The Complainants are Sanofi-aventis of Paris, France and AVENTISUB II Inc. of Grennville, United States of America, represented by Selarl Marchais De Candé, France.
The Respondents are Murugan Nadar of Mumbai, India and Rajesh Singh of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with LiquidNet Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to LiquidNet Ltd. a request for registrar verification in connection with the disputed domain name. On November 18, 2010, LiquidNet Ltd. transmitted by email to the Center its verification response. On November 24, 2010 the Center received by e-mail the confirmation of LiquidNet Ltd disclosing an additional registrant for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2010 providing the new registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 3, 2010.
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” 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 December 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2010.
The Center appointed Peter Burgstaller as the sole panelist in this matter on January 12, 2011. 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 Canadian trademarks ALLEGRA and ALLEGRA-D were registered by Merrell Pharmaceuticals Inc, an Ohio corporation, in 1998 and 2001 respectively. The current owner of these trademarks is Aventis Inc, a Pennsylvania corporation (since October 31st, 2005, registered September 18, 2006).
The United States trademarks ALLEGRA and ALLEGRA-D were registered by Merrel Pharmaceuticals Inc, a Delaware corporation, in 1997 and 1998 respectively. The last listed owner of these trademarks is AVENTISUB II Inc (Complainant).
The registrant of the domain names and is Merrel Pharmaceuticals, Inc.
The Respondent has registered the disputed domain on April 13, 2010. The disputed domain name was connected to a website containing “generic” Allegra products for sale. A cease-and-desist letter from Complainant was rejected by Respondent. 5. Parties’ Contentions A. Complainant
Sanofi-aventis (Complainant 1) has been formed during the year 2004 as a result of merger between the two French companies Aventis SA and sanofi-Synthelabo. It offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading position in 7 major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
In the field of respiratory and allergy diseases, AVENTISUB II Inc, (Complainant 2), affiliate of Complainant 1, developed and sells utility drugs under various trademarks, including ALLEGRA which treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat. ALLEGRA was launched by AVENTIS before the merger. ALLEGRA is marketed in more than 55 countries including the United States of America and Canada.
The Complainant is the owner of the following trademarks:
- Canadian trademarks ALLEGRA No. TMA 492711 registered on April 9, 1998 for pharmaceutical preparations, namely antihistamines and ALLEGRA-D No. TMA 542661 registered on March 19, 2001, for antihistamine/decongestant pharmaceutical preparations not for ophthalmic use.
- American trademarks ALLEGRA No. 2067728 registered on June 3,, 1997 in class 5, for pharmaceutical preparations, namely antihistamines and duly renewed and- ALLEGRA-D No. 2157669 registered on May 12, 1998 in class 5 for pharmaceutical preparations, namely antihistamines and decongestants" and duly renewed.
The Complainant has registered several domain names to present its Allegra product on the web among them are:
- registered on June 4, 1998;
- registered on April 19, 2002.
The disputed domain name is confusingly similar to the above mentioned trademarks and domain names over which Complainant has rights, Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has registered and is using the disputed domain name in bad faith.
For these reasons Complainant requested the disputed domain name to be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel cannot find from the presented documents a trademark registration in favor of Sanofi-aventis (Complainant 1). Following the Complainant’s contentions Sanofi-aventis has been formed as a result of the merger between the two French companies Aventis SA and sanofi-Synthelabo. Following Annex 6 and 7 the owner of the Canadian trademarks ALLEGRA and ALLEGRA-D however is “Aventis, Inc” a Pennsylvania corporation.
With regard to the presented United States trademarks ALLEGRA and ALLEGRA-D one can derive from Annex 8, 9 that the “last listed owner” of these trademarks is “AVENTISUB II Inc” (Complainant 2). The Panel therefore takes the United States trademark registrations as the basis for the further legal examinations.
In the view of the Panel there is no doubt that the disputed domain name is confusingly similar with the Complainant’s trademarks as it includes in its entirety the Complainant’s distinctive trademark ALLEGRA.
The use of the ALLEGRA trademark with the prefix “buy” and “generic” does not make the disputed domain name distinctive from the Complainant’s trademark ALLEGRA. In fact it is the Panel’s conviction that in using especially the prefix “buy”, it rather strengthens the impression that the disputed domain name is in some way connected to the Complainant or at least “free rides” on the fame/publicity of Complainant’s trademark.
It has also long been held that suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. However, in the present case the Respondent failed to submit a Response.
It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions: “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Considering all of the evidence in the Complaint and the exhibits attached to it, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The prima facie case is based especially on the facts that:
(i) The ALLEGRA mark is a well-known trademark in the field of pharmaceuticals;
(ii) The Respondent confirmed not to claim any rights in its response to the cease-and-desist letter;
(iii) The Respondent chose the substance of the prominent trademark as part of the disputed domain name and added only generic prefixes (“buy”, “generic”);
(iv) by adding the prefix “buy” to the Complainant’s trademark the Respondent shows its commercial intention as well as its animus to “free ride” on the fame and publicity of the Complainant’s trademark;
(iv) The Respondent has not been authorized by the Complainant to use the ALLEGRA mark or name in a domain name or anywhere else or to sell its products or products purporting to be the Complainant’s products on the Internet or in any other way.
Thus, the Panel considers that the Complainant has made out a prima facie case and the burden therefore shifts to the Respondent to rebut it. The Panel therefore finds that the Complainant has made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s web site or location.
As stated in many decisions adopted under the Policy (esp. Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001) both conditions, registered and use in bad faith, are cumulative, consequently, Complainant must show that:
- the domain name was registered by the Respondent in bad faith and,
- the domain name is being used by the Respondent in bad faith. Registered in bad faith
The disputed domain name is composed by the Complainant’s distinctive trademark ALLEGRA and the prefix “buy” and “generic.”
It is the Panel’s opinion that the choice of these prefixes has the only purpose to attract Internet users to the Respondent’s website while using the publicity and the reputation of Complainant’s trademarks.
Previous panels moreover held that in certain circumstances when a trademark is well-known, the Respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc.,WIPO Case No. D2004-1088): “Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto.” With regard to the connected website with the disputed domain name there is not doubt, that Respondent was aware of Complainant’s marks.
These findings together with the Complainant’s contentions and presented proofs lead this Panel to the conclusion that the disputed domain name has been registered in bad faith by the Respondent. Used in bad faith
In order to meet paragraph 4(a)(iii) of the Policy the Complainant has also prove that the disputed domain name is being used in bad faith.
The disputed domain name leads to a website where “generic” Allegra products are proposed for sale; the Complainant’s trademark ALLEGRA is used several times on that website. The fact that Respondent has registered a domain name incorporating the substance of a distinctive trademark without any authority or permission to do so, together with the usage of the Complainant’s trademarks on the website makes it clear to this Panel that Respondent not only registered the domain name in bad faith but also used the domain name in a manner consistent with the circumstances described under paragraph 4(b)(iv) of the Policy.
The whole modus operandi of the Respondent in using the Complainant’s trademark together with the prefix “buy” and “generic” makes it clear to this Panel that the disputed domain name has been registered and is being used in bad faith; thus, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant. 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 cancelled.
Peter Burgstaller
Sole Panelist
Dated: January, 26, 2011
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