WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventisub II Inc. v. Mikhail Pavlishin
Case No. D2011-0270
1. The Parties
The Complainants are Sanofi-aventis and Aventisub II Inc. of Paris, France and Grennville, Delaware, United States of America.
The Respondent is Mikhail Pavlishin of Stebnik, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <allegra-180mg.net> is registered with the Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2011. On February 9, 2011, the Center transmitted by email to the UKRNAMES. a request for the Registrar’s verification in connection with the disputed domain name. On February 18, 2011, the UKRNAMES transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the contact details. The Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
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 February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 18, 2011. The Respondent did not submit any response. Accordingly, the Center issued a notification regarding the Respondent’s default on March 20, 2011.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 31, 2011. The Panel declared itself to be properly constituted. The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant in the Complaint submitted a request that English be the language of the proceedings for the following reasons: the website in dispute is in the English language, the domain and webpage also refers to a website named EUROPEAN MEDS, wherein the languages proposed on this site are “American” and English and the product is described in English.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Russian, however subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (see Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583, Groupe Auchan v. xmxzl , WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.)
In the present case although the language of the registration agreement is Russian, the Complainant argued that the language of these proceedings should be English, as the Respondent could and had communicated in that language. Since the Respondent has not filed a Response to the Complaint, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from the Respondent's default [see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009] and lack of any objections regarding the Complainant’s motion for the change of the language. In this vein the Panel found that the Respondent did not object to the change and the change of the default language of the proceedings (Russian) is driven also by the rule of practicability and efficiency of the dispute resolution process. For the foregoing reasons the Panel found that English shall be the language of the proceeding.
4. Factual Background
Sanofi-aventis is a multinational company settled in more than 100 countries around 5 continents. After the merger of Aventis SA and Sanofi-Synthelabo, Sanofi-aventis became the first pharmaceutical group in Europe, fourth in the world, with consolidated net sales of EUR 29.3 billion in 2009, in the core business and a strong direct presence on all major world markets, and EUR 4.6 billion Research and Development expenditure in 2009.
Sanofi-aventis offers a wide range of patented prescription drugs to treat patients with serious diseases. In the field of respiratory and allergy diseases, Aventis Inc., an 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 sore throats. ALLEGRA was launched, before the merger, by AVENTIS.
ALLEGRA is marketed in more than 55 countries including the United States of America and Canada. The Complainant has registered various trademarks, in particular it owns the registrations of the ALLEGRA trademark in a variety of forms including:
Canadian trademark ALLEGRA No. TMA 492 711 filed on April 9, 1998 for "Pharmaceutical preparations, namely antihistamines",
Canadian trademark ALLEGRA-D No. TMA 542 661 filed on March 19, 2001 for "Antihistamine/decongestant pharmaceutical preparations not for ophthalmic use",
American trademark ALLEGRA No. 2 067 728 filed on June 3, 1997 in class 5, for "Pharmaceutical preparations, namely antihistamines", subsequently renewed,
American trademark ALLEGRA-D No. 2 157 669 filed on November 1st, 1996 in class 5 for "Pharmaceutical preparations, namely antihistamines and decongestants" subsequently renewed.
The Complainant owns, inter alia, the <allegra.com> and <allegra.us> domain names.
The Complainant has learnt that the disputed domain name <allegra-180mg.net> relates to a retail pharmacy website under the name "European Meds World", operated by the Respondent. The online pharmacy offers ALLEGRA products or generic and/or competitors’ products.
5. Parties’ Contentions
The Complainant submitted that the disputed domain name <allegra-180mg.net> is confusingly similar to the trademarks and domain names over which the Complainant has rights, since it reproduces entirely the mark ALLEGRA. Further, the Complainant held that the mere word “allegra” has no particular meaning and is highly distinctive. The reproducing of the Complainant's trademark in its entirety as the dominant part of the disputed domain name is confusingly similar to this trademark regardless the addition of the term"180mg". Tellingly, the Complainant underlined that the suffix “180mg" only refers to the dosage of fexofenadine which is the active ingredient of Allegra.
The Complainant contended that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the name "Mikhail Pavlishin" bears no resemblance to the word "allegra”. Neither did the Complainant grant the Respondent any license or other authorization to use its trademarks in relation to the disputed domain name.
Thirdly, the use of the disputed domain name by the Respondent is not made in connection with a bona fide offering of goods or services so as to confer a right or legitimate interest in it as it leads to an online pharmacy "European Metis World" operated by the Respondent.
The disputed domain name has been registered for the purpose of attracting Internet users to the Respondent's website and reaping the unfair benefit of its reputation, by creating a likelihood of confusion between ALLEGRA trademarks and the disputed domain name <alIegra-180mg.net>. Further, the Complainant alleged that the Respondent is deliberately trying to gain an unfair benefit on the back of Sanofi-aventis and its ALLEGRA products' reputation by using the disputed domain name <allegra-180mg.net> in association with the product description and trademark ALLEGRA, which suggests an effort to create a likelihood of confusion with the Complainant's trademarks and domain names as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and of pharmaceutical products advertised for sale on it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has proved that the disputed domain name <allegra-180mg.net> is identical or confusingly similar to the name and trademarks of the Complainant.
The confusing similarity of the disputed domain name <allegra-180mg.net> to the Complainant’s trademarks and service marks is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark supplement solely by the suffix “180 mg” which in fact is the dosage of fexofenadine which is the active ingredient of ALLEGRA. The phrase “allegra” does not appear to have any generic meaning in any European language.
The disputed domain name <allegra-180mg.net> contains a trademark owned legally by the Complainant. This is sufficient to satisfy the requirement that the disputed domain name in question be confusingly similar to a mark in which the Complainant has rights (see also decision in Oki Data Americas Im v. ASD Inc., WIPO Case No. D2001-0903 - cited by the Complainant, wherein the panel found that "when a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words").
The Panel therefore finds that the disputed domain name <allegra-180mg.net> is confusingly similar to the Complainant’s trademark and as a consequence, the complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation 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. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Nonetheless, the Respondent was also given the opportunity to challenge the case against him. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed domain name <allegra-180mg.net>.
The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name <allegra-180mg.net>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant is the owner of the trademark comprising of the word “allegra”.
Under Article 4(b) (iv) a domain name is considered to be registered in bad faith (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on its web site or location.
Based on the evidence submitted by the Complainant, the Panel finds that the disputed domain name is being used in bad faith and shares the view of the Complainant that the website referring to the disputed domain name providing for an online pharmacy, which offers, inter alia, various drugs which directly compete with the Complainant is tantamount to the registration of the disputed domain name in bad faith. Such registration is aimed at intentionally attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's mark as well as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and pharmaceutical products advertised for sale on it with the Complainant.
In the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of, or should have known of the Complainant’s trademark and services at the time the Respondent registered the disputed domain name, and did so with a view to illegitimately taking advantage thereof.
As a result, the Panel finds that the domain name <allegra-180mg.net> was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
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 <allegra-180mg.net> be cancelled as requested in the Complaint.
Dated: April 13, 2011