The Complainants are Sanofi-Aventis of Paris, France, Aventis Inc. of Delaware, United States of America and Aventisub II Inc. of Delaware, United States of America represented by Marchais De Candé of Paris, France.
The Respondent is n/a Andrey Molodavkin of Dzerzhinsk, Russian Federation.
The disputed domain name <buyallegra.org> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2010. On April 8, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 9, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 14, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 14, 2010. 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” 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 April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on May 26, 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 is the owner of the following trademarks, among others:
- Canadian trademark ALLEGRA, No TMA 492.711, registered on April 9, 1998 for “Pharmaceutical preparations, namely antihistamines”. (Annex 5)
- Canadian trademark ALLEGRA-D, No TMA 542.661 filed on March 19, 2001 namely for “Antihistamine/decongestant pharmaceutical preparations not for ophthalmic use”. (Annex 6).
- American trademark ALLEGRA, No 2.067.728 filed on June 3, 1997 in class 5 for “Pharmaceutical preparations, namely antihistamines” and duly renewed. (Annex 7).
- American trademark ALLEGRA-D, No 2157.669 filed on November 1, 1996 in class 5 for “Pharmaceutical preparations, namely antihistamines and decongestants”, and duly renewed. (Annex 8)
- Brazilian trademark ALLEGRA, No 819 351 520 filed on march 2, 1999 namely for “medicamentos que atuam sobre o aparelho respiratorio. Medicamentos imunossupressores, antiinflamatorios, antialergicos, hipossensibilizantes e desintoxicantes” and duly renewed. (Annex 9).
The Complainant is also, among others, the owner of the following domain names:
- The domain name <allegra.org> registered on June 4, 1998 (Annex 10).
- The domain name <allegra.info> registered on July 31, 2001 (Annex 11)
- The domain name <allegra.us> registered on April 19, 2002 (Annex 12)
- The domain name <allegra.biz> registered on March 27, 2002 (Annex 13)
The company name Sanofi-Aventis (of which Aventis Inc. and Aventisub II Inc. are affiliate companies) was adopted on August 20, 2004, as a consequence of the merger of pharmaceutical companies, preserving the brand heritage of these companies. It now claims to be the number one pharmaceutical group in Europe and the number four in the world, with consolidated net sales of € 27,6 billion in 2008. The Complaint indicates current activity in more than 100 countries across 5 continents, employing, at the time of the Complaint, approximately 100.000 people worldwide, having a sales force of 33.507 persons as well as 18.976 research staff with 65 projects under development, 27 of those being in advanced stages.
Sanofi-Aventis offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines
Therefore, Sanofi-Aventis is a major player on the worldwide pharmaceutical market in particular, in the United States of America.
In the field of respiratory and allergy diseases, Aventis Inc., affiliate of Sanofi-Aventis, developed and sells utility drugs under various trademarks, including ALLEGRA, which treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat. The product ALLEGRA was launched, before the merger, by Aventis S.A.
The product ALLEGRA is marketed in more than 55 countries including the United States of America.
All relevant information related to the product ALLEGRA is available on the website accessible from the address “www.allegra.com” which is the official website of Sanofi-Aventis.
Several domain names and trademarks including the expression “Allegra” are registered previous to the registration of the disputed domain name and used by the Complainant in connection with its activity, i.e. pharmaceutical products.
Complainant wrote to WhoisGuard Protected's administrative contact on February 9, 2010 and requested the immediate transfer of the disputed domain name, but the respondent never answered.
The Respondent did not reply to the Complainant's contentions.
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.
Complainant bears the burden of proof for each of these elements.
The Complainants have evidenced registrations for the trademark ALLEGRA in several countries including Canada, the United States and Brazil. The Complainants' trademarks are registered in international class 5 for pharmaceutical products.
The disputed domain name contains the Complainant's distinctive trademark ALLEGRA in its entirety. Neither the addition of the descriptive suffix “buy” as suffix nor the inclusion of the generic denomination “.com” alters the fact that the domain name is confusingly similar to the Complainants' trademark.
Therefore, the Panel finds that the contested domain name is confusingly similar to the Complainants' registered trademark. Therefore, 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.
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 Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
On the Panel's view, the Complainant has provided evidence that the Respondent has knowingly acted so as to harm Complainant's business, for its own commercial gain, by use of the domain name to address the public to an active web site where information about the Complainant's ALLEGRA product is provided.
The Respondent has adopted the Complainant's trademarks and domain names for its own use and incorporated them into its domain name without any authorization or license.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
Under paragraph 4(b), a Respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's website or other online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's site or of a product or service offered on the respondent's site. Policy paragraph 4(b)(iv).
The Panel finds that the Respondent registered the contested domain name which corresponds to a widely used trademark in the pharmaceutical sector with prior knowledges of the Complainant's rights. Only someone who was familiar with the Complainant's mark would have registered a domain name including therein the distinctive expression “Allegra” as such.
In addition, the fact that Respondent's web site is affiliated with an online pharmacy, shows Respondent's intent, for commercial gain, to re-direct Internet users, especially potential customers of Complainant, from the latter's web site to an the site located at “www.canadianhealthcaremall.net”, which competes with Complainant.
In Panel's view, the domain name is used intentionally by the Respondent to attract Internet users and divert them to websites of third parties in order to make unfair benefit of the Complainant and its ALLEGRA products reputation. The Panel considers that these facts lead to the risk of deception and confusion since it could give the impression that his website is somehow endorsed by the Complainant.
Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the contested registration has been made in bad faith. Moreover, in this case, the Complainant has sent a cease-and-desist letter whereby it was requested the immediate transfer of the disputed domain name. The Respondent never answered the mentioned communication. This fact is appreciated by the Panel as another basis to infer bad faith in the registration as well as the use of domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <buyallegra.org>, be transferred to the Complainant
Daniel Peña
Sole Panelist
Dated: June 9, 2010