The Complainants are Sanofi-aventis, of Paris, France, Aventis Pharmaceuticals Holdings Inc., of New Jersey, United States of America (“Aventis NJ”), and Aventis Pharmaceuticals Holdings Inc. of Delaware, United States of America (“Aventis Delaware”), represented by Selarl Marchais De Candé, Paris, France.
The Respondent is La Fontaine, of Denver, Colorado, United States of America.
The disputed Domain Name <sculptradenver.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2008. On October 3, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On October 3, 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 Domain Name. The Center verified that 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 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 Warwick Smith as the sole panelist in this matter on December 2, 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 Panel has reviewed the Center's documents relating to the notification of the Complaint to the Respondent, and has also read certain emails passing between the Center and the administrative contact for the Domain Name (as listed in the contact details provided by GoDaddy.com) relating to the imminent expiry of the registration of the Domain Name. Having read those documents, the Panel is satisfied that the Respondent has received actual notice of the Complaint.
The following (uncontested) facts are taken from the Complaint.
The first-named Complainant, Sanofi-aventis, was formed in 2004 as the result of a merger between the two French companies, Aventis SA and Sanofi-Syntherlabo. Completion of the merger created the No 1 pharmaceutical group in Europe, and the fourth largest pharmaceutical group in the world. Sanofi-aventis carries on business in more than 100 countries around the world.
Sanofi-aventis offers a wide range of patented prescription drugs. In the field of dermatology, Sanofi-aventis markets a product SCULPTRA, which appears to have both medical and cosmetic uses, primarily in the restoration and/or correction of facial fat loss. It is not clear to the Panel whether Aventis NJ and Aventis Delaware are the same company. The Complaint simply notes that “Aventis Pharmaceuticals Holdings Inc.” is an American subsidiary of Sanofi-aventis. Nothing appears to turn on the point, as the principally relevant trademark registration referred to below is held by Aventis Delaware, and the remedy requested in the Complaint is the transfer of the Domain Name to a corporation having the same name as Aventis Delaware.
The Complainants have produced evidence of registered SCULPTRA trademarks in various parts of the world. For present purposes, it is only necessary to refer to the registration number 3056196 which has been registered, with effect from June 25, 2003, on the principal register maintained by the United States Patent & Trademark Office. The registration is in international classes 5 and 10, and covers “pharmaceuticals preparations, namely, injectable poly-I-lactic acid for use in non-surgical restorative and beauty care treatment of fine lines and wrinkles” (class 5), and “surgical implants comprised of artificial materials for therapeutic, cosmetic, and aesthetic surgery” (class 10).
The SCULPTRA mark number 3056196 is registered in the name of Aventis Delaware.
Aventis Delaware, or other members of the Sanofi-aventis Group, are the registered owners of a number of “sculptra” domain names, including <sculptra.com>, <sculptra.net>, <sculptra.org>, <sculptra.info>, and <sculptra.us>. The Complainants say that most of those domain names point to the group's principal website at “www.sculptra.com”, where Sanofi-aventis presents the products sold under the SCULPTRA mark.
The Domain Name was registered on December 31, 2006. The Domain Name points to a website at “www.denverfusionspa.com” (which is referred to for convenience in this decision as “the Respondent's website”).
The Respondent's website is the website used by a business in Denver, Colorado, called “La Fontaine”, which is described on the Respondent's website as the first spa of its kind in the United States, “fusing the latest in medical and dental aesthetics, innovative spa treatments.” The services operated by the La Fontaine business are divided into three categories medical aesthetic services, dental aesthetics, and spa services. The “News & Events” page of the Respondent's website notes that the business was founded by Mr. Ken Oleszek, a medical practitioner, and Mr. John Quigley, a dental surgeon. Mr. Oleszek is the administrative and technical contact for the Domain Name, and Mr. Quigley is the registered owner of the domain name <denverfusionspa.com>.
A section of the Respondent's website dealing with “Dermal Fillers” (used to treat facial wrinkles and increase the appearance of fullness on the hands) describes a number of dermal fillers available on the market. One is the Complainant group's Sculptra dermal filler. Among the other dermal fillers described on the Respondent's website, are two products marketed by competitors of the Sanofi-aventis Group (the “Juvederm” and “Restylane” products).
Sanofi-aventis sent a cease and desist letter to Mr. Oleszek on February 12, 2008. The letter referred to the Complainants' SCULPTRA mark, and requested that Mr. Oleszek arrange the transfer of the Domain Name, within 8 days. On February 14, 2008, Mr. Oleszek sent a reply email, saying: “I am not using the url now. Will you pay my expenses?”
