WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-Aventis, Aventis Inc., Aventisub II Inc. v. Yur Bar Case No. D2010-0663 1. The Parties
Complainants are Sanofi-Aventis of Paris, France and Aventis Inc. of Grennville, Delaware, United States of America and Aventisub II Inc. of Grennville, Delaware, United States of America, represented by Me Patrice de Candé, Selarl Marchais De Candé, Paris, France.
Respondent is Yur Bar of Minsk, Belarus. 2. The Domain Name and Registrar
The disputed domain names , and are registered with PSI-USA, Inc. dba Domain Robot PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2010. On April 27, 2010, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On April 29, 2010, PSI-USA, Inc. dba Domain Robot PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on May 27, 2010.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on June 4, 2010. 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 the result of a 2004 merger between Aventis SA and Sanofi-Synthelabo. The consequence of this merger was that Sanofi-aventis became one of the leading pharmaceutical groups in Europe and worldwide, present in over 100 countries and with employees numbering over 100,000. The other two Complainants are affiliates of this company.
Allegra, a product of Sanofi-aventis, is a drug created to treat seasonal allergies and was launched by Aventis SA before the merger.
Complainants are the owners of at least four trademarks regarding Allegra: Canadian trademark ALLEGRA no. TMA 492711, registered on April 9, 1998, Canadian trademark ALLEGRA-D no. TMA 542661 filed on March 19, 2001, United States trademark ALLEGRA no. 2067728 filed on June 3, 1997 and United States trademark ALLEGRA-D no. 2157669 filed on November 1, 1996. It is also in possession of the domain names , , , all registered on or before April 19, 2002.
Respondent Yur Bar, registered the disputed domain names , and on July 18, June 19 and July 6, 2009, respectively, with the registrar PSI-USA, Inc. 5. Parties' Contentions A. Complainants
Complainants submit that Respondent registered, between June 19 and July 18 2009, the three disputed domain names with full knowledge of its product. Complainants are known worldwide as a manufacturer of prescription drugs and its product, Allegra, is marketed and sold in over 55 countries. The disputed domain names lead to identical websites displaying the product of Complainants, a description with a link to more information, and contain sale offers of the pill in various dosages and quantities. The website contains the phrase “Official Canadian Pharmacy” in the top left hand corner, and displays Sanofi-aventis official trademarks, leading Internet users falsely to believe that they are on an official website of Complainants.
Complainants request the disputed domain names be cancelled. B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainants must prove the following:
(i) Respondent's domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) Respondent's domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainants have submitted that they are the owner of at least four trademarks containing the distinctive term “Allegra” and two domain names containing the same. It has marketed and produced the drug Allegra in over 55 countries. Complainants have submitted that Oki Data Americas v. ASD Inc.,WIPO Case No. D2001-0903 is supportive of its allegation that “when a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words.” They have also submitted that Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043, is supportive of their claim that “adding generic words to a domain name such as ‘new', ‘best' and ‘buy' is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark” of Complainants. As held in that case the words “new”, “best” and “buy” do not serve any distinguishing function, but rather describe the nature of the service offered on the relevant website, see also Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909 and Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED,WIPO Case No. D2008-1483. The Panel here finds that the additions to the disputed domain names, “generic”, “buy” and “180mg” do not serve to distinguish the domain names from Complainants' registered trademarks, but as in Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, supra, serve to contribute to the confusion. The terms, including “180mg” which refers to the dosages of the active ingredient in the drug Allegra, are suggestive of the sale and distribution of the drug.
The Panel here finds the disputed domain names to be confusingly similar to trademarks owned by Complainants. B. Rights or Legitimate Interests
Complainants submit that Respondent, Yur Bar, has no rights or legitimate interests in the trademark ALLEGRA. Respondent's name is of no relation to the trademark and Complainants have convincingly asserted without contest that Respondent is not, and has never been, authorized to use Complainants' trademarks. There is no evidence or inference that Respondent has any right to use Complainants' mark; all evidence and inferences are to the contrary. Furthermore, although Respondent was provided with an opportunity to file a Response it has not elected to do so, and thus has not refuted Complainants' prima facie case with regard to this element.
The Panel here finds that Respondentt has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Complainants have submitted that Aventis Inc. v. healthtrust pharm,WIPO Case No. D2008-1417, is supportive of their claim that the trademark ALLEGRA is both distinctive and well known. They also rely on their reputation and standing as one of the largest pharmaceutical groups in the world and the undisputed reputation of their drug Allegra. The disputed domain names were registered in 2009 and, in the Panel's view, have been registered with knowledge of Complainants' reputation, business and rights in the mark ALLEGRA used on Respondent's websites. As the disputed domain names lead to websites offering the sale of Complainants' product, among others, it is clear that Respondent wished commercially to gain from the use of the trademark in the disputed domain names (see Sanofi-Aventis v. Alexandr Ivanov,WIPO Case No. D2009-1397). Respondent also did not respond to Complainants' request on February 9, 2010 for the immediate transfer of the disputed domain names.
Furthermore, Complainants have submitted pictures of the webpages associated with all three domain names; the Panel has found that they displayed the heading “Official Canadian Pharmacy” instead of “European Meds World”, but the rest of the content of the sites was identical to the screen shots submitted in the annexes to the Complaint. The websites offer various doses and quantities of the drug “Allegra”, displaying a picture and labeling the offering with the ALLEGRA trademark. Upon clicking “buy now” the user is taken to an order form for the drug. It is clear that Respondent is attempting to mislead users into purchasing the Complainants' product through unauthorized channels, on websites which also promote the products of Complainants' competitors. Complainants submit that Lilly ICOS LLC v. Sachin Tailor,WIPO Case No. D2005-0580 and Sanofi-Aventis v. Aleksandr Ivanov.WIPO Case No. D2009-1397 are further supportive of their claim in this regard. The very recent decision of this Panel in Sanofi-Aventis, Aventis Inc., Aventisub II Inc. v. Alexander Kravtsov - Alex Propertis,WIPO Case No. D2010-0662, provides additional support.
The Panel here finds that the disputed domain names were registered and 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 names, , and be cancelled.
Nicolas Ulmer
Sole Panelist
Dated: June 22, 2010
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