WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis and Aventis Pharma Deutschland GmbH v. Reardon Health Partners LLC
Case No. D2006-1264
1. The Parties
The Complainants are Sanofi-Aventis, Paris, France, and Aventis Pharma Deutschland GmbH, Frankfurt am Main, Germany, represented by Selarl Marchais De Cand�, France.
The Respondent is Reardon Health Partners LLC, Long Valley, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September�29,�2006, by e-mail, and on October�3,�2006, in hard copy. On October�3,�2006, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On October�3,�2006, Go Daddy Software, Inc. 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 and technical contact. The Center verified that 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 October�9,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�29,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October�30,�2006.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on November�13,�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 trademark upon which the Complaint is based is LANTUS. According to the documentary evidence and contentions submitted, Complainants own a number of trademark applications and registrations for the LANTUS trademark around the world, including the U.S. Trademark Registration No. 2,183,182 issued August�25,�1998, and assigned to Aventis Pharma Deutschland GmbH as of April�2,�2001, for antidiabetic pharmaceutical preparations in class 5. Reference is made to Annexes 5 through 10 of the Complaint.
According to the documentary evidence and contentions submitted, Complainants own, directly or through affiliates, the domain name , which was registered with Network Solutions, Inc. on August�3,�1998. Reference is made to Annex 11 of the Complaint.
According to the documentary evidence and contentions submitted, “Lantus” is a drug manufactured and sold by Complainant Sanofi-Aventis which provides a slow, steady release of insulin to help control blood glucose for patients suffering from diabetes. The “www.” website provides all relevant information related to the “Lantus” product. Complainant Sanofi-Aventis is a well-known pharmaceutical company which resulted from the merger of Sanofi-Synthelabo and Aventis, present in a large number of countries, including the United States of America, and Aventis Pharma Deutschland GmbH is a company of the Sanofi-Aventis Group.
According to the documentary evidence and contentions submitted, Respondent registered the domain name with Go Daddy Software, Inc. on May�29,�2003. On July�5,�2006, Complainants sent an e-mail to Respondent requiring the transfer of the disputed domain name. Reference is made to Annex 17 of the Complaint. Complainants state that Respondent did not answer to this e-mail message.
5. Parties’ Contentions
A. Complainants
Complainants argue that the domain name reproduces entirely the trademark LANTUS, which is distinctive and is the dominant part of the disputed domain name, and that the terms “for life” are generic and descriptive of the Complainants’ product. Therefore, Complainants argue that the disputed domain name is confusingly similar to the trademark in which Complainants have rights.
Complainants further contend that Respondent uses the domain name to attract consumers to other websites offering to sell online various products and/or services, that the Sanofi-Aventis Group never licensed or otherwise permitted the Respondent to use the trademark LANTUS, and that there is no relationship between the parties. Therefore, Complainants argue that Respondent has no right or legitimate interests in respect of the disputed domain name.
Finally, Complainants contend that Respondent must have been aware of the existence of the “Lantus” product and name, of the domain name and of the website to which that domain name resolves, reason why registration of the domain name was made in bad faith. They further argue that the website to which the disputed domain name resolves supports “sponsored links” which direct the Internet user to websites offering competing and other products, and that Respondent is intentionally attempting to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainants’ trademark. Therefore, Respondent is also using the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainants from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No.�D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainants. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph�4(a) of the Policy to determine whether Complainants have complied with such requirements.
B. Identical or Confusingly Similar
The trademark LANTUS is distinctive and the domain name incorporates such trademark in its entirety. The words “for life” are generic terms and, as argued by Complainants, are descriptive of the fact that the product “Lantus” is to be used for life, which is the case for people suffering from diabetes.
Therefore, the addition of generic and descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. Quixtar Investments, Inc. V. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that Quixtar and are legally identical); Sanofi-Aventis v. US-M, WIPO Case No. D2004-0809 (finding that the addition of the generic words “buy” and “online” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. DNS Administrator/ Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047 (finding that the suffix “purchase” is descriptive and adds no distinctiveness to the domain name which incorporates complainant’s trademark); F. Hoffman La Roche AG v.Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion).
The addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No.�D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. In this type of combination it is clear that the registered trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159 (finding that the term “shop” is non-distinctive and may create an association with the registered trademark to which it is added).
Therefore, the Panel concludes that the domain name is confusingly similar to the trademark LANTUS in which Complainants have rights. As a result, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Panel finds as reasonable Complainants’ contentions that (i) Respondent does not need to use the disputed domain name for its activity as its name is Reardon Health Partners LLC, (ii) there is no license, consent or other right by which Respondent would have been entitled to register or use the disputed domain name, and (iii) there is no relationship between Complainants and the Respondent.
The extracts from the Respondent’s website “www.” (as contained in Annex 15 of the Complaint) indicate that Respondent provides various “sponsored links” to other websites offering to sell online various products and/or services to consumers. Use of a domain name incorporating a registered trademark for a website with sponsored links to competing or related products and services does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.
The Panel also accepts Complainants’ contention that Respondent’s use of the domain name in dispute is intentionally misleading on-line consumers by re-directing them to other websites with the exclusive intention to get profits from such diversion. Therefore, Respondent is not making a legitimate fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy.
In short, the Complainants have satisfied their burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
It can not reasonably be argued that the Respondent could have been unaware of the trademark LANTUS when registering the domain name for the following basis reasons: (a) “Lantus” is the name of a drug developed and sold by Complainants and is a registered trademark in the United States of America since 1998; (b) Complainants registered in 1998 the domain name which resolves to the official website of this particular line of product, and (iii) the domain name resolves to a website with links to competing or related products and services.
Since the Respondent has formed the domain name by only adding the descriptive phrase “for life” to the registered trademark LANTUS, one can infer that the Respondent’s motivation in registering such domain name was to exploit user or consumer confusion as to source, sponsorship, affiliation or endorsement of any “Lantus” branded product.
The Panel also finds that the disputed domain name is being used in bad faith because Respondent is taking advantage of Complainants’ reputation by attracting Internet users and consumers of the public at large for commercial gain. In fact, use of a domain name incorporating a registered trademark for a website with sponsored links to competing or related products and services does constitute an evidence of bad faith use of a domain name.
One final issue should be addressed: does the fact that Complainants delayed for a couple of years following registration of the disputed domain name to bring this action against Respondent act as a bar to a finding in favor of Complainants? The Panel is of the view that a delay in bringing a claim does not generally act as a waiver of the right to do so. Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 Aventis Pharma Deutschland GmbH, as requested by Complainants.
Manoel J. Pereira dos Santos
Sole Panelist
Date: November�27,�2006
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