WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Aventis Pharmaceuticals Products Inc. v. Nejat

Case No. D2003-0401

 

1. The Parties

Complainant is Aventis Pharmaceuticals Products Inc. of Bridgewater, New Jersey, United States of America ("Aventis" or "Complainant").

Respondent is Morris Nejat of New York, United States of America ("Nejat" or "Respondent").

 

2. Domain Name and Registrar

The domain name at issue is: <nasacortaqua.com> (the "domain name").

The registrar is DotRegistrar a division of iHoldings.com.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by e-mail on May 26, 2003, and in hard copy on May 28, 2003. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Center.

On May 26, 2003, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On May 28, 2003, the Registrar transmitted via e-mail to the Center its response, stating (inter alia) that (1) it had not yet received a copy of the Complaint; (2) the domain name was registered through it; (3) Respondent is the current registrant of the domain name; (4) the Policy applies to the domain name; and (5) the domain name will remain locked during this administrative proceeding.

On June 5, 2003, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier (FedEx) to Respondent and via e-mail to the Registrar. The Center advised that Respondentís Response was due by June 25, 2003, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules, and described the consequences of a default if the Response was not sent by the due date. The Center also noted that Complainant had elected for a single panelist to decide this matter.

The requirements of Rule 2(a) having been satisfied, the formal date of the commencement of this administrative proceeding, pursuant to Rule 4(c), is June 5, 2003.

No Response was received from Respondent by the June 25, 2003, deadline. On July 1, 2003, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default. The Center advised Respondent that (a) Respondent had failed to comply with the deadline for submission of its Response and (b) the consequences of default, including (1) that a single panelist would be appointed (per Complainantís request); (2) that the Panel would be informed of Respondentís default and would decide, in its sole discretion, whether to consider a Response if submitted later; and (3) notwithstanding the default, the Center would continue to send all case-related materials to Respondent.

No Response was received from Respondent, either by the June 25, 2003, deadline or at any other time.

On July 15, 2003, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by July 29, 2003.

On July 15, 2003, the Center transmitted the case file to the Panel.

 

4. Factual Background; Partiesí Contentions

a. The Trademark

The Complaint is based on Complainantís alleged ownership of rights in the mark NASACORT, which Complainant maintains is either identical or confusingly similar to the domain name. Complainant uses the mark NASACORT for a drug to treat allergic rhinitis. Complainant provided evidence of its use of the NASACORT mark, including printouts from its website at <nasacort.com>.

Complainant owns U.S. Trademark Registration No. 2,008,763 for the mark NASACORT for "pharmaceutical preparations for treating respiratory disorders." Complainant provided the Panel with a copy of its registration certificate for the aforementioned trademark, which sets forth a date of first use of the mark in 1991. The Panel notes, however, that Registration No. 2,008,763 was canceled on July 19, 2003.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. The Registrarís registration agreement incorporates the Policy by reference.

On Page 6 of its Complaint, Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.

c. The Complaint

Complainant asserts as follows:

- That Complainant sells, throughout the world, a drug with demonstrated utility to treat allergic rhinitis under the mark NASACORT.

- That Complainant owns and operates a website at <nasacort.com> containing information about the drug it markets under the name NASACORT.

- That Complainant owns U.S. Trademark Registration No. 2,008,763, for NASACORT for pharmaceutical preparations for treating respiratory disorders, as well as several trademark registrations for the mark NASACORT in other jurisdictions.

- That the domain name is confusingly similar to the NASACORT mark.

- That Respondent has no rights in the domain name.

- That Respondent registered and is using the domain name in bad faith.

- That Respondent holds himself out as a medical doctor specializing in the field of respiratory and allergy diseases.

- That the domain name resolves to a website identical to that of Respondentís medical practice, <nyallergy.com>, which invites potential patients to make appointments, offers products for commercial sale, and displays Complainantís trademarks NASACORT, NASACORTAQ and AVENTIS.

- That Respondent is not authorized by Complainant to display Complainantís trademarks on his website, and that such display leads to confusion with the official product and website of Complainant.

