The Complainants are Sanofi-aventis of Paris, France; Aventis Pharmaceuticals Inc. of New Jersey, United States of America; and Aventis Pharmaceuticals Holdings Inc. of Greenville, United States of America, represented by Selarl Marchais De Candé, France.
The Respondent is Demand Domains, Inc., of Bellevue, Washington of United States of America, internally represented.
The disputed domain name <sculptrafacelifts.com> is registered with enomEU, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2008. On September 29, 2008, the Center transmitted by email to eNomEU. Inc., a request for registrar verification in connection with the disputed domain name. On October 7, 2008, eNomEU, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 18, 2008. 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” or “UDRP”), 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 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2008. The Response was filed with the Center on October 30, 2008.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 13, 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.
The First Complainant is a holding company of a group of pharmaceutical companies that includes the Second and Third Complainants. The First Complainant had consolidated net sales in 2007 of €28 billion, and enjoys a strong presence in major world markets. It will be convenient to refer to all three Complainants as “the Complainant”.
The Complainant's products include patented prescription drugs in a variety of medical fields, including dermatology. It markets under the trademark SCULPTRA, a drug with demonstrated utility for restoration and/or correction of the signs of facial fat loss (lipoatrophy) in people with human immuno-deficiency virus or cancer.
The Complainant is the owner of trademarks for the word SCULPTRA, registered in the United States on January 31, 2006 and in other countries, including the United Kingdom and several European countries. The Complainant also owns a number of domain names using the word “sculptra” in connection with its marketing of pharmaceutical products and surgical implants for cosmetic surgery.
The disputed domain name was registered on November 20, 2007 by the Respondent through a privacy protection service. On October 3, 2008, the Respondent offered the Complainant immediate and free transfer of the disputed domain name before the Complainant filed a Complaint under the Policy. The Respondent received no reply.
On October 8, 2008, the Respondent was served with the Amended Complaint. A representative sought, by email, amicably to settle the matter with the Complainant, but again received no reply. A further attempt was made on October 10, 2008.
On October 13, 2008, a representative of the Complainant emailed the Respondent's representative, rejecting the Respondent's offers, saying
“The person in charge of this matter in Sanofi-aventis is not the same as the one in charge of the domain name “sanofi-ventis.com”. This person prefers to let the proceedings go to its end”.
On October 15, 2008, counsel for the Respondent sent an email to a representative of the Complainant, restating that the Respondent had no prior knowledge of the Complainant's alleged rights in the disputed domain name and that the Respondent had not registered the disputed domain in bad faith. The Complainant was asked again to reconsider the Respondent's offer to settle.
Again, on October 20, 2008, counsel for the Respondent sent another email to the representative of the Complainant and asked for a reply. This received a reply on October 21, 2008, saying:
“As I previously specified, Sanofi-aventis does not intend to settle this matter”.
The disputed domain name is linked to a “click-through” website which provides links to goods and services, including links to pharmaceutical products similar to those marketed by the Complainant.
The Complainant alleges that the disputed domain name is confusingly similar to its registered trademarks. The Respondent has no legitimate right or interest in the disputed domain name and the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant claims that, by registering via a privacy protection service, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Its website shows that the links placed on the home page of the website leads to various websites providing information and products which relate to drugs like SCULPTRA which is not a bona fide offering of goods and services.
As to bad faith, the Complainant points to several UDRP panel decisions which have recognised the fame of the Complainant and the SCULPTRA trademark: See Sanofi Aventis, Aventis (Ireland) Ltd, Aventis Pharmaceutical Inc. v. Skin Provement, WIPO Case No. D2007-0793 and Sanofi-Aventis, Aventis Pharmaceuticals Holdings Inc., Aventis (Ireland) Ltd. v. DFX, WIPO Case No. D2007-0178.
The Complainant claims that it is inconceivable the Respondent registered the disputed domain name unaware of the Complainant's marks and rights and the registration was, therefore, made in bad faith. The disputed domain name is also being used in bad faith because the Respondent has deliberately tried to gain unfair benefit of the Complainant's reputation by using its marks to divert internet users to a parking website with links to commercial websites where competing cosmetic surgery products are advertised for sale.
The Respondent claims that it had no knowledge of the Complainant's mark at the time of registration and that it has a policy against holding domains in derogation of the rights of legitimate trademark holders. It points out that the Complainant did not contact the Respondent regarding its concerns, but filed a Complaint with the Center instead.
The Respondent uses a privacy protection service for a legitimate purpose and does not conceal its identity for any non-legitimate or bad faith purpose. The Respondent has acted with the utmost good faith throughout, responding promptly upon receipt of the action and offering immediate transfer.
