WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman
Case No. D2007-0042
1. The Parties
The Complainants are Sanofi-Aventis and Merrell Pharmaceuticals Inc., Gentilly, France, represented by Bird & Bird Solicitors, France.
The Respondent is Howard Hoffman, Palo Alto, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <allegrra.com>, <ambienn.com>, <ammbien.com>, <wwwplavix.com> (“Domain Names”) are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2007. On January 12, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Names at issue. On January 16, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 24, 2007. 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”), 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 January 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2007.
The Center appointed Richard Tan as the sole panelist in this matter on March 2, 2007. 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.
4. Factual Background
The Complainants are Sanofi-Aventis, and Merrell Pharmaceuticals Inc.
Sanofi-Aventis is one of the largest pharmaceutical companies in the world. It has through the companies in its group a presence in more than 100 countries. It was formed on August 20, 2004, as a result of a merger between Sanofi-Synthelabo and Aventis Inc. Sanofi-Aventis has a large portfolio of widely known drugs including those under the brand names Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace, and is established in the fields of cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
Sanofi-Aventis manufactures and holds numerous trademark registrations for the drugs AMBIEN and PLAVIX in more than 50 countries around the world, including the United States of America.
Merrell Pharmaceuticals Inc. is a company established in the United States of America, and is a subsidiary company in the Sanofi-Aventis group. It develops and sells drugs for the treatment of respiratory and allergy diseases under various trademarks, one of which is ALLEGRA, which is registered as a trademark in numerous countries, including the United States of America, Canada, Argentina, Brazil and the People’s Republic of China.
The Domain Names registered by the Respondent resolve to websites containing, inter alia, hyperlinks to sponsored sites including online pharmacies offering a variety of pharmaceutical products that the Complainants say directly compete with their AMBIEN, ALLEGRA and PLAVIX products.
The Respondent’s websites currently remain active.
5. Parties’ Contentions
The Complainants contend as follows:
(a) The Domain Names are confusingly similar to the Complainants’ well-known trademarks AMBIEN, ALLEGRA and PLAVIX.
The Complainants have adduced evidence of numerous trademark registrations which they hold for AMBIEN (date of registration in the USA – December 7, 1993), ALLEGRA (date of registration in the USA – March 18, 2003) and PLAVIX (date of registration in the USA – March 11, 1997) for pharmaceutical products and preparations including, but not limited to, Registration Nos. 1808770 (USA), 93456039 (France), 605762 (International Registration), 1466136 (UK), 761307 (Australia) for AMBIEN; Registration Nos. 4170873 (Japan), 613041 (International Registration), 1.719.416 (Argentina), 618992 (Australia), 509,097 (Canada), 952.338 (Colombia), 311129 (Korea), 06439 (Hong Kong), 96597 (Israel), 33593 (OAPI), 10071/93 (Singapore), 260295 (Sweden), 2068394 (UK), 2,042,583 (USA) for PLAVIX; 76246862 (USA) for ALLEGRA.
The Complainants also adduce evidence of domain name registrations of which they are the registrants including, but not limited to, the following: <ambien.fr”; <ambien.us>; <ambien.co.uk>; <ambien.net”; <ambien.biz>; <plavix.com>; <plavix.net”; <plavix.co.uk>; <allegra.com>; <allegra.biz”; and <allegra.us>.
The Complainants contend that the Domain Names <ambienn.com>, <ammbien.com>, <allegrra.com> and <wwwplavix.com> are visually and phonetically similar to the lexical structure of the Complainants’ AMBIEN, ALLEGRA and PLAVIX marks and consist of mere misspellings of these marks and that such similarity generates confusion in the minds of consumers.
The Complainants contend that the Respondent is engaging in “typosquatting” and is attempting to divert traffic from the websites of the legitimate owners to the website of the Respondent.
The Complainants rely on Southern Communication Services, Inc. d/b/a Southern LINC v. Henry Chan (WIPO Case No. D2004-0214), Joanne Rowling v. Alvaro Collazo (WIPO Case No. D2004-0787), Yurtici Kargo Servisi A.S v. Yurticicargo Yurticikargo (WIPO Case No. D2003-0707), Neuberger Berman Inc v. Alfred Jacobsen, (WIPO Case No. D2000-0323) and Playboy Enterprises v. Movie Name Company (WIPO Case No. D2001-1201) as examples of prior decisions where panels have held that minor misspellings of famous trademarks amount to “typosquatting” and are insufficient to distinguish disputed domain names from famous trademarks since such minor misspellings do not change the overall impression of the designations as being connected to the Complainant.
The Complainants further aver that the addition of the .com gTLD with respect to PLAVIX does not detract from the confusing similarity between the disputed domain name <wwwplavix.com> and the Complainants’ marks. It has been held in previous decisions that the addition of a .com gTLD has no distinguishing capacity in the context of a domain name (see Telecom Personal, S.A. v. NAMEZERO.COM, Inc. (WIPO Case No. D2001-0015) and Nokia Corporation vs. Private (WIPO Case No. D2000-1271)).
