WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis and Aventis Pharmaceuticals Inc. v. Skin Provement
Case No. D2011-0432
1. The Parties
The Complainants are Sanofi-Aventis of Paris, France and Aventis Pharmaceuticals Inc. of New Jersey, United States of America represented by Selarl Marchais de Candé, France.
The Respondent is Skin Provement of New York, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <sculptraaesthetic.org> and <sculptraesthetic.org> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2011. On March 7, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 8, 2011, 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, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2011.
The Center appointed Theda König Horowicz as the sole panelist in this matter on April 18, 2011. 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
Sanofi-Aventis is one of the largest pharmaceutical group in the world. The Complainants benefit from a large portfolio of high-growth drugs. In the field of dermatology, Sanofi-Aventis developed and commercialized throughout the world a drug for restoration and/or correction of facial lipoatrophy in people with human immunodeficiency virus or cancer under the trademark SCULPTRA which is also used under the designation SCULPTRAAESTHETIC in the field of cosmetic dermatology.
Since 2004 Aventis Pharmaceuticals Inc. has been owning several trademark registrations for SCULPTRA, notably in the United Kingdom of Great Britain and Northern Ireland, in Australia and in France.
In July 2009, Aventis Pharmaceuticals Inc. registered a number of domain names for “sculptraaesthetic”, including <sculptraaesthetic.com> and <sculptraaesthetic.us>. These domain names are linked to an active website relating to the cosmetic dermatology drugs referred to above.
Aventis Pharmaceuticals Inc. also filed on July 29, 2009 an application in the United States of America for the trademark SCULPTRAAESTHETIC which is not yet registered.
Skin Provement is a Dermatology and Skin care Center based in the United States of America. Its activities are promoted on the Internet through the website <skinprovement.com>.
The Respondent registered the domain names <sculptraaesthetic.org> and <sculptraesthetic.org> on September 9, 2009. Both domain names are linked the website “www.skinprovement.com” which refers to the Complainant’s drug SCULPTRA, notably in a section named SCULPTRA™. No reference is made to the fact that the trademark SCULPTRA is owned by the Complainants.
On June 10, 2010, the Complainants sent a warning letter to the Respondent requesting the immediate transfer of the two disputed domain names amongst others. By email of July 9, 2010, the Respondent replied that it would like to keep the domain names in order to help market the SCULPTRA drug in a positive way and to drive potential patients to its website.
5. Parties’ Contentions
The Complainants allege to have prior trademark rights over SCULPTRA and SCULPTRAAESTHETIC. The disputed domain names reproduce entirely the said marks which are highly distinctive as they have no particular meaning.
The Complainants further state that the Respondent has no rights or legitimate interests in the two disputed domain names since its business name Skin Provement does not resemble to SCULPTRA or SCULPTRAAESTHETIC. The Respondent does therefore not need the disputed domain names for its activity. The Respondent is not authorized in any manner whatsoever to use domain names incorporating SCULPTRA and SCULPTRAAESTHETIC. The Respondent wrongly gives the impression of being linked with the Complainants and does not make any mention of the fact that the two disputed domain names in question are in fact belonging to the Complainants.
Finally, the Complainants consider that the two disputed domain names were registered in bad faith, as the Respondent was undoubtedly aware of the trademarks and domain names owned by the Complainants. The Respondent is also using the two disputed domain names in bad faith as Internet users are redirected to its own website “www.skinprovement.com” with the intention to promote its own business as a dermatology center instead of being directed to the Sanofi-Aventis websites. The Respondent thus intentionally takes benefit from the Complainants’ trademarks. The Respondent does also not make any mention of the fact that Sanofi-Aventis actually owns the said marks. The Respondent was already involved in two other domain name matters against the Complainants and in both cases the decisions ordered the transfer of the domain names to Sanofi-Aventis.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for obtaining the transfer of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name, and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants showed to have trademark rights in the name SCULPTRA. This trademark is reproduced in its entirety in the two disputed domain names at issue.
The question arises as to whether the Complainants have common law rights in SCULPTRAAESTHETIC which was so far only applied for as a trademark in the United States of America and registered in domain names.
