The Complainants are Sanofi-aventis, Gentilly, France; and Sanofi-Aventis Deutschland GmbH, Frankfurt, Germany. The Complainants are represented by Selarl Marchais De Candé, France.
The Respondent is Fra Zero Tech, Alexey Gavrilov, Saratov, Russian Federation.
The disputed domain name <buyamaryl.com> is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2008. On September 2, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue. On September 3, 2008, Directi Internet Solutions 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 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 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 29, 2008.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on October 6, 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.
Sanofi-aventis, of which Sanofi-Aventis Deutschland GmbH is an affiliate company, is a multinational company with a presence in more than 100 countries. It is a major player in the worldwide pharmaceutical market.
Sanofi-aventis was formed in 2004 as a result of merger between two French companies, Aventis and Sanofi-Synthelabo. That merger created the number one pharmaceutical group in Europe (and number four in the world) with consolidated net sales of 28 billion Euros in 2007.
Employing 100,000 people worldwide, Sanofi-aventis has a sales force of over 35,000 persons, as well as more than 19,000 research staff. It has113 projects under development, of which 47 are at advanced stages, and 66 are in pre-clinical development.
In the field of metabolic disorders, Sanofi-aventis developed and sells throughout the word under the trademark AMARYL a drug treating type 2 diabetes. In the United States of America, AMARYL is the first oral diabetes drug in its class to receive three indications: either as a monotherapy or in combination with insulin or metformin, another oral diabetes treatment.
The Complainants are the owners of the following trademarks:
(1) International trademark AMARYL n° WO 591 304 filed on August 22, 1992 in class 5 or “Pharmaceuticals, i.e antidiabetic products, to be taken orally”.
(2) German trademark AMARYL n° 2017807 filed on June 24, 1992 in class 5 namely for “Pharmazeutishe Erzeugnisse, nämlich orale Antidiabetika”.
(3) American trademark AMARYL n° 1 912 174 filed on August 15, 1995 in class 5, for
“Pharmaceutical preparation for use in the oral treatment of diabetes”.
(4) Canadian trademark AMARYL n° TMA 574 280 filed on August 28, 1992 in class 5
for “Antidiabetic pharmaceutical preparations”.
(5) British trademark AMARYL n° 1511641 filed on August 26, 1992 namely for “Pharmaceutical preparations and substances; all for the oral treatment of diabetes in humans, all included in class 5”.
The Complainants have also registered various domain names. These include <amaryl.com> which was registered in October 1998.
The disputed domain name <buyamaryl.com> was registered in December 2007.
The Complainants say that:
1. The disputed domain name is confusingly similar to the trademarks and the domain names over which they have rights;
2. The Respondent has no right or legitimate interest in the disputed domain name;
3. The Respondent registered and is using that disputed domain name in bad faith.
The Respondent did not reply to the Complainants' contentions.
Under Paragraph 4(a) of the Policy, the Complainants have the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The domain name <buyamaryl.com> reproduces entirely the trademark AMARYL, which is an invented word with no particular meaning and which is therefore highly distinctive.
The addition of the word “buy” to the Complainants' trademark could not assist the Respondent. For example, the panel in Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903 stated that “As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
Similarly, the panel in Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043 stated that “adding generic words to a domain name such as “new”, “best” and “buy” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “new”, “best” and “buy” do not serve any distinguishing function but rather describe the nature of the service offered on the relevant website.”
The Panel is therefore satisfied that the Complainants have proved the paragraph 4(a)(i) requirement that the disputed domain name is identical or confusingly similar to the Complainants' marks.
The Complainants have shown that they are an international corporation whose products are known worldwide. They stress that they have never licensed or otherwise permitted the Respondent to use their trademarks. Further, they say that the Respondent does not have any rights or legitimate interests in using the disputed domain name since neither the company name “Fra Zero Tech” nor the name “Alexey Gavrilov” has any resemblance to the AMARYL mark.
As with the other elements of paragraph 4(a) of the Policy, the burden of proof lies on the Complainants. However, it is well established by previous panel decisions that, once a Complainant establishes a prima facie case that a Respondent lacks rights or legitimate interests to a disputed domain name, the burden of rebuttal shifts to the Respondent.
The Complainants have produced substantial evidence to demonstrate that they have registered international, German, American, Canadian and British trade mark rights in the AMARYL mark. In addition, the Complainants have shown that they have registered a number of domain names to present its activities on the web. These include <amaryl.com>. All of these registrations predate by a considerable period the Respondent's registration of the disputed domain name.
In relation to the paragraph 4(a)(ii) requirement as to rights and legitimate interest, paragraph 4(c) of the Policy states that a Respondent may establish those rights or legitimate interests by any of three circumstances (which circumstances are without limitation). It was open to the Respondent to serve a Response to challenge the Complainants' submission. It has not done so.
The Panel is satisfied that the Complainants have proved the rights or legitimate interests requirement of Paragraph 4(a)(ii) of the Policy.
In relation to the requirements of Paragraph 4(a)(iii), the burden is on a Complainant to prove that the disputed domain name was both registered in bad faith and is being used in bad faith.
The Complainants have produced substantial evidence to demonstrate that they have registered international, German, American, Canadian and British trade mark rights in the AMARYL mark, and that they are an international corporation operating in many countries worldwide.
In addition, the Complainants have shown that they have registered a number of domain names to present their activities on the web. These include <amaryl.com> which was registered in October 1998.
All of these registrations considerably predate the Respondent's registration of the disputed domain name <buyamaryl.com>.
It is inconceivable that the Respondent was unaware of the Complainants' marks at the time of registration of the disputed domain name. Indeed, what follows shows that the Respondent must have been aware of the marks. It is notable that the Respondent has not served any response to challenge the Complainants' case.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii). One of those circumstances is that, by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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.” [Paragraph 4(b)(iv)]
The Complainants rely upon that specific circumstance and cite the following matters in support:
1. Typing the address “www.buyamaryl.com” leads to a page being used as “a non official information portal on AMARYL.”
2. On several locations on the page there are hyperlinks which link to online pharmacies. Clicking on an index tab of the menu “ORDER ONLINE” leads to a third party website “www.diopharm.com”. That online pharmacy advertises various types of generic substitutes for AMARYL medicine and other competing anti-diabetic drugs.
The Complainants argue that it is very likely that the Respondent's purpose in such use is to collect money on a pay-per-click basis, and they rely upon Sanofi-aventis v. Montanya Ltd., WIPO Case No. D2006-1079. In that case the panel stated that:
“the Domain Name is used as a referral portal to divert Internet users, through ‘Popular Links' and ‘Popular Categories', to third parties' sites, some of which offer for sale the Complainant's direct competitors' products. Furthermore, it is very likely that the Respondent's purpose in such use, is that of collecting referral or click-through fees. Both the above circumstances have been held by various WIPO UDRP decisions as clear evidence of bad faith use of a domain name.”
In Sanofi-aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377, the panel stated that advertisements and links on websites generally generate income for the website owner dependent on the number of hits that are generated on the website: “It is obvious, that a website containing a well-known brand is hit more often than a no-name website. To this extent, the Respondent is making use of the well-known character of the Complainants' trademark for generating profits in his own interests. Therefore, the Panel finds that the domain names are also being used in bad faith.”
This Panel is satisfied that the Complainants have proved the bad faith registration and the bad faith use requirements of paragraph 4(a)(iii) 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 <buyamaryl.com> be transferred to the Complainants.
Anthony R. Connerty
Dated: October 20, 2008