WIPO Domain Name Decision D2009-0029 for sculptrax.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharmaceuticals Holdings Inc. v. Stephen Beathard Case No. D2009-0029 1. The Parties

The Complainants are sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharmaceuticals Holdings Inc., Sanofi-aventis of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.

The Respondent is Stephen Beathard, of Franklin, Tenessee, United States of America, appearing pro se. 2. The Domain Name and Registrar

The disputed domain name (“Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2009. On January 13, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2009, GoD, 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 January 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2009. The Response was filed with the Center by two email communications on January 29, 2009 and February 9, 2009.

The Center appointed Nicholas Weston as the sole panelist in this matter on February 18, 2009. 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 Complainant operates a pharmaceuticals, cosmeceuticals and diagnostics business with operations in more than 100 countries. The Complainant holds registrations for the trademark SCULPTRA in a number of countries including France and (through a subsidiary) in the United States (“U.S.”), which it uses to designate an injectable implant containing poly-L-lactic acid, a synthetic polymer belonging to the alpha-hydroxy-acid family used for cosmetic and therapeutic treatment of facial fat loss. Registration has been in effect both in France and the U.S. since 2003. In summary, the trademark covers surgical implants and pharmaceutical preparations for use in restorative beauty care. In 2004, the trademark was also registered in several other jurisdictions including Australia, Germany, Switzerland, Hong Kong, SAR of China and Japan. The registrations each cover international classes 5, 10 and 44.

The Complainant is also the owner of, inter alia, the following domain names:

- , registered on March 23, 2002;

- , registered on June 10, 2003;

- , registered on June 10, 2003;

- , registered on April 8, 2004;

- , registered on April 2, 2004; and

- , registered on April 6, 2004.

The Respondent registered the Disputed Domain Name on May 17, 2008. 5. Parties' Contentions A. Complainant

The Complainant cites its trademark registrations of the trademark SCULPTRA in various countries as prima facie evidence of ownership.

The Complainant submits that the mark SCULPTRA is distinctive (citing Sanofi Aventis, Aventis (Ireland) Ltd, Aventis Pharmaceutical Inc. v. Skin Provement, WIPO Case No. D2007-0793) and that its rights in that mark predate the Respondent's registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the SCULPTRA trademark (citing Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903) and that the similarity is not removed by the addition of the letter “x”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the SCULPTRA mark.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that “it is inconceivable that the Respondent registered the domain name unaware of the Complainant's rights” and that it was registered “for the purpose of attracting Internet users to the Respondent's website and to make benefit of its reputation”. On the issue of use, the Complainant contends that the Respondent uses the Disputed Domain Name for “pay-per-click” (“PPC”) landing pages: a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name is typed in, it redirects traffic to a PPC landing page “where competing cosmetic surgery's products are advertised and put up for sale”. . . “created through Go D Inc.” B. Respondent

In defense of his registration of the Disputed Domain Name, received by email to the Center on January 29, 2009 the Respondent states:

“the domain name is a merging of the words ‘sculptor' and ‘trax', In other words, the name refers to following the information and discussions of the art of sculptor. I do not know what their word or words refer, and I have never heard of their website or products. It is thus clearly by chance that their invented word is similar in letters to mine.”

The Respondent's Response paraphrases a previous communication between the parties to this proceeding. On July 30, 2008 (prior to the filing of the Complaint with the Center on January 12, 2009) the Respondent replied to the Complainant's cease and desist communication as follows: “It is very curious to me that anyone would see this name as having anything to do with “sculptra.” I have never heard of such a word or brand. I should be relatively obvious that “sculptrax” is a word merge of sculpture and trax, implying that the site would be for finding or observing sculptures of art. The confidence of your misinterpretation appears overly ‘eager', and the accusations are certainly inappropriate. You may correspond with me again; however, your wording should be professionally ethical and less assuming. I would appreciate an apology for the negatively based assumption. Thank you.” 6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark SCULPTRA in France, the U.S. and in many other countries throughout the world. The Panel finds that a subsidiary of the Complainant has rights in the mark SCULPTRA in the U.S. pursuant to U.S. Registration No. 3,056,196. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark SCULPTRA.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the SCULPTRA trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant's trademark SCULPTRA followed by (b) the letter “x” and (c) the top level domain suffix “.com” all in one continuous domain name.

It is well-established that the top-level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “sculptrax”.

It is also well-established that where a domain name incorporates a complainant's well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the letter “x”: (see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd, WIPO Case No. D2004-0113; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).

This Panel finds that the addition of the letter “x” after the Complainant's registered trademark does not serve to adequately distinguish the Disputed Domain Name which therefore remains confusingly similar to the registered trademark: (see: AT&T Corp. v. Global Net 2000, Inc. WIPO Case No. D2000-1447; Piab AB v. EDCO USA Inc., WIPO Case No. D2002-0059; V&S Vin & Sprit AB v. Canal Prod Ltd., WIPO Case No. D2002-0437; Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716).