(b) The Respondent has no rights or legitimate interests in respect of the Domain Names.
The Complainants assert that they have prior rights in the trademarks AMBIEN, ALLEGRA and PLAVIX which rights precede the Respondent’s registrations of the Domain Names.
The Complainants adduce as evidence, print-outs from the Whois Database indicating the registration dates of the Domain Names respectively as July 15, 2004 <ambienn.com>, July 15, 2004 <ammbien.com>, November 13, 2004 <wwwplavix.com>, and May 6, 2004 <allegrra.com>.
As indicated above, the Complainants hold trademark registrations for AMBIEN, ALLEGRA and PLAVIX which predate the Respondent’s domain name registrations.
The Complainants have also provided copies of their press release, their Annual Report for 2005 and other documentation to demonstrate that the marks AMBIEN, ALLEGRA and PLAVIX are well-known worldwide. They have also provided print-outs from the Respondent’s websites showing inter alia, links to sponsored sites offering discount pharmaceuticals that directly compete with the AMBIEN, ALLEGRA and PLAVIX products through various links to online pharmacies.
The Complainants contend that the Respondent has not been authorised to use the AMBIEN, ALLEGRA and PLAVIX marks and further contend that as the Complainants’ trademark registrations predate the dates of registrations of the Domain Names in question, the Respondent has no legitimate right or interests in respect of the Domain Names.
The Complainants further submit that the Respondent’s websites do nothing to disclaim any relationship with the Complainants or dispel the suggestion that Respondent might be the trademark owner or that the websites are possibly endorsed by the trademark owner. The Complainants therefore aver that the Respondent’s use of the Domain Names does not satisfy the test for bona fide use established in prior decisions such as Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903).
Given the worldwide use and media coverage of the AMBIEN, ALLEGRA and PLAVIX products, the Complainants contend that the Respondent cannot possibly be unaware of the fame of these marks, and that the Domain Names were intentionally registered to prevent the Complainants from reflecting the marks in corresponding domain names.
Finally, the Complainants assert that the Respondent’s use of the Domain Names is not bona fide use because of the lack of authorization from the Complainants who have prior trademark rights. Furthermore, using domain names in order to divert consumers for commercial gain cannot be characterized as fair use (see Trip.com v. Daniel Deamone (WIPO Case No. D2001-1066)).
(c) The Respondent’s registration and use of the Domain Name is in bad faith.
The Complainants assert that the following are indicative of the Respondent’s registration and use of the Domain Name in bad faith:
1. The Respondent has no prior rights and no authorization given by the Complainants concerning use of the AMBIEN, ALLEGRA and PLAVIX marks;
2. The Respondent has registered multiple domain names which include famous trademarks;
3. The Respondent must have been aware of AMBIEN, ALLEGRA and PLAVIX as being some of the world’s leading medicines;
4. The Respondent has registered domain names misspelling the AMBIEN, ALLEGRA and PLAVIX trademarks.
More specifically, the Complainants aver that the Respondent does not have prior rights in respect of the AMBIEN, ALLEGRA and PLAVIX marks and that the Respondent’s use of these marks is not bona fide.
The Complainants contend that the registration of multiple domain names which include the Complainants’ famous marks indicates an awareness of the fame of these marks and suggests that the Respondent is engaging in opportunistic cybersquatting and disruption of the Complainants’ business.
The Complainants assert that AMBIEN is the leading prescription sleep-aid, ALLEGRA is one of the leading drug treating symptoms of seasonal allergies in the United States of America and that PLAVIX is one of the world’s 10 leading medicines. Hence, it is not possible for the Respondent not to be aware of the considerable reputation of the Complainants’ products and marks.
The Complainants also refer to prior decisions in which domain names that have infringed Sanofi-Aventis’ trademark rights have been resolved in favor of Sanofi-Aventis (see inter alia Sanofi-Aventis v. Darko (WIPO Case No. D2005-1357), Sanofi-Aventis, Aventis Pharma SA, Merrell Pharmaceuticals v. Georges Breboeuf (WIPO Case No. D2005-1345), Sanofi-Aventis v. MC EU (WIPO Case No. D2006-0403)).
The Respondent has not filed a Response.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the Domain Name:
(i) that the 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 used in bad faith.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”
As the Respondent has not submitted a Response within the prescribed time limits and there having been no exceptional circumstances brought to the attention of the Panel in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true, the factual averments of the Complaint for the purposes of these proceedings, see Talk City, Inc. v. Michael Robertson (WIPO Case No. D2000-0009).
The Respondent’s default does not lead to an automatic ruling in favor of the Complainants. The burden remains on the Complainants to establish, on a balance of probabilities, that it is entitled, under the Policy, to a transfer of the Domain Names, see World Wrestling Federation Entertainment, Inc. v. Michael Bosman (WIPO Case No. D1999-0001).
A. Identical or Confusingly Similar
The Complainants are required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights.
The Complainants contend that they are the owners of numerous trademark registrations for AMBIEN, ALLEGRA and PLAVIX worldwide and have furnished evidence in the form of copies of the registration certificates for these marks.
