The Complainants are Sanofi-Aventis of Paris, France, Aventis Pharma SA of Antony, France and Aventis Pharmaceuticals Inc of Bridgewater, United States of America represented by Selarl Marchais De Candé, France.
The Respondent is Syragon LLC of Fortine, Montana, United States of America.
The disputed domain name <nasacortnasalspray.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2010. On March 4, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 5, 2010, 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. 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 March 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2010. On March 22, 2010, the Respondent sent an email communication to the Center where it indicated its willingness to explore a possible settlement with the Complainants. The Center acknowledged receipt of the Respondent's email communication on March 23, 2010 and informed the Complainant of the possibility to suspend the proceeding in order to allow the transfer of the disputed domain name. The Complainant did not submit any request for suspension and no further communication was received by the Respondent regarding this proceeding.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 19, 2010. 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 Sanofi-Aventis is one of the leading pharmaceutical companies in the world, of which the Complainant Aventis Pharma S.A. is the French subsidiary and the Complainant Aventis Pharmaceuticals Inc. is a United States subsidiary. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in a number of therapeutic areas.
The Complainants are the owners of the trademark NASACORT, which has been registered for goods in international class 5 in several jurisdictions, including in the United States, France, Canada, the European Union, and Hong Kong.
The Complainants further hold registrations for several top-level domain names incorporating the trademark NASACORT including <nasacort.com>, <nasacort.org>, <nasacort.net>, <nasacort.biz>, and <nasacort.info>.
The domain name <nasacortnasalspray.com> reproduces entirely the trademark NASACORT which as itself has no particular meaning and is therefore highly distinctive.
The disputed domain name is a reproduction of the Complainants' trademark in its entirety. The first and dominant part of the disputed domain name consists of the Complainants' trademark and it is therefore confusingly similar to the Complainants' trademark regardless the additional elements.
The only difference between the disputed domain name and the Complainants' trademark resides in the adjunction of the term “nasalspray” placed at the end of the disputed domain name. This additional element is not sufficient to avoid the likelihood of confusion especially since the word “nasalspray” is descriptive of the product sold by the Complainants.
Second, the Respondent does not have any rights or legitimate interests to use the domain name <nasacortnasalspray.com> since its name has no resemblance with the word “nasacort”. Therefore, the Respondent has no prior rights or legitimate interests to justify the use of the Complainants' trademark NASACORT in the disputed domain name.
The Complainants have never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain names including its trademarks.
The website “www.nasacortnasalspray.com” corresponding to the disputed domain name is allegedly dedicated to Sanofi-Aventis medicine and it is explicitly indicated in the text available in the website: “NASACORT is a registered trademark of Sanofi-Aventis in some regions and used under fair use”.
Consequently, in the absence of any permission from the Complainants, and considering the lack of connection between the choice of the domain name <nasacortnasalspray.com> and the Respondent's identity, the Respondent has no rights or legitimate interests in respect of the domain name.
Finally, the Complainants submit that domain name has been registered and is used in bad faith.
The Respondent did not formally reply to the Complainants' contentions. However, after the commencement of the proceedings, the Center received an email communication from the Respondent's email address indicating - in a one page letter - that after reviewing the Complaint it “do[es] not consider that the registration of the Domain Name constituted bad faith”. The Respondent also stated that it had no intention of causing harm to the business of Complainants.
In this letter, the Respondent also stated that it offers information about Nasacort Nasal Spray, which it considers both fair to the Complainants and generally helpful to the public. It adds that this is and has been the primary purpose of both the disputed domain name and the website associated with it.
The Respondent also asserted that it is willing to transfer the disputed domain name to the Complainants in return for a reasonable sum that reflects the cost associated with the disputed domain name, a cost equivalent to USD 120.00.
In order for the Complainants to prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainants have evidenced registrations for the trademark NASACORT in several jurisdictions including Respondent's domicile. Trademark registrations were exhibited in various jurisdictions such as European trademark No. 002303493 registered in 2001; or Canadian trademark No. TMA 421499 registered on December 24, 1993; or United States, location of the Respondent, registration No. 1,538,836 dated May 16, 1989. The Complainants' trademarks are registered in international class 5 for pharmaceutical products.
