliation between the Complainants and the websites at the disputed domain names.
The advertisements and links proposed on the disputed websites are probably providing income for the Respondent depending on the number of hits that are generated.
By using the disputed domain names as parking websites, the Respondent is intentionally attempting for financial gain to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks and domain names.
Moreover, on November 27, 2007 and December 17, 2007 the Complainants emailed to the Respondent two cease and desist letters. The Respondent did not reply to such emails and still has not cancelled the registrations or stopped the unlawful use. This is additional evidence of bath faith.
The Respondent did not file a Response or otherwise reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants undoubtedly have rights in the marks ALLEGRA, AMARYL and ACOMPLIA by virtue of their many registered trademarks as well as their extensive trading activities under those names.
Disregarding the domain suffix “.com”, the disputed domain names <allegra-fexofenadine.com> and <amaryl-glimepiride.com> wholly incorporate the ALLEGRA and AMARYL trademarks and differ only by the addition of the descriptive words “fexofenadine” and “glimepiride”. These terms are referable to the active ingredients in ALLEGRA and AMARYL respectively: “fexofenadine hydrochloride” and “glimepiride”. So, far from distinguishing the domain names and trademarks, use of such terms enhances the respective connections.
The disputed domain name <acomplia-without-prescription.com> wholly incorporates the Complainants’ trademark ACOMPLIA, followed by the descriptive words “-without-prescription”. Those words are clearly referable to the Complainant’s product and denote the availability of the Complainant’s product without the need for a prescription.
The Panel concludes that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights. The Panel therefore finds that the Complainants have established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainants must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainants have not licensed or otherwise authorized the Respondent to use their trademarks.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainants’ products. Such use of the disputed domain names could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainants have established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainants have therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain names with the Complainants’ trademarks in mind.
All three disputed domain names incorporate the Complainants’ distinctive trademarks and are used for websites with sponsored links to sites offering products competing with the Complainants’ products.
The Respondent has not come forward to deny that the Complainants’ assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain names and the Respondent has offered no explanation.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. The Panel therefore finds that the Complainants have established the third element 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, <acomplia-without-prescription.com> be transferred to the Sanofi-aventis Complainant, that the domain name <allegra-fexofenadine.com> be transferred to the Aventis Inc. Complainant and that the domain name <amaryl-glimepiride.com> be transferred to the Sanofi-Aventis Deutschland GmbH Complainant.
Dated: September 2, 2008