Having regard to the evidence adduced by the Complainant, and considering that the evidence is unchallenged as no Response has been filed by the Respondent, this Panel accepts that the Complainants have rights in their respective AMBIEN, ALLEGRA and PLAVIX marks within the meaning of paragraph 4(a)(i) of the Policy.
It is apparent from a comparison of the Complainants’ trademarks with the Domain Names that the primary components of <ambienn.com>, <ammbien.com>, <allegrra.com> and <wwwplavix.com> are visually and phonetically similar to the Complainants’ AMBIEN, ALLEGRA and PLAVIX trademarks, and accordingly the Panel finds that the Domain Names are visually and phonetically similar to the corresponding trademarks in which the Complainants have rights.
On the issue of confusing similarity, the Panel notes that prior decisions have established that minor misspellings are not sufficient to escape a finding of substantial similarity. It is also clear that the inclusion of a generic prefix or suffix such as “www” or “.com” does not create a new or different mark in which the Respondent can claim to have rights (see inter alia, CSC Holdings, Inc. v. Elbridge Gagne (WIPO Case No. D2003-0273), CITGO Petroleum Corporation v. Horace A. “Woofer” Smith (WIPO Case No. D2003-0054), EasyGroup IP Licensing Limited v. Amjad Kausar (WIPO Case No. D2003-0012), Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures (WIPO Case No. D2002-0567), Telecom Personal, S.A., v. NAMEZERO.COM, Inc. (WIPO Case No. D2001-0015)).
Accordingly, the Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainants have rights within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants are also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the Domain Names. The onus is initially on the Complainants to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.
It has been recognized by many panels that it is difficult for the Complainant to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy, since it must prove matters that may be within the exclusive knowledge of the Respondent. Accordingly, many panels have held that it is sufficient that the Complainant show prima facie evidence in order to shift the burden of proof on the Respondent (see, for example, Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC (WIPO Case No. D2000-1553), Intocast AG v. Lee Daeyoon (WIPO Case No. D2000-1467)).
The Complainants assert that the Respondent have no rights or legitimate interests in respect of the Domain Names. The Complainants submit that the Respondent’s websites for the Domain Names include search engines and sponsored links which are not associated in any way with the Complainants and that the Complainants have not given any authorisation or consent to the Respondent’s use of the AMBIEN, ALLEGRA and PLAVIX marks.
Even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Domain Name, namely:
(i) before any notice to the Respondent 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 (as an individual, business, or other organization) 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 non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers.
If any of the above circumstances are established, the Respondent may be said to have rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems (WIPO Case No. D2001-0827)), in which event, the Complaint must be denied.
The evidence filed by the Complainants indicate that the Respondent’s sites contain hyperlinks to sponsored sites which are unrelated to the Complainants although they offer the Complainants’ products and competing products for sale and also offer links to other drugs.
The Respondent has not filed any evidence to indicate otherwise.
Further, there appears to be no correlation between the contents of the Respondent’s sites and the Complainants. There is nothing to suggest that the Respondent has been commonly known as a retailer of the Complainants’ products.
Taking into consideration the evidence adduced by the Complainants, the Panel infers that the Respondent has no trademarks or service marks identical to the Complainants’ marks and concludes that the Respondent has no rights or legitimate interests in the Domain Names.
Further, the Respondent has not been authorised to advertise, reproduce or use the Complainants’ marks. Providing links to websites that sell competing products and the Complainants’ products at discount prices, leads to the inference that the Respondent is promoting intra-brand competition and undercutting the business of the Complainants which fails the test for bona fide offering of good or services set out in Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903).
Taking into consideration the evidence adduced by the Complainants and the lack of a response from the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:
(i) circumstances indicating that the Respondent has registered or has acquired 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 or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Complainants aver that the Respondent’s use of the Domain Names is in bad faith since the use is directed to providing advertising links to websites promoting and offering products of competitors in the pharmaceutical field and unrelated services provided by third parties.
The choice and registration of multiple registrations which are clear and obvious misspellings of famous trademarks and the manner in which the Respondent has made use of the Domain Names suggest a deliberate pattern of conduct intended to disrupt the Complainants’ business and to generate confusion in the minds of consumers by trading on the goodwill and reputation of the Complainants’ trademarks, which are well-known in the pharmaceutical industry.
This Panel is satisfied on the evidence presented that the Respondent has deliberately registered and used multiple domain names which are highly similar to the Complainants’ trademarks and also provided sponsored links to unrelated services, all of which show bad faith use and registration of the Domain Names in question, including within the meaning of paragraph 4(b) (ii), (iii) and (iv) of the Policy.
Accordingly, based on the totality of the evidence and in the absence of a response from the Respondent, the Panel finds that the Domain Names have been registered and are being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.
For all the aforementioned reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <ambienn.com>, <ammbien.com>, <wwwplavix.com> and <allegrra.com> be transferred to the Complainants.
Dated: March 16, 2007