WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf
Case No. D2005-1345
1. The Parties
The Complainant is Sanofi-Aventis, and Aventis Pharma S.A., France, and Merrell Pharmaceuticals INC., Cincinnati, Ohio, United States of America, represented by Selarl Marchais De Cand�, France.
The Respondent is George Breboeuf, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December�26,�2005. On December�28,�2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December�28,�2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January�13,�2006. 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�17,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February�6,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February�8,�2006 .
The Center appointed Mr. Zbyněk Loebl as the sole panelist in this matter on February�20,�2006. 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, Aventis Pharma S.A., and Merrell Pharmaceuticals Inc. Merrell Pharmaceuticals Inc. is a 100% subsidiary of Aventis Inc., the U.S. holding of the Group Sanofi-Aventis, and together with Aventis Pharma S.A. they are affiliates of companies of Sanofi-Aventis. Sanofi-Aventis is the leading pharmaceutical company in Europe and number 3 in the world. Sanofi-Aventis has developed the drug Allegra and sold throughout the world. It treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing, and itchy throat.
The Complainant Merrell Pharmaceuticals Inc. owns the trademark ALLEGRA, which is registered for international class 5 (antihistamine/decongestant pharmaceutical preparations not for ophthalmic use) in China, South Africa, Argentina, Brazil, Mexico, and the United States. Evidence was duly provided supporting this fact.
Merrell Pharmaceuticals Inc. has also registered the domain name . The domain name registered by the Respondent on October�19,�2004, differs only by addition of the term fexofenadine and by different generic tld. indicator “.info.” The Respondent’s website contains information on the ALLEGRA drugs; and; through clicking on some of the links on the Respondent’s website, one is directed to other websites where products of competitors can be ordered.
5. Parties’ Contentions
A. Complainant
The Complainants contend the following:
The domain name is confusingly similar to the trademarks and domain name of the Complainant Merrell Pharmaceuticals Inc.. The Respondent’s domain name incorporates the Complainant’s trademark in its entirety, and furthermore, it differs from the Complainant’s domain name only through the addition of the term Fexofenadine placed at the end. Moreover, Fexofenadine is an open reference to fexofenadine hydrochloride, which is the active ingredient of Allegra and a part of the ALLEGRA trademark.
As a result, the public might think the domain name is connected to the Complainants’ trademarks and that the website is an official website providing information about the drug Allegra and advice on a prescription.
The Respondent has no rights or legitimate interests in respect of the domain name in dispute. Even though the website seems to give consumers information on Allegra drugs, the domain name is not used by the Respondent for its activity. By clicking on any interactive part of “www.” one is automatically directed to other websites which leads consumers to the online sale of various products ranging from books to drugs of the Complainant’s direct competitors, such as Janssen-Cilag, Rhinostat Systems or Qianyao Pharm. The domain name in contention has been devised strictly through making a reference to the Complainant’s trademarks. In addition, the Respondent is not licensed or otherwise permitted to use the trademarks ALLEGRA or to apply for any domain name incorporating the term ALLEGRA in its entirety.
The domain name in dispute has been registered and used in bad faith. The Respondent must have been aware of the domain name, website, trademark, and drug ALLEGRA, something proven through the very use of the domain name composed by the reference to the Complainant’s trademarks. The ALLEGRA trademark is reproduced exactly as on the original packaging of the drug sold by Sanofi-Aventis group (NASACOR, AYMACORT AND ALLEGRA), without any authorization, which creates confusion for consumers; and furthermore, it leads to confounding those searching for information on the Complainant’s official product and website. The Complainant does not want Internet users to believe that the Complainant authorized, checked, or guaranteed the information on the home page of “www.” or the efficiency of the products sold on that website. The addition of a disclaimer on the Respondent’s website does not alter this (See: Est�e Lauder Inc. v. E, Jeff Hanna WIPO Case No. D2000-0869). The Respondent is using the contentious domain name for a commercial purpose and is intentionally attempting to attract financial gain by creating the likelihood of confusion with the Complainant’s trademark without any rights or legitimate interest.
The Complainant requests the domain name to be transferred to Merrell Pharmaceuticals Inc.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The litigious domain name wholly incorporates the Complainant’s trademarks and domain name, which is sufficient to establish a false identity or a confusing similarity despite the addition of other word to the trademarks (See, e.g., Oki Data Americas, Inc. v. A, WIPO Case No. D2001-0903). As stated earlier, the suffix fexofenadine is a reference to fexofenadine hydrochloride, which is the active ingredient of Allegra and a part of the ALLEGRA trademark. Adding the word fexofenadine to the domain name contributes to possible confusion over the source of information concerning the Complainant’s products.
The generic tld indicator “.info” cannot be taken into consideration when judging identity or confusing similarity (See, e.g., Hay & Robertson International Licensing AG v. Craig J. Lovik, WIPO Case No. D2002-0122 or BG Bank v. Kim Hansen, Case No. D2002-0643).
The Respondent’s domain name is confusingly similar to the Complainant’s trademarks and domain name. The condition of the Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
There is no evidence that the Respondent makes non-commercial and fair use of the domain name in dispute without intention to divert consumers, as addressed under Paragraph 4(c) of the Policy. Furthermore, there is no evidence that the Respondent has any connection or affiliation with the Complainant.
No one from the group Sanofi-Aventis has consented to the Respondent’s use of the trademark or the application for any domain name incorporating the term ALLEGRA in its entirety.
In addition, the Complainants’ evidence shows that the website “www.” leads customers to an online sale of various products ranging from books to drugs of the Complainant’s direct competitors. Therefore, it appears that the Respondent is using the disputed domain name to misleadingly divert consumers for commercial gain. In this case, the fact that the website also provides information on the drug ALLEGRA does not make the use of the domain name to be bona fide (see Aventis Pharmaceuticals Products Inc. v. Morris Nejat M.C. PBS Publishing LLC WIPO case no. D2003-0122).
Based on the case file and in the absence of any rebuttal by the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in respect to the domain name, as set forth in the Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Despite the fact that he must have known of the Complainant’s domain name, website, trademarks, and drug ALLEGRA, the Respondent still registered a confusingly similar domain name to that of the Complainant. This fact is proven by the use of the contentious domain name in reference to the Complainant’s trademarks and on the website itself, where the wording ALLEGRA is reproduced as on the original packaging of the Complainant’s, and done so without it’s the Complainant’s consent.
The Respondent also provides on the website “www.” links to other websites, including to websites of direct competitors to the Complainant; where the sale of drugs is offered online. In this way, the Respondent intentionally attracts Internet users to his website for commercial gain. And, he creates confusion for consumers as to the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement, as addressed within the meaning of Paragraph 4(b)(iv) of the Policy.
In light of the above, and considering that no evidence has been provided by the Respondent proving that he is making a legitimate, non-commercial or fair use of the domain name, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 Merrell Pharmaceuticals Inc.
Zbyněk Loebl
Sole Panelist
Date: March�3,�2006
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