Sanofi Aventis, Aventis (Ireland) Ltd, Aventis Pharmaceutical Inc. v. Skin Provement
Case No. D2007-0793
1. The Parties
The Complainants are Sanofi Aventis (“First Complainant”), France; Aventis (Ireland) Ltd (“Second Complainant”), Ireland; Aventis Pharmaceutical Inc. (“Third Complainant”), United States of America, represented by Maître Patrice de Candé of SELARL Marchais de Candé, France.
The Respondent is Skin Provement, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sculptrahiv.com> is registered with Go Daddy Software Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2007. On May 31, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name(s) at issue. On June 2, 2007, Go Daddy Software 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”), 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 June 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2007.
The Center appointed John Lambert as the sole panelist in this matter on July 19, 2007. 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 First Complainant is the holding company of group of pharmaceutical companies that includes the Second and Third Complainants with a stock market capitalization of €104 billion and a combined turnover in 2005 of €27.3 billion.
The Complainants’ products include a preparation made from poly-L-lactic acid which is used to treat facial fat loss in patients suffering from HIV (human immunodeficiency virus) and other complaints. The product is marketed under the sign SCULPTRA which has been registered as a trademark for pharmaceutical preparations, implants and cosmetic surgery in classes 5, 10 and 44 in many countries around the world including the United States of America.
The Complainants advertise SCULPTRA through a website at “www.sculptra.com” which contains considerable information on the conditions that the drug treats and the treatment for those conditions as well as particulars on SCULPTRA. Patients suffering from facial fat loss and the clinicians and beauticians treating them are likely to resort frequently to that website.
The Respondent offers a dermatology and skin care service in New York City which it advertises through a website at “www.skinprovement.com”. According to that website
“its dermatologist is a medical doctor who specializes in the diagnosis and treatment of skin diseases and also performs a wide variety of cosmetic procedures.”
Experience is claimed in treating acne, moles, skin cancer, warts and many other skin conditions. The site contains some information on various conditions including lipoatrophy or “facial wasting disease. The dermatologist is not identified but the Respondent’s “medical director” is described as a “board certified medical doctor and a fellow of the American Academy of Dermatology” who was educated at the University of Pennsylvania and trained at the University of Michigan and New York University.
This is not the first domain name dispute between the parties to come before a WIPO UDRP panel. The Respondent had previously registered the generic top level domain names <sculptra.biz>, <sculptrapodystrophy.com>, <sculptramanhattan.com> and <sculptranewyork.com>. These registrations were the subject of a similar complaint in Sanofi-aventis, Aventis Pharmaceuticals Holdings Inc. and Aventis (Ireland) Ltd v. Skin Provement,
WIPO Case No. D2006-0100 which was decided in favor of the Complainants on March 13, 2006.
5. Parties’ Contentions
A. Complainants
The Complainants contend that all the elements of paragraph 4(a) of the Policy are present and claim the transfer of the disputed domain name to the Third Complainant.
As to the first element, the Complainants exhibit some of the many registrations of the word mark SCULPTRA around the world, all of which are earlier than the registration of the disputed domain name. For instance, the word was registered as a United Kingdom of Great Britain and Northern Ireland trademark in the name of Aventis Pharmaceuticals Holdings Inc. in respect of pharmaceutical preparations for use with restorative and beauty care in class 5, surgical implants in class 10 and cosmetic, plastic and restorative surgery and medical beauty care in class 44 as of February 6, 2004 under number 2355273 and assigned to the Second Complainant on September 13, 2005. The only difference between the domain name and the registered trademark is the addition of the letters HIV. Those letters are the conventional abbreviation for the human immunodeficiency virus which is one of the causes of the condition that SCULPTRA treats. Relying on the decisions in The Nasdaq Stock Market, Inc. v. Green Angel,
WIPO Case No. D2001-1010, Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624 and Sanofi-aventis, Aventis Pharmaceuticals Holdings Inc. and Aventis (Ireland) Ltd v. Skin Provement,
WIPO Case No. D2006-0100, the Complainants argue that the addition of those letters “is not sufficient to suppress the likelihood of confusion which stems from the use of SCULPTRA as the main and attractive word”.