The Respondent contends that it “should be relatively obvious that ‘sculptrax' is a word merge of sculpture and trax, implying that the site would be for finding or observing sculptures of art”. In considering the elements of paragraph 4(a) of the Policy, the contents of a website -which is the direct manifestation of the potential uses of the domain name, and the Respondent's intentions - are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant's mark into thinking they are on their way to the Complainant's Website”. The Disputed Domain Name is therefore confusingly similar to the SCULPTRA trademark.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:

(i) before any notice of the dispute, respondent's use of, or demonstrable preparations 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; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Policy places the burden on the complainant to establish the absence of respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see: World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the SCULPTRA mark. Further, the Respondent's name is Stephen Beathard, not Sculptrax. The Respondent's email Response neither confirms nor denies whether he is authorized or licensed to use the SCULPTRA mark and there is no evidence that the Respondent is commonly known by the Disputed Domain Name. The issue is not whether the Respondent has any rights or legitimate interests in the trademark SCULPTRA. Rather, the issue is whether the Respondent has any rights or legitimate interests in the Disputed Domain Name, for example by making the bona fide offering of a product or service called “sculptrax”.

The Complainant provided evidence (in the form of screen captures, Annexures 26 and 27) that typing in the Disputed Domain Name diverts traffic to a PPC website for cosmetic injectibles and other products and services in connection with plastic surgery. The evidence is that typing in the Disputed Domain Name misleadingly directs Internet users to a search engine composed of sponsored links in connection with the Complainant's mark and thereby attempts illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark SCULPTRA. In Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 the Panel found that using the Domain Name to mislead users by diverting them to a search engine “does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”.

The Respondent's email Response does not appear to allege the existence of any rights or legitimate interests as per paragraphs 4(c)(ii) or (iii) of the Policy. The Respondent neither contends that he is commonly known by the Disputed Domain Name, or alternatively, that he is making a legitimate noncommercial or fair use of the domain name. However, the Respondent's short Reply does appear to be a claim for rights in the Disputed Domain Name under paragraph 4(c)(i) of the Policy.

The Respondent submits that the word “sculptrax” is a contraction of the words “sculptor” (email Response January 29, 2009) or “sculpture”(email July 30, 2008) and the word “trax” without advancing any coherent reason for misspelling the word “tracks” in that way. This submission appears to rely on the proposition that where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest: (see, for example, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304).

It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see: National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Decisions, paragraph § 2.2).

“Sculpt” is clearly a dictionary word, but the only dictionary reference this Panel could locate for the word TRAX was a Thracian word meaning “gladiator”1: (whether correct or not) hardly an impressive endorsement of the Respondent's argument that his contracted use of these words is nominative or descriptive, particularly in the absence of links and advertisements from the website at the relevant time to sculptures of Thracian gladiators.

The evidence is that at the time of, or before the filing of the Complaint, typing in the Disputed Domain Name diverted traffic to a PPC website for cosmetic injectibles and other products and services in connection with plastic surgery. In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the Panel found that “the Respondent is making a non legitimate commercial use of the disputed domain names that misleadingly diverts consumers […for the reason…] because the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant's mark in order to attract Internet users to its website”. Currently, the website appears to be a PPC website containing links and advertisements in connection with sculpture and sculptors. Such use does not cure the illegitimate use of the PPC parking page prior to the issue of the Complaint (see Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006).

The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith

The third element of the Policy that the complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):

i. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

ii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iii. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found; (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (see: M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

The Respondent does not admit or deny actual knowledge of the Complainant's activities, trademark or its secondary meanings at the time of the registration. Rather, the Respondent admits to ignorance, claiming that “I have never heard of such a word or brand”. The specific reference on the website to which the Disputed Domain Name resolves of the name and products of the Complainant, undermines that assertion. It follows that the Respondent had no reasonable grounds to give the warranty under paragraph 3 of the GoDaddy Parked Page Service Agreement that “You have no knowledge of [each application the Respondent makes] infringing upon or conflicting with the legal rights of a third party or a third party's trademark or trade name”. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights”. The lack of any good faith attempt to ascertain whether or not he was registering and using someone else's trademark, may support a finding of bad faith: (see: Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).

The Respondent's use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by Respondent. The PPC business model in this case, is that the Respondent passively collects click-through revenue generated solely from the Complainant's goodwill and Internet users' inaccurate guessing of the correct domain name associated with the Complainant's SCULPTRA cosmetic injectibles and other products and services in connection with plastic surgery. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (see: L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v Samuel Teodorek, WIPO Case No. D2007-1814). The obvious danger of consumers being afforded inaccurate, incomplete or misleading information about injectible medical products, services and applications and the probable diversion of actual sales reinforces the Respondent's bad faith (see Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155; Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474).

Moreover, from the evidence of records, after the Notification of the Complaint, the content of the relevant PPC parking page changed from a display of diversionary, competitive links to a display of links to sculpture related content, evidently an attempt at post hoc justification of the conduct and reinforcing the finding of bad faith.

This Panel finds that the Respondent has taken the Complainant's trademark SPECTRA and incorporated it in the Disputed Domain Name without the Complainant's consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC landing page for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 disputed domain name, be transferred to the Complainant.

Nicholas Weston

Sole Panelist

Dated: March 4, 2009

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