WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC
Case No. D2003-0122
1. The Parties
The Complainant is Aventis Pharmaceuticals Products Inc., located in Bridgewater, New Jersey, United States of America.
The Respondent is PBS Publishing, located in New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the Domain Name) is registered with Namesecure, Concord, California, United States of America.
3. Procedural History
The Complaint was filed on February 24, 2003. The Response was received on March 19, 2003.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on March 21, 2003.
4. Factual Background
Complainant is an affiliate company of Aventis Pharma S.A., a leading international pharmaceutical company. One of the products developed and sold by Complainant is NASACORT, a drug used to treat allergic rhinitis. Complainant is the owner of U.S. Reg. No. 2,008,763 for NASACORT for "pharmaceutical preparation for treating respiratory disorders" dated October 15, 1996, based on first use on April 1, 1991.
Respondent, a provider of domain name and website services, apparently registered the Domain Name on May 5, 2002. The domain name leads to a website that advertises the services of the New York Allergy & Sinus Centers. The website provides information for making appointments and includes a link to National Allergy Supply Incorporated, where various products are available for sale. The site also includes a link to an information page that includes information about various drugs, including Complainant's NASACORT product.
Respondent claims the Domain Name was registered on behalf of Dr. Morris Nejat, who allegedly is developing a new medication for asthma treatment, namely a nasal cortisone spray propelled by tetrafluorethane (also known as HFA-134a). Respondent asserts that the Domain Name is derived from this new product (NASAl CORTisone HFA), but has provided no evidence to support this claim and there is no showing that the Domain Name leads to any reference relating to this alleged new product.
Respondent has registered other domain names based on marks owned by Complainant and affiliated companies: , , , , , . These were the subject of a prior ICANN UDRP proceeding resulting in a decision adverse to Respondent. See Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC, Case No. D2002-0343 (WIPO June 12, 2002).
5. Parties� Contentions
A. Complainant
Complainant contends that the Domain Name is confusingly similar to a mark in which it has prior rights; that Respondent has no legitimate right or interest in the Domain Name; and that has registered and used the Domain Name in bad faith by using it to redirect traffic to a commercial site.
B. Respondent
Respondent contends that the Domain Name is not confusingly similar to Complainant's mark, that it has a legitimate interest in using the the Domain Name because it corresponds to a new product under development and is used fairly to provide medical information. Respondent also denies that it is using the mark in bad faith for a commercial purpose.
6. Discussion and Findings
A. Identical or Confusingly Similar
The initial portion of the Domain Name is identical to Complainant's NASACORT mark. The addition of HFA corresponds to the generic name of a propellant used to deliver nasal medications. Thus, it appears to be an apt suffix to describe a version of Complainant's product. Accordingly, persons encountering the Domain Name are likely to confuse it with Complainant and Complainant's NASACORT product.
B. Rights or Legitimate Interests
Complainant has shown that Respondent is not known by the Domain Name and is not making bona fide use of the domain name. Instead, the Domain Name leads to a web page advertising the commercial services of an allergy clinic.
Respondent contends that the Domain Name was selected to represent the name of a new drug. The Policy provides that a legitimate interest may be found if the Respondent made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services before notice of the dispute. Here, Respondent has provided no evidence of any bona fide preparations to use the Domain Name before notice of a dispute with Complainant over the NASACORT mark. Indeed Complainant initiated its first proceeding against Respondent on April 10, 2002, and Respondent registered the Domain Name shortly thereafter on May 5, 2002. Thus, there is no basis for finding use of the Domain Name before any notice of a dispute.
Respondent contends that it has a legitimate interest in the Domain Name because it uses the Domain Name for a site that provides accurate drug information. The Policy provides that a legitimate interest may be found where the Respondent can show that it is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers . . . Here, the evidence shows that Respondent is using a domain name confusingly similar to Complainant's mark to lead patients to a site advertising the commercial services of a medical clinic and to links for the sale of products. Thus, it appears that the Domain Name is used for commercial gain to misleadingly divert consumers.
Accordingly, I find no material evidence to rebut Complaint's demonstration of Respondent's lack of right or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
There are a number of circumstances indicating that the Domain Name was registered and used in bad faith.
(1) There is no credible evidence to support Respondent's claim that the Domain Name was registered in good faith based on the bona fide name of a new product.
(2) Respondent has engaged in a pattern of registering domain names corresponding to Complainant's trademarks.
(3) Respondent registered the Domain Name at issue shortly after Complainant had filed another ICANN UDRP complaint against it in which some of the disputed domain names were based on the same mark at issue here.
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 Respondent's registration and use of the Domain Name for a commercial site advertising the services of the New York Allergy & Sinus Center. Accordingly, I conclude that Complainant has met its burden of showing bad faith registration and use.
Respondent's reliance on Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000), is misplaced. There the Panel found no violation of the Policy where the domain name was used for a non-commercial site critical of the complainant's products. Respondent's conduct here is quite different from the conduct permitted in that case.
7. Decision
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 be transferred to the Complainant.
Mark V.B. Partridge
Sole Panelist
Date: April 14, 2003
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