- That Respondentís use of the domain name is intended to attract, for financial gain, Internet users to Respondentís website by creating a likelihood of confusion with Complainantís trademark as to the source, sponsorship, affiliation or endorsement of Respondentís website by Complainant.

- That Respondent has engaged in a pattern of objectionable conduct in registering domain names confusingly similar to Complainantís trademarks, including <nasocort.com>, <nasocortaq.com>, <nasacortaq.com> and <nasacorthfa.com>, all of which were transferred to Complainant in previous UDRP cases handled under the auspices of WIPO.

- That, in light of previous proceedings, Respondent was undoubtedly aware, at the time he registered <nasacortaqua.com>, of (a) Complainantís rights in the mark NASACORT; and (b) Complainantís registration and use of the domain name <nasacort.com>.

- That Respondent has a history of offering to sell domain names to Complainant for an amount in excess of the costs associated with registration.

d. The Response

As noted above, Respondent is in default pursuant to Rule 5(e), Rule 14 and Supplemental Rule 7(c) because no Response was received from Respondent by the applicable deadline.

Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for Complainant. Rather, under Paragraph 4(a) of the Policy, it remains Complainantís burden to establish that all three of the required criteria for a transfer of the domain name or other remedy have been met.

Under Rule 5(e) and Rule 14(a), the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under Rule 14(b), the Panel is empowered to draw such inferences from Respondentís default as it considers appropriate.

 

5. Discussion and Findings

a. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response (or lack thereof), the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panelís view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name, each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

b. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the domain name, such as use or preparation to use the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate noncommercial or fair use of the domain name.

c. Complainantís Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant has proven that it is the owner of rights in the trademark NASACORT. Although Complainantís United States trademark registration was recently canceled, apparently for failure to pay the renewal fee required by ß 8 of the Lanham Act, the mark was still registered at the time Respondent registered and used the domain name. Moreover, Complainant has demonstrated its longstanding use of the mark NASACORT in the United States, pursuant to which it has common-law trademark rights in the mark. Complainantís assertion of rights in the mark NASACORT is unrebutted.

In comparing Complainantís mark to the domain name, it is well established that the generic top-level domain, in this case ".com," must be excluded from consideration as being a generic or functional component of the domain name. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000).

The Panel finds that the remaining term, nasacortaqua, is confusingly similar to Complainantís trademark NASACORT. In this regard, the Panel agrees with the distinguished panels in two previous cases, which held that various suffixes related to the use of the NASACORT drug do not mitigate a likelihood of confusion with the NASACORT mark. See Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC, WIPO Case No. D2003-0122 (April 14, 2003) (finding <nasacorthfa.com> confusingly similar to NASACORT; "The addition of HFA corresponds to the generic name of a propellant used to deliver nasal medicationsÖ persons encountering the domain name are likely to confuse it with Complainant and Complainantís NASACORT product."); Aventis Pharmaceuticals Products Inc. and Merrell Pharmaceuticals Inc. v. PBS Publishing LLC, WIPO Case No. D2002-0343 (June 12, 2002) (finding <nasacortaq.com> confusingly similar to NASACORT; "The suffix Ďaqí is the pharmaceutical abbreviation meaning Ďaqueousí. It is clear that the distinctive trademark NASACORT is the most prominent element in this combination ... The ability of the suffix Ďaqí to distinguish the domain name from Complainantís trademark is limited.").

This Panel concludes that the suffix "aqua," like the suffix "aq," suggests the same pharmaceutical term referenced in the above-cited case and thus likewise does little or nothing to distinguish the domain name from Complainantís NASACORT mark. Accordingly, that feature of the domain name does not mitigate the likelihood of confusion.

(ii) Whether Respondent Has Rights or Legitimate Interests in the Domain Name

There is no evidence in the record that Respondent has any legitimate interests in the domain name. Complainant states in the Complaint that Respondent has no rights or legitimate interests in the domain name. This contention is unrebutted, and the Panel finds it credible.