The disputed domain name contains the Complainant's distinctive trademark NASACORT in its entirety. Neither the addition of the descriptive suffix “nasal spray” as suffix nor the inclusion of the gTLD denomination “.com” alters the fact that the domain name is confusingly similar to the Complainants' trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainants' registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or a legitimate interest in the domain name, once the complainant has made a prima facie showing (See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
There is no dispositive evidence before the Panel that the Complainants have licensed or otherwise permitted the Respondent to use their trademark or to apply for any domain name incorporating the Complainants' trademark. In addition, there is no evidence that the Respondent would be (as an individual, business, or organization) commonly known by the disputed domain name.
The Complainants further allege that the Respondent has no legitimate interest in the domain name. The Respondent stated in his email of March 22, 2010 that: “We offer information about Nasacort Nasal Spray, which we consider both fair to you and generally helpful to the public”. One may interpret from this answer that the Respondent considers to have a legitimate interest in the disputed domain name because it uses the domain name for a site that provides, inter alia, drug information. The Policy provides that a legitimate interest may be found, e.g. where the Respondent can show that it “is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers…”. Here, the evidence shows that the Respondent is using a domain name confusingly similar to Complainants' mark to lead Internet users and patients to a site containing several hyperlinks to an online pharmacy. Thus, it appears that the disputed domain name is used for commercial gain to misleadingly divert consumers.
The Panel accessed the disputed domain name on May 3, 2010. By examining the content of the associated website the Panel was able to verify that there is a link to an external website “www.kiwidrugs.com”1 where the products of Complainants are on sale. Additionally, the disputed domain name contains the legend “Buy Nasacort Now!” with a hyperink that resolves to the same website. Furthermore, as the Complainants have pointed out, and which is clear from the content of the website including the many links, the website under the disputed domain name contains aproximately sixteen hyperlinks to websites where competing products of the Complainants are on sale.
In sum, the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names as:
(i) The Complainants have not licensed nor authorized the Respondent to use their trademark NASACORT in the disputed domain name;
(ii) The websites to which the disputed domain name resolves and the links it contains are all composed of the Complainants' trademark NASACORT, all of which redirect to an online pharmacy website located at “www.kiwidrugs.com”. This pharmacy offers the Complainants' drugs for sale under the trademark NASACORT as well as other drugs manufactured by competitors of the Complainant. It is evident that the Respondent cannot have any rights or legitimate interests in the disputed domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct Internet users to an online pharmacy (See Pfizer Inc. v. Seito and Vladmir Snezko, WIPO Case No. D2001-1199; F. Hoffmann-La Roche AG v. Nexton Limited, Ryabov Sergey, WIPO Case No. D2010-0101; F. Hoffmann-La Roche AG v. Fredderick, WIPO Case No. D2006-0306).
As the Respondent has not presented any evidence rebutting this prima facie showing, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent's registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.
Given the fame of the Complainants' trademark and the coined nature of the word “nasacort”, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainants and their mark. This seems to be recognized or at least not rebutted by the Respondent in its email communication (See in this connection Sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharma Sa v. Daniel Kunkel, WIPO Case No. D2008-0638).
The Panel notes in this regard that the Complainants' trademark was registered in the country of residence of the Respondent in 1989 and the disputed domain name was registered only in 2009, i.e. twenty years after the existence of the trademark. Furthermore, the Complainants have operated a website using the NASACORT trademark since March 8, 1997 which is associated with the domain name <nasacort.com>. Thus, the Panel is convinced that, as the Complainants argue, the Respondent was well aware of the fame of the Complainants' trademark when it registered the disputed domain name on June 4, 2009 (See in this connection Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094).
As described above, the disputed domain name is used to provide links to websites were Nasacort products are being sold, as well as to websites selling also products competing with Nasacort. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' mark (See, Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Hoffmann-La Roche Inc. v. Online Pharma, WIPO Case No. D2006-0628; Sanofi-Aventis , Aventis Pharmaceuticals Inc., Aventis Pharma S.A. v. Conor O' Connor, WIPO Case No. D2006-1310 and Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094).
In addition, the Respondent recognizes the existence of the Complainants' trademark by stating in its corresponding website: “Nasacort ™ is a registered trademark of Sanofi Aventis in some regions…”. The fact that the Respondent has put a disclaimer on the website cannot of itself cure bad faith, when bad faith has been established by other factors (See Sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharma Sa v. Daniel Kunkel, WIPO Case No. D2008-0638; Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
Therefore, the Panel finds that the domain name was registered and is being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.
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 <nasacortnasalspray.com> be transferred to the Complainants.
Pablo A. Palazzi
Dated: May 3, 2010
1 Located at the URL “http://www.kiwidrug.com/search/nasacort/?x=33&y=16”