The Complainants are Sanofi of Paris, France, and Aventisub LLC of Greenville, Delaware, United States of America (collectively the “Complainant), represented by Selarl Marchais & Associés, France.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, the Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2016. On May 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2016.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on June 20, 2016. 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 following facts are undisputed.
The Complainant is a multinational pharmaceutical company headquartered in Paris and is settled in more than 100 countries on all five continents employing 110,000 people. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also develops over-the-counter medication.
In the field of respiratory and allergy diseases the Complainant develops and directly and indirectly 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 is marketed in more than 55 countries including the United States and Canada.
The Complainant is the owner of several European Union, French and International trademarks for ALLEGRA. The Complainant is also the owner of United States trademark ALLEGRA, registered on June 3, 1997. These trademarks consist of the word “ALLEGRA”, along with additional elements (the “Trademark”).
The Domain Name was registered on July 24, 2015. The Domain Name resolves to an online pharmacy where purported generic versions of the Complainant’s Allegra products are offered for sale. 5. Parties’ Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Domain Name reproduces the Trademark, which does not have any particular meaning in English and is therefore highly distinctive. The reproduction of the Trademark as the dominant part of the Domain Name is confusingly similar to the above-cited Trademark, regardless of the adjunction of the generic term “information”.
The addition of the generic and common English word “information”, which obviously refers to an online website intended to deliver details on “Allegra”, remains insufficient to avoid confusing similarity on the contrary, and will merely suggest to Internet users that the Domain Name delivers official details on or offers for sale the Complainant’s products.
Consequently, the adjunction of the descriptive term “information” with a hyphen placed after the Trademark in the Domain Name is undoubtedly insufficient to alleviate the likelihood of confusion between the Complainant’s Trademark and the Domain Name. On the contrary, it must be considered that the adjunction of this generic term increases the inherent risk of confusion.
There is no doubt that the Domain Name is confusingly similar to the Trademark over which the Complainant has rights.
The Respondent does not have any rights or legitimate interests regarding the Domain Name. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant.
The Complainant has never licensed or otherwise authorized the Respondent to use of its trademarks or to register any domain name including the Trademark. There is no relationship whatsoever between the Parties and the Respondent has clearly modified the Complainant’s Trademark and domain names for its own use and incorporated them into the Domain Name without the Complainant’s authorization.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name is leading to a competing website which offers for sale pharmaceutical products and delivers inaccurate information on the Complainant’s products and consequently disparages its well-known Trademark.
The Domain Name was registered for the sole purpose of misleadingly diverting consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which is, in fact, the case. Such misleading consequences should be considered indicative of bad faith on the part of the Respondent.
In addition, this cybersquatting behavior in itself tarnishes the Complainant’s well-known Trademark, domain names and goodwill by making Internet users presume the purchasing of cheap Allegra offers, is somewhat approved and endorsed by the Complainant.
Under these circumstances, the absence of any authorization by the Complainant and the lack of legitimate reason to use the Domain Name both prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
It is obviously clear that the Respondent registered in bad faith the Domain Name corresponding to the Trademark owned by the Complainant, as this behavior can in no way be the result of a mere coincidence.
It should be considered that, given the famous and distinctive nature of the Trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s Trademark at the time the Respondent registered the Domain Name. This suggests that the Respondent acted with opportunistic bad faith in registering the Domain Name in order to make an illegitimate use of it.
By using the Domain Name for the sale of purported generic versions of the Complainant’s products, the Domain Name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion, or at least an impression of association, between the Complainant’s Trademark and the Domain Name not only as to source, but as to a possible affiliation, connection, sponsorship, association, and/or approval between the Complainant and the Respondent who simply could not have ignored the Complainant’s existence on registering the Domain Name.
The Respondent’s use in bad faith is all the more characterized by the website’s structure which delivers inaccurate information on the Complainant’s Allegra products and offers pharmaceutical products for sale, thus directly competing with the Complainant’s activities.
The Domain Name has been both registered and used intentionally in bad faith without any rights or legitimate interests by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.
The Domain name incorporates the Trademark in its entirely, and adds the descriptive word “information” with a hyphen placed after the Trademark. The Panel finds that the addition of the term “information” does not suffice to distinguish the Domain Name from the Complainant’s Trademark since “ALLEGRA” is the dominant part of the Domain Name. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”)
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Allegra” is the Respondent’s name or that the Respondent is commonly known as “Allegra”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the Complainant’s trademarks.
The question whether the Respondent is using the Domain Name in connection with a bona fide offering of goods, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., supra (regarding the domain name ).
In order for the use to be qualified as a “bona fide offering of goods”, the offering of the goods must meet several requirements, referred to as the “Oki Data criteria”.
Those include, at minimum, the following:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the website of the domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the respondent must not try to corner the market in all domain names, thus it must not deprive the trademark owner of reflecting its own mark in a domain name;
- the website of the domain name must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that the respondent is the trademark owner, or that its website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website’s use of the complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website).
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Panel notes the presence of a small disclaimer on the website at the Domain name that simply states “Allegra and Allegra Online and related and derived phrases are not trademarked, copyrighted or otherwise legally owned by Fineline Services or this web site. Allegra, Allegra Online, and other phrases based upon the name Allegra are owned by their respective manufacturers and agents.”
The use of the Domain Name cannot be considered a bona fide offering of goods or services as the Respondent is not actually offering the goods or services at issue. As asserted by the Complainant, supported in evidence and not rebutted by the Respondent, the Respondent is using the website to offer generic versions of the Complainant’s products. The presence of an inconspicuous disclaimer at the foot of the website at the Domain Name does not lead the Panel to conclude that the Respondent is making a bona fide offering of goods or services in light of the Respondent’s use of the Domain Name as set out above.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s Trademark and activities are well-known throughout the world. In addition the website connected to the Domain Name refers to the Complainant’s services. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name and must have been aware when using the Domain Name. This is emphasized by the fact that it uses the Domain Name to unfairly promote products from the Complainant and also promote competing products.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 7. Decision
For 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.
Willem J. H. Leppink
Sole Panelist
Date: June 24, 2016
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