The Complainants contend:
1. The Domain Name is confusingly similar to the Complainants' SCULPTRA mark. The Domain Name reproduces that mark in its entirety, and the mark is the first and dominant part of the Domain Name. The addition of “Denver” does nothing to avoid the confusing similarity, as “Denver” is descriptive and obviously refers to the city in Colorado where the Respondent's business is located. The Domain Name gives the impression that the product sold under the SCULPTRA mark may be found in Denver.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following matters:
(i) There is no connection between the name of the Respondent's business (“La Fontaine”) and the Domain Name.
(ii) The Respondent has more interest in the domain name <denverfusionspa.com>. The Respondent does not need to use the Domain Name as an address for a website promoting the La Fontaine business.
(iii) The Complainants have neither licensed nor permitted the Respondent to use the SCULPTRA trademark, or to use any domain name incorporating the SCULPTRA mark.
3. The Domain Name was registered and is being used in bad faith.
(i) The Respondent was aware of the SCULPTRA mark when the Domain Name was registered. That is apparent from the fact that the Respondent is involved in the field of cosmetic surgery, and advertises the Sculptra product on the Respondent's website.
(ii) The Domain Name has clearly been registered by the Respondent with the intention that it would be taken as a reference to the Complainants' Sculptra product.
(iii) The reproduction of the Complainants' trademark in a domain name without authorization, creates confusion for consumers, who are looking for information about the drug Sculptra sold by the Complainants. Internet users may believe that there is an official affiliation between the Respondent's website and the Complainant group.
(iv) The Respondent's website does not only offer the Sculptra product. It contains personal advertisements for the Respondent's medical activities, designed to attract new patients, and it advertises dermal fillers produced by the Complainants' competitors. That cannot constitute a fair use of the Domain Name (citing Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809).
(v) The Respondent is trying to attract, for commercial gain, patients to the Respondent's website by creating a likelihood of confusion with the Complainants' SCULPTRA mark as to the source, sponsorship, affiliation, or endorsement of the Sculptra product offered on the Respondent's website (Policy, paragraph 4(b)(iv)).
(vi) Although Mr. Oleszek advised on February 14, 2008 that he was not using the URL any more, seven months later, when the Complaint was filed, the Respondent was still using the Domain Name. Furthermore, Mr. Oleszek's February 14, 2008 email clearly indicated that the Respondent was waiting for a financial proposition from the Complainants before it would transfer the Domain Name to the Complainants. It may be inferred from those circumstances that the Respondent acquired the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration for a valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name (Policy, paragraph 4(b)(i)).
The Respondent did not reply to the Complainants' contentions. However, in response to an October 8, 2008 email from the Center to the Registrar and the parties relating to the expiry date for the registration of the Domain Name, Mr. Oleszek sent an email to the Center asking: “What does all that mumbo jumbo mean? What do you want from me?”
The following day, Mr. Oleszek sent two emails to the Center within two minutes of each other. The two emails were to the same general effect. The second one read:
I decline to pay for the continued activation of the domain name sanofi-aventis can buy it after it expires. If sanofi-aventis would have dealt more politely in this situation, it could have saved a lot of money. The silly french!
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The Complainants have proved this part of their Complaint. They have sufficiently proved that Aventis Delaware is the registered proprietor of the mark SCULPTRA in the United States of America, and that that mark has been incorporated in its entirety in the Domain Name. The word “sculptra” is the first and most dominant part of the Domain Name, and the only additions are the geographical indicator “Denver” and the generic suffix “.com”.
Numerous WIPO panels have found that a domain name that wholly incorporates the complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy see, for example, Nokia Group v Mr. Giannattasio Mario, WIPO Case No. D2002-0782. That is the position in this case, where the expression “sculptra” is not a commonplace word and. Furthermore, those familiar with the Complainants' SCULPTRA drug would probably understand this expression as a reference to the drug as marketed, sold, or used in the city of Denver, Colorado. Having regard to those considerations, the Panel concludes that the Domain Name is confusingly similar to the Complainants' SCULPTRA mark.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the Complainants' SCULPTRA mark, and the Complainants have not authorized the Respondent to use that mark, whether in a domain name or otherwise. There is no suggestion that the Respondent is known by the Domain Name, so paragraph 4(c)(ii) of the Policy cannot apply. The Domain Name is clearly being used in connection with a commercial website, and that use cannot be described as a “non-commercial” or “fair” use, without intent for commercial gain. So paragraph 4(c)(iii) of the Policy is also inapplicable.