As underlined in the decision UK Betting PLC v. Pam Oldfield, WIPO Case No. D2005-0637, "to demonstrate a reputation and goodwill in respect of a name, a court will require from the Complainants to provide details of trading such as length of trading under the name, volume of sales under the name, advertising expenditure in respect of the name independent evidence from traders, customers, etc. For the purposes of an administrative proceeding such as this, the relevant information can be provided in short form, but the Panel still needs to be satisfied that the relevant reputation and goodwill subsists in respect of the name or mark".
The Panel visited the principal websites to which the Complainants referred to in their complaint and has no reasons not to believe that the Complainants would not have acquired any such rights over SCULPTRAAESTHETIC which seems to be extensively used for some years, and this particularly in the absence of any counter-argument from the Respondent.
Furthermore, the absence of the letter “a” in the second domain name <sculptraesthetic.org> is not sufficiently distinguishing to avoid the confusion (see Scholastic Inc. v. 366 Publications,, WIPO Case No. D2000-1627).
Under these circumstances, the Panel concludes that the domain names are identical to Complainants’ mark. The condition required under Paragraph 4(a)(i) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
The question arises as to whether the Respondent has rights or legitimate interests to use the disputed domain names with a bona fide offering goods, being underlined that the Complainant must under the Policy show prima facie that this would not be the case. If the Complainant makes out a prima facie case that the respondent has no rights or legitimate interests, the burden than shifts to the Respondent.
To be bona fide, the offering of goods must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Dr. Ing. H.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481), including:
“A respondent must use the website to sell only the trademarked goods, otherwise, it could be using the trademark to bail internet users and then switch them to other goods;
A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;
A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.”
The Complainants allege not to have authorized to use in any way whatsoever the designations SCULPTRA and SCULPTRAAESTHETIC, fact which is not denied by the Respondent.
In addition, the Complainants showed that the Respondent is active in the field of cosmetics without however precising on its website that it is neither the owner of the trademarks in question nor that these trademarks belong to the Complainants. The Respondent is thus wrongly suggesting to the Internet users or implying that it may be authorized by the Complainants’ to use the brands SCULPTRA and SCULPTRAAESTHETIC.
Furthermore, the Panel notes that the Respondent’s website also deals with other products of the same type than SCULPTRA and SCULPTRAAESTHETIC. Consequently, by using the disputed domain names in the Respondent draws the attention to its clients to other goods originating from competitors of the Complainants.
Under these circumstances, the Panel considers that the Complainants have established prima facie that the Respondent has no rights or legitimate interests in the two domain names.
In the absence of any response by the Respondent Skin Provement to these prima facie allegations, the Panel concludes that the second condition of Paragraph 4(a)(ii) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Complainants sufficiently evidenced to be the owner of the trademark SCULPTRA and of having used the said denomination along with SCULPTRAAESTHETIC in relation with esthetic cosmetology products since a certain number of years.
The Respondent describes itself on its website “www.skinprovement.com” as being active the field of cosmetics and refers to the trademarks at issue.
Furthermore, the Respondent is known for having in the past unduly registered other domain names containing brands of the Complainants, notably several domain names already containing SCULPTRA (see Sanofi-Aventis, Aventis Pharmaceuticals Holdings Inc. and Aventis (Ireland) Ltd. v. Skin Provement, WIPO Case No. D2006-0100; Sanofi-aventis, Aventis (Ireland) Ltd., Aventis Pharmaceutical Inc. v. Skin Provement, WIPO Case No. D2007-0793) which shows that the Respondent is well aware of the goods marketed by Sanofi-Aventis and of the brands the said Complainants are owning in the field of cosmetology.
As underlined by the Complainants, it is thus more than likely that the Respondent knew the trademarks and domain names SCULPTRA and SCULPTRAAESTHETIC when registering the disputed domain names, in particular since the said domain names have been registered in September 2009, shortly after the launch in July 2009 of the SCULPTRAAESTHETIC drugs by the Complainants.
These two domain names being redirected to the website of the Respondent “www.skinprovement.com” which promotes the services rendered in the filed of dermatology and skin care, it is obvious that the Respondent tries to take benefit from the Complainants trademarks for its own business.
The third requirement of the Policy under Paragraph 4(a)(iii) is thus fulfilled as well.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <sculptraaesthetic.org> and <sculptraesthetic.org> be transferred to Sanofi-Aventis.
Theda König Horowicz
Dated: May 9, 2011