The Complainant is Sanofi-Aventis, Paris, France; Sanofi-aventis Deutschland GmbH, Frankfurt, Germany, represented by Selarl Marchais De Candé, France.
The Respondent is Geiser Enterprises, Las Vegas, Nevada, United States of America.
The disputed domain names <abouttheinsulinlantus.com> and <insulinlantus.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On October 1, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On October 1, 2008, GoDaddy.com, Inc. 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 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 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2008.
The Center appointed David A.R. Williams QC as the sole panellist in this matter on November 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.
The Complainant asserted, and provided evidence in support of, and the Panel finds established, the following facts.
The Complainant is a multinational group of companies of which Sanofi-Aventis Deutschland GmbH is an affiliate company. Sanofi-Aventis is present in more than 100 countries across five continents. The Complainant had a large portfolio of high-growth drugs with 15 products that represent 67.5% of pharmaceutical net sales in 2007 for a total of € 17,071 million (Clexane/Lovenox, Plavix/Iscover, Lantus, Taxotere, Eloxatin, Stillnox/Ambien/Ambien CR/Myslee, Copaxone, Aprovel/Avapro/Karvea, Delix/Tritace/Triatec, Allegra/Telfast, Amaryl/Amarel/Solosa, Xatral, Actonel, Depakine, Nasacort). It enjoys well-established positions in seven major therapeutic fields such as cardiovascular diseases, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
The Complainant has developed and sold throughout the world under the trademark LANTUS a drug which provides a slow, steady release of insulin to help control blood glucose for patients suffering from diabetes. All relevant information related to this product can be found on the official website of the Complainant: “www.lantus.com”.
The Complainant is the owner of the following trademarks:
– WTO trademark LANTUS n° 590551 registered on August 31, 1992 in class 5 for “Pharmaceuticals”;
– CTM trademark LANTUS n° 001704642 registered on November 20, 2001 in class 5 for “Antidiabetic pharmaceutical preparations”;
– UK trademark LANTUS n° 1511636 registered on August 26, 1992 in class 5 for “Pharmaceutical preparations and substances for the prevention and treatment of diabetes”;
– American trademark LANTUS n° 2183182 registered on August 25, 1998, renewed on October 10, 2007, in class 5 for “Antidiabetic pharmaceutical preparations”;
– Canadian trademark LANTUS n° TMA 577101 registered on March 7, 2003 in class 5 for “Antidiabetic pharmaceutical preparations”;
– Mexican trademark LANTUS n° 542648 registered on February 26, 1997 in class 5;
– South African trademark LANTUS n° 97/02165 registered on March 2, 2000 in class 5;
– OAPI trademark LANTUS n° 40966 registered on May 7, 1999 in class 5.
The Complainant has also registered several domain names to present its activities on the web. The following provide an illustration:
– <lantus.com> registered on July 13, 1998;
– <lantus.net> registered on May 10, 2000;
– <lantus.info> registered on September 21, 2001;
– <lantus.fr> registered on December 19, 2001.
The Complainant contends that it is the owner of the trademarks and domain names listed in Section 4 (a) and (b) above. The Complainant asserts that the Respondent wrongly registered and used the litigious domain names that correspond to trademarks belonging to the Complainant.
The Complainant asserts that domain names <abouttheinsulinlantus.com> and <insulinlantus.com> reproduce the trademark LANTUS in its entirety and that, in doing so, the contested domain names are confusingly similar to its trademark, regardless of the adjunction of the prefixes “abouttheinsulin” and “insulin”.
The Complainant further contends that the trademark LANTUS has no particular meaning and is therefore highly distinctive. Moreover, the Complainant indicates that “insulin” is a hormone that is needed to convert blood sugar into usable energy, that for people with diabetes the body no longer has an ability to produce or release the right amount of insulin and that the Lantus product may be prescribed to people suffering from diabetes when long-acting insulin is required. The terms used in the litigious domain names are thus, according to the Complainant, descriptive of its product.
The Complainant relies on decisions of previous UDRP panels which have held that where a domain name consists of a registered trademark followed by a generic term, the latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark.
It also cites a case on the domain name <insulinlantus.org>, where the panel held that
“the confusion created by the similarity between the Complainant's trademark LANTUS and the Respondent's domain name <insulinlantus.org> is heightened by the fact that the Complainant has marketed a drug which provides a slow, steady release of insulin to help control blood glucose for patients suffering from diabetes under the trademark LANTUS”.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain names, in particular since its company name “Geiser Enterprises” bears no resemblance whatsoever to the coined word “lantus”.
The Complainant also states that it has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the LANTUS trademark.
The Complainant concludes that the Respondent has clearly adopted the Complainant's trademark and domain names for its own use and incorporated them into the Respondent's domain names without the Complainant's authorisation.
The Complainant contends that the Respondent has registered in bad faith the domain names in order to abusively take benefit from the Complainant's notoriety.
The Complainant asserts that the Respondent would not have used the invented word “lantus” were it not seeking to create the impression of an association with the Complainant. In the Complainant's view, this is especially likely where the Respondent seems to operate a website dedicated to insulin the active ingredient of the Lantus product.