The Panel concludes that none of the three illustrative circumstances set forth in Paragraph 4(c) of the Policy demonstrate any rights or legitimate interests in the domain name on the part of Respondent. First, it cannot reasonably be said that Respondent made use (let alone a bona fide use) of the domain name before notice to it of a dispute. Respondent registered the domain name on February 25, 2003, more than eight months after a previous panel (in WIPO Case No. D2002-0343) transferred the domain name <nasacortaq.com> to Complainant. Accordingly, Respondent was, or should have been, well aware that Complainant would object to his registration of the domain name, before registering or making any use of the domain name.

The Panel also concludes (a) that Respondent has not been commonly known by the domain name, and (b) that his use of the domain name in connection with a for-profit business is not a legitimate non-commercial or fair use.

In summary, Complainantís use of the NASACORT mark, coupled with Respondentís obvious awareness of such use and of Complainantís rights in the mark from previous proceedings, the arguments and proof presented by Complainant, and Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondent has no rights or legitimate interests in the domain name.

(iii) Registration and Use in Bad Faith

Complainantís third hurdle is to establish that Respondent has registered and used the domain name in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition or registration of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark Ö or to a competitor of that complainant, for valuable consideration in excess of [registrantís] documented out-of-pocket costs directly related to the domain name."

In this case, the Panel finds some evidence of this type of bad faith. Complainant submitted correspondence (at Annex 11 to the Complaint) in which Respondent and/or his business partner offered to sell the domain names at issue in previous cases to Complainant for an amount in excess of the costs associated with registration. This could be interpreted as a "circumstance indicating" that Respondent registered the domain name at issue in this case for the same purpose. Because there is no direct evidence of such an intention with regard to the domain name at issue here, however, the Panel declines to infer from previous instances that Respondentís intention was the same here.

The second illustration of bad faith in the Policy occurs when the registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Complainant does not allege that this was Respondentís intention in registering the domain name, and indeed Complainant has not been prevented from registering the correctly-spelled mark as a domain name. Accordingly, the Panel does not find this illustration applicable here.

The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." On the facts of this case, there is no evidence that Respondent is a competitor of Complainant. Accordingly, the Panel need not reach the question of whether Respondentís registration of the domain name has disrupted Complainantís business. It may well have, but since the threshold requirement of illustration three, namely competition between the parties, has not been established, this illustration is found to be inapplicable.

The fourth illustrative example of bad faith in the Policy is a respondentís use of the domain name in an effort to attract, for commercial gain, Internet users to the respondentís website by creating a likelihood of confusion with the complainantís mark. This illustration is plainly applicable here, as explained in the two previous decisions referred to above, in which the same or similar conduct was held to constitute bad faith:

"Under the circumstances, I find it more likely than not that Respondent deliberately registered and used the domain name to attract Internet users to its commercial website based on a likelihood of confusion with Complainant as to the affiliation or endorsement of its website. I find no other plausible explanation for Respondentís registration and use of the domain name for a commercial site advertising the services of the New York Allergy & Sinus Center."

Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC, WIPO Case No. D2003-0122.

"Respondent has intentionally attempted to attract Internet users to his websites, by creating a likelihood of confusion with Complainantís trademarks as to the source, sponsorship, affiliation or endorsement of the website under these domain names."

Aventis Pharmaceuticals Products Inc. and Merrell Pharmaceuticals Inc. v. PBS Publishing LLC, WIPO Case No. D2002-0343.

The Panel concludes that, because the domain name currently resolves to Respondentís commercial website, and because Respondent places advertising on that website designed to generate revenue off of the Internet userís likely confusion, the fourth illustration of bad faith is met. Indeed, although not a necessary finding for purposes of reaching this conclusion, it is clear from past decisions that Respondent has engaged in a pattern of similar bad faith activities.

In sum, the Panel concludes that Respondent has registered and used the domain name in bad faith, as exemplified by illustration (iv) in Paragraph 4(b) of the Policy.

 

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that Complainant has met its burden of proving: (1) the domain name is confusingly similar to Complainantís trademark NASACORT; (2) Respondent has no rights and no legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the domain name be transferred to Complainant.

 


 

Michael A. Albert
Sole Panelist

Dated: July 29, 2003