The Respondent asks that the Panel dismiss the Complaint on the grounds that the Respondent has acted only in good faith. Upon such dismissal, the Respondent will transfer the disputed domain name to the Complainant. In the alternative, the Respondent requests that the Panel refrain from making any formal finding that the Respondent acted in bad faith and that the Panel simply endorse the Respondent's offer to transfer the disputed domain name to the Complainant.
In order for the Panel to grant the remedy of transfer of a domain name, paragraph 4(a) of the Policy requires proof:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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 registered in bad faith.
The Panel notes that, as soon as it became aware of the Complaint, the Respondent offered to transfer the disputed domain name. It has not sought any monetary compensation and, commendably, it states that, even though it may be a registrant of domains in bulk, its policy is not to register domain names which may infringe the trademark rights of others.
Several requests by the Respondent to the Complainant to agree to a transfer deserved better than the rather offhand responses made by the Complainant's representatives. No reasons were given by the Complainant for not wishing to accept the Respondent's offer of a transfer with no ties attached.
The Panel is of the view, from the correspondence as a whole, that the Respondent is willing to consent to a transfer of the disputed domain name.
The situation in circumstances such as the present has been considered in a number of UDRP Panel decisions. The decisions are well summarised by the learned Panelist in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, in the following words:
“[t]he Response also states that the Respondent does not wish to contest the Complaint (“I have no interest in disputing the complaint”), consents to their transfer (“I am willing to hand over the names that are in my control”) and also requests that “no judgment be made as have agreed to transfer names to complainant”.
The Complainant has not accepted the Respondent's implicit offer of a settlement. Accordingly, there is no settlement agreement, and termination of the proceeding on the grounds of settlement pursuant to paragraph 17 of the Rules has no application.
A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems' proved the three elements of paragraph 4(a) of the Policy.
However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”
A similar attitude has been taken in the following cases:
“Texas Medical Center. v. Joseph Spindler, NAF claim No. FA 886496 (foregoing the traditional Policy analysis where the respondent stipulated to the transfer of the disputed domain names to the complainant); see also Richard Simon Jocelyn Peter Adams a/k/a Jos Adams v. Truth About Jos, NAF claim No. FA 907564 (concluding that when a respondent stipulates to the transfer of the disputed domain name in its response or expresses a willingness to transfer the disputed domain name to the Complainant, the Panel can forego an analysis of the Policy and order the immediate transfer of the disputed domain name); see also Metro. Life Insurance Company v. Secure Whois Information Service, NAF claim No. FA 910715 (“In light of Respondent's request that the Panel enter an order transferring the disputed domain name to Complainant without findings of fact on the elements set forth in Paragraph 4(a) of the Policy, and the lack of any objection thereto, the Panel declines to set forth or address the Parties' contentions.”) See also Californian Academy of Sciences v. Texas International Property Associates, NAF claim No. FA 944494).”
The approach of the Panelist in the Cartoon Network supra case was followed by Panelists in Valero Energy Corp., Valero Refining & Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336 and in Kennolyn Camp Corporation v. Texas International Property Associates-NA NA, WIPO Case No. D2008-1208 and in Wilmer Cutler Pickering Hale and Dorr LLP v. Texas International Property Associates – NA NA, WIPO Case No. D2008-1451.
In ANOVO v. Moniker Privacy Services / Alexander Lerman, WIPO Case No. D2008-1049, the panelist disagreed with some of the views expressed by previous panels in relation to the scope of powers granted to the panel under paragraph 10 of the Rules. That panelist did not believe that paragraph 10 provides discretion to disregard the fundamental substantive requirements of the Policy and that, whilst paragraph 10 might have permitted a panel to abbreviate the analysis, particularly where the respondent had not disputed the complainant's case, it cannot be acceptable or desirable to dispense with any analysis at all and the complainant must be found to have established a prima facie case.
In ANOVO, supra, the respondent did not provide a response. The panelist opined that in cases where a respondent believes it is likely to lose, it may also prefer to oppose a transfer, simply to avoid having itself identified in a list of UDRP respondents; that it is quite understandable that a complainant, having gone to the trouble and expense of preparing and filing a complaint, might not wish to allow a respondent to avoid a formal decision at such a late stage.
This present Panel considers that the approach taken in Cartoon Network, supra and the cases that adopted the reasoning therein appears to be supported by decisions in other cases.
The ANOVO case is distinguishable from this case because here, the Respondent ostensibly professes the attitude of not wishing to infringe trademark rights. Moreover, its apparently genuine attempts to offer a transfer to the Complainant were turned down in an offhand way and without any reason being offered.
In those circumstances, the Panel takes the course taken in the Cartoon Network,case and considers that the Respondent has consented to transfer the disputed domain name in accordance with Paragraph 17 of the Rules.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sculptrafacelifts.com> be transferred to the third Complainant, Aventis Pharmaceutical Holdings Inc. (as requested in the Complaint).
Sir Ian Barker
Dated: 27 November, 2008