That combination of circumstances provides sufficient prima facie proof that the Respondent lacks any rights or legitimate interests in respect of the Domain Name. The evidentiary burden of proof on this part of the Complaints therefore shifts to the Respondent.
The Respondent has not filed any Response, and has accordingly failed to discharge that evidentiary burden. The Complainants must therefore succeed on this part of their Complaint.
For completeness, the Panel notes that it is difficult to imagine what kind of argument the Respondent might have advanced in support of a “right or legitimate interest claim”. Certainly paragraph 4(c)(i) of the Policy would not have availed the Respondent: for the reasons which are set out in the next section of this decision, the Panel is satisfied that the Domain Name was registered and is being used in bad faith, and it follows from that conclusion that the Domain Name cannot be regarded as having been used by the Respondent in connection with any bona fide offering of goods or services (such as might have provided a basis for a right or legitimate interest under paragraph 4(c)(i) of the Policy).
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. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.
The Complainants have also proved this part of their Complaint. The Panel reaches that conclusion on the following grounds.
1. The Domain Name obviously refers to the Complainants' SCULPTRA product, and the Respondent's website leaves no room for doubt that the Respondent was well aware of the SCULPTRA product when the Domain Name was registered (the product itself is advertised on the Respondent's website).
2. This is not a case of a bona fide reseller selling a complainant's trademarked products through a website at a disputed domain name. Bona fide resellers of trademarked goods, who sell those goods through a website at a domain name which consists of or incorporates the trademark owner's trademark, must comply with certain requirements for their activities to be regarded as bona fide under the Policy. Those requirements were set out in the decision of Oki Data Americas Inc. v. AFD Inc., WIPO Case No. D2001-0903, and have subsequently been confirmed in numerous panel decisions (see, for example, Volvo Trademark Holding AB v Auto Shivuk, WIPO Case No. D2005-0447, where a number of the cases are helpfully summarized). One of the requirements laid down by the Panel in the Oki Data Americas Inc. case, was that, for the respondent reseller's activities to be regarded as bona fide, the Respondent must use the website at the disputed domain name to sell only the trademarked goods (otherwise, the respondent could be using the trademark to bait Internet users and then switch them to other goods). In this case, the Respondent's website is used to market other goods and services i.e., additional to the Complainants' SCULPTRA product. The Respondent's use therefore fails to meet the Oki Data Americas Inc. “bona fide reseller” test. Furthermore, the Respondent's website is used to market the goods of the Complainants' competitors. Using a disputed domain name consisting of or incorporating a complainant's trademark for the purposes of selling products marketed by the complainant's competitors, has typically been regarded as a powerful indicator of bad faith registration and use, and that is the position in this case.
3. The Respondent's failure to respond to the Complaint, and its failure to offer any explanation for its choice of the Domain Name, leave little room for doubt that the Respondent chose the Domain Name with a view to “free riding” on the Complainants' goodwill in their SCULPTRA mark. In the absence of any explanation from the Respondent to the contrary, the only sensible explanation for the Respondent's choice and use of the Domain Name is that the Respondent intentionally attempted to attract to the Respondent's website, for commercial gain, Internet users who would mistakenly believe that the Respondent's website was that of a business in the Denver area which was affiliated in some way with the manufacturer or marketer of the Scupltra drug. Those circumstances fall squarely within paragraph 4(b)(iv) of the Policy, and the Panel finds that the Respondent has been guilty of the kind of bad faith registration and use which is described in that subparagraph of the Policy.
4. The emails from Mr. Oleszek, to the Complainants in February of 2008 and to the Center after the Complaint in this proceeding had been filed, are entirely consistent with the Panel's conclusion that the Respondent registered and has been using the Domain Name in bad faith. On neither occasion did the Respondent assert any right or interest in the Domain Name. It may be that the Respondent registered the Domain Name for the bad faith purpose described at paragraph 4(b)(i) of the Policy as the Complainants submit, but that is not clear, and it is not something which the Panel needs to decide in order to come to a decision on this Complaint. For the reasons set out above, the Panel is satisfied that the Respondent registered the Domain Name for the bad faith purpose which is described at paragraph 4(b)(iv) of the Policy.
The Complainants having made out their case on all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred, as requested, to Aventis Delaware.
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 <sculptradenver.com>, be transferred to the Complainant Aventis Pharmaceuticals Holdings Inc. of Deleware, United States of America.
Dated: December 16, 2008