The Complainants are Sanofi-Aventis of Paris, France, Aventis Pharma SA of Antony, France and Aventis Pharmaceuticals Inc. of New Jersey, Unites States of America, together referred to as (the “Complainant”), represented by Selarl Marchais De Candé, France.
The Respondent is Shu Lin, Shu Lin Enterprises Limited, Dalian of the People’s Republic of hina and A Domain Privacy of Victoria, Australia together referred to as (the “Respondent”). 2. The Domain name and Registrar
The disputed Domain Name is registered with ABOVE.com, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2010. On November 25, 2010, the Center transmitted by email to ABOVE.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On November 25, 2010, ABOVE.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information 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 December 2, 2010 providing the registrant and contact information disclosed by ABOVE.com, Inc. 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 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 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Lana Habash as the sole panelist in this matter on January 10, 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 Complainant is a leading pharmaceutical company in Europe and is known worldwide, with a presence in more than 100 countries in the world, with a large portfolio of high growth drugs, including the drug known as “Nasacort”, which is sold in aqueous nasal spray (aq) form and is indicated for the reduction of recurrence after respiratory and allergy diseases. The drug is sold under the trademark NASACORT (the “Trademark”), which is registered by the Complainant in a number of countries, with the earliest registration date of May 16, 1989. The Complainant has also registered a number of domain names including the trademark NASACORT, and the Trademark NASACORT with the addition “aq” in various top level domains and country code domain names, as of 1997.
The disputed Domain Name was created on July 13, 2010. The disputed Domain Name points to a parking website with links to commercial website such as online pharmacies. On July 19, 2010, the Complainant has sent an email to the Respondent advising of it rights to the Trademark and requesting that the disputed Domain Name be transferred to the Complainant, but the Respondent did not reply to the email. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
- The Complainant’s trademark NASACORT has been reproduced in its entirety in the disputed Domain Name; the trademark NASACORT does not have any particular meaning is highly distinctive;
- The addition of letters “www” before the Trademark and the letters “aq” after is superfluous and does not overcome the confusing similarity with the Complainant’s trademark, to the contrary, the addition “aq” is rather descriptive as it corresponds to the nature and form in which this drug is sold, which is aqueous nasal spray;
- The Respondent does not have any prior and/or legitimate rights in the disputed Domain Name, and the fact that the Respondent used A Domain Privacy at the time of registration of the disputed Domain Name supports that contention;
- The Respondent has never been licensed or permitted by the Complainant to register the disputed Domain Name and/or use the Trademark;
- The disputed Domain Name has been registered in bad faith; as it is registered to attract Internet users to the Respondent’s website, unlawfully benefiting from the Complainant’s fame, which the Respondent must have been aware of. In fact, including the addition “aq” which indicates the form in which the drug is sold confirms that the Respondent has been aware of the Complainant’s rights in the disputed Domain Name; and
- The disputed Domain Name is being used in bad faith, as it directs Internet users to a parking website with links to various commercial websites including an online pharmacy that is not the official website of the Complainant’s and that the Respondent is deliberately trying to gain unfair benefit from the fame of the Complainant’s reputation, and to make a commercial gain from pay per click advertisement on the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the disputed Domain Name cancelled or transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
- The disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and
- The disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the Trademark NASACORT. The Panel is also satisfied that the Complainant has established that NASACORT is a widely known trademark.
The disputed Domain Name contains the Complainant’s Trademark NASACORT in its entirety, with the addition letters “www” before the Trademark and the letters “aq” after. The letters “www” refer to the worldwide web and as such are superfluous; (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Aventis Pharma SA. v. Awad Kajouk; WIPO Case No. D2005-0716; Sanofi-Aventis, Aventis Pharma SA, Aventis Pharmaceuticals Inc. v. Syragon LLC,WIPO Case No. D2010-0320 and Sanofi-Aventis, Aventis Pharma SA, Aventis Pharmaceuticals Inc. v. Syragon LLC, WIPO Case No. D2010-0331).
The Panel is of the view that the addition of these letters does not detract from the distinctiveness of the dominant part of the disputed Domain Name, to the contrary, in this particular case, the addition of the letters “aq” adds to the confusion on part of the Internet users who would associate this combination with the form in which the drug is sold (see Sanofi-Aventis v. PrivacyP, WIPO Case No. D2010-1866).
Paragraph 4(a)(i) is therefore satisfied. B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name on the part of the Respondent. The failure to submit a response by the Respondent in some cases may support a finding of lack of such rights, nonetheless, the Panel is required to examine the case to determine whether the Respondent has any rights or legitimate interests in the disputed Domain Name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
Considering the facts at hand, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed Domain Name. The mere registration of a domain name does not give rise to a “legitimate interest”. It is evident that the Respondent attempted to use the good will of the Trademark NASACORT to divert Internet users to its website, which includes hyperlinks to other commercial websites, including an online pharmacy. This, in the Panel’s view does not constitute a bona fide offering of goods or services, nor is it a legitimate non-commercial use, and it is evident to the Panel that the Respondent, who did not offer any evidence of being commonly known as the disputed Domain Name, has intentionally registered the disputed Domain Name to divert consumers to its website from the official websites of the Complainant’s and to make commercial gain through pay per click advertisements.
Paragraph 4(a)(ii) is therefore satisfied. C. Registered and Used in Bad Faith
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the Trademark NASACORT, therefore it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the Trademark and subsequently its interest in the disputed Domain Name.
For the purposes of paragraph 4(a)(iii) of the Policy, 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:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) 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
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 Panel finds that the Respondent’s registration and use of the disputed Domain Name is in bad faith; the use of the disputed Domain Name by the Respondent to point to a parking website which includes links to commercial websites including an online pharmacy, where the Respondent commercially benefits from the pay per click advertisements supports this finding. (See: Check Into Cash, Inc. v. Rico Marquez, WIPO Case No. D2007-0094; E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319; Verisign, Inc. v. jumbo domains, WIPO Case No. D2006-1582; and F. Hoffmann-La Roche AG v. Global Communciations Link / Domains by Proxy, Inc.WIPO Case No. D2009-0640, Zedge Ltd. v. Moniker Privacy Services/ Aaron Wilson,WIPO Case No. D2006-1585, and F. Parrot SA v. Who is Service, Belize Domain WHOIS Service,WIPO Case No. D2007-0779).
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondent has registered and is using the disputed Domain Name in bad faith.
Paragraph 4(a)(iii) is therefore satisfied. 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.
Lana I Habash
Sole Panelist
Dated: January 24, 2011
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