The Complainant considers that the Respondent must have been aware of the existence of the drugs named Lantus, of the various LANTUS trademarks owned by the Complainant and of the domain name <lantus.com> and the corresponding website “www.lantus.com”.
The Complainant also asserts that the domain names are being used in bad faith. In support of this argument, the Complainant states that the home pages of both websites using the Respondent's domain names appear to be referral portals on insulin. However, when further searching is performed by clicking on the available links, one is redirected automatically to other websites which are selling various products and services online.
The Complainant considers that the Respondent's purpose is to collect money on a pay-per-click basis.
The Complainant requests a decision transferring both domain names to Sanofi-Aventis Deutschland GmbH.
The Respondent did not reply to the Complainant's contentions and has thus failed to contest the allegations in the Complaint. Pursuant to paragraph 14(b) of the Rules, the Panel shall therefore decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that it considers appropriate.
Paragraph 15(a) of the Rules provides that the Panel is to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, three elements must be proved in order for the Panel to find that the domain names registered by the Respondent be transferred to the Complainant:
A) The domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights;
B) The Respondent has no rights or legitimate interests in respect of the domain names; and
C) The domain names have been registered and are being used in bad faith.
The Panel accepts the Complainant's evidence that it has registered trademark rights in the mark LANTUS in many countries throughout the world.
On the issue of the degree of similarity between the domain names and the Complainant's mark, the Panel adopts the test enunciated by a previous UDRP panel:
“The issue of degree of similarity between the Complainant's mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned […]” (SANOFI-AVENTIS, AVENTIS PHARMA DEITSCHLAND GMBH v. WEB ADVERTISING, Corp, WIPO Case No. D2006-1273).
The Panel also adopts the finding made in the abovementioned decision that the Complainant's trademark LANTUS is a coined word with no meaning and is, as such, distinctive.
Following the abundance of case law on this matter, the Panel finds that the generic words “insulin” and “abouttheinsulin” placed before the Complainant's mark LANTUS are merely descriptive and do not serve to distinguish the Respondent's domain names from the Complainant's mark. Moreover, given that the domain names incorporate in its entirety the LANTUS mark and taking into account the international reputation of the Complainant and its Lantus product, they are of such a nature as to create in the mind of the average Internet user the reasonable impression that the domain names and their corresponding websites are somehow connected to the Complainant (Sanofi-Aventis v. John Adams, WIPO Case No. D2006-0688; SANOFI-AVENTIS, AVENTIS PHARMA DEITSCHLAND GMBH v. WEB ADVERTISING, Corp, WIPO Case No. D2006-1273; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010).
The Panel accordingly finds that, for the purposes of the Policy, there can be no doubt that the domain names are confusingly similar to the Complainant's LANTUS trademark.
The Panel notes that the Respondent has not provided any evidence of a legitimate use of the domain names, or any reasons justifying the choice of “insulinlantus” and “abouththeinsulinlantus” for its domain names and websites.
The Panel further notes that there was no evidence demonstrating that the Complainant had licensed or otherwise authorised the use of the LANTUS mark by the Respondent.
There is no indication that the Respondent is commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services.
Moreover, taking into account the Complainant's significant international reputation and the leading position occupied by the Lantus product in the pharmaceutical and medical fields, the Panel finds that the Respondent could not have included the LANTUS mark in its domain names other than for the express purpose of creating the impression of an association with the Complainant.
The Panel also notes that the Respondent has failed to submit a Response to the Complaint and has therefore not established its rights or legitimate interests in the domain names, pursuant to paragraph 4(c) of the Policy.
In light of the above, the Panel draws the clear inference that the Respondent lacks any rights or legitimate interests in the domain names.
The Panel has already found that the Complainant has a substantial international reputation and that its LANTUS trademark is a high profile product on the pharmaceutical market. It has therefore ruled that the Respondent could not have been ignorant of the Complainant's reputation nor that of the LANTUS mark when it registered the domain names.
The Panel further considers that it is not conceivable that the Respondent was unaware that the Complainant had already registered several domain names for the LANTUS mark when it applied for registration of the domain names. The Panel considers that the generic prefixes placed before the LANTUS mark in the domain names and the use of the word “insulin” only strengthen the impression that the Respondent intended to profit from the Complainant's reputation and mislead the average Internet user into believing that they were being directed to websites affiliated to the Complainant.
Moreover, in the absence of any explanation from the Respondent as to its choice of domain names and taking into account the fact that the corresponding websites systematically redirect users to third party websites selling products and services (some of which may well sell products competing with those manufactured by the Complainant), the Panel infers that it is more than probable that the Respondent's purpose was to collect referral or click-through fees. There is ample precedent that such use of a domain name is clear evidence of bad faith use (Sanofi-Aventis v. Tania Malik, WIPO Case No. D2006-0932; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).
In light of all of the above, the Panel concludes that the disputed domain names were indeed registered and used in bad faith by the Respondent.
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, <abouttheinsulinlantus.com> and <insulinlantus.com> be transferred to Sanofi-Aventis Deutschland GmbH.
David A.R. Williams, QC
Dated: November 20, 2008