As to the second element, the Complainants say that the Respondent is known as SKIN PROVEMENT and that the URL of its website is “www.skinprovement.com”. It is not and never has been licensed to use the SCULPTRA mark or domain names incorporating the word SCULPTRA. Citing the decision in their previous complaint against the Respondent, they submit that the Respondent has no rights or legitimate interest in the disputed domain name.
As to the third element, the Complainants say that the Respondent must have been aware of the name of their drug, its trademark and their several registrations around the world when they applied for the registration of the disputed domain name. They are also likely to have been aware that the Complainants’ website contains useful information on SCULPTRA and its use in treating the symptoms of HIV and that it would attract considerable traffic from those interested in treating such symptoms. Anyone entering the disputed domain name into a browser would be conducted to the Respondent’s website at “www.skinprovement.com”. The obviously foreseeable consequence (if not the intention) of registering a domain name that differs from the Complainants’ domain name only by the addition of the initials HIV is that Internet traffic would be diverted from the Complainants’ site to the Respondent’s.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Respondent did respond by email on February 7, 2007, to an email from the Complainants’ trademark attorneys dated January 31, 2007, complaining of the registration of the disputed domain name and inviting the Respondent to “return” the disputed domain name to them without any delay failing which they would “initiate appropriate measures to stop the illegal use” of their trademark. In its email, the Respondent claimed to be “a customer and a very enthusiastic user of Sculptra” and that it was in the process of “redoing” its website to reflect its “strong belief in Sculptra”. It did not admit that its website infringed the Complainants’ mark in any way but indicated that it would check with its advisors. The email continued:
“We trust you do not wish to upset the physicians who are, after all the main users of your product, and who disseminate positive information about the product. If physicians cannot use the word SCULPTRA™ in any way in their website names, even in names that are not sculptra.org or similarly limited, how do you suggest we legitimately market Sculptra™ to potential patients on the web?”
The email concluded with asked the offer to “work out some mutually agreeable arrangement”.
6. Discussion and Findings
Para 4(a) of the Policy requires a complainant to prove that each of the following elements is present:
(i) the disputed 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 that domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first requirement is satisfied in that the Second Complainant is the registered proprietor of the United Kingdom of Great Britain and Northern Ireland trademark mentioned above (as well as many similar registrations around the world) and the disputed domain name differs from the registered mark only by the addition of the conventional abbreviation for the virus that causes the condition that is treated by the Complainants’ product. The registered trademark is distinctive and the Complainants’ poly-L-lactic acid preparation is known to sufferers, clinicians and beauticians by the word mark SCULPTRA. The suffix “hiv” is wholly descriptive and incapable of distinguishing any business, goods or service of the Respondent from those of the Complainants’.
The Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The second requirement is also clearly satisfied. Paragraph 4(c) of the Policy lists some of the circumstances by which a Respondent can show that it has rights in a disputed domain name. There is no suggestion and no evidence that any of those circumstances applies to this case. In its email of February 7, 2007, the Respondent argued that it was entitled to incorporate the Complainants’ trademark into its domain name because its doctor or doctors use the Complainants’ product in treating the Respondent’s patients. However, on the evidence it appears that the Respondent is not licensed or otherwise authorized to use the Complainants’ mark. It is not an authorized distributor of the Complainants’ products. It is not an authorized supplier of the Complainants’ services. It appears to be just one of many consumers or users of the Complainants’ products with no more right to use the Complainants’ trademarks than anyone else.
The Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the third requirement to be satisfied.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is:
“by using the domain name, you [that is to say, the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location” (Paragraph 4(b)(iv) of the Policy).
The “likelihood of confusion with the complainant’s mark” has already been discussed in the context of the first requirement. Since retailers and users of a product do not necessarily have the right to use the trademark for that product, the inference that a consumer may draw from the Respondents’ use of the disputed domain name is that the Respondent is more than just a retailer or user of the Complainants’ products and that its website is somehow sourced, sponsored, affiliated or endorsed by the Complainants. A foreseeable consequence of such use is that the Respondent will attract to its site Internet users who have heard of SCULPTRA and its use for treating one of the symptoms of HIV. It is also likely that at least some of those Internet users would be tempted to then become customers of the Respondent, rather than seeking out the Complainant’s official website.
Any doubt that the registration and use of the disputed domain name was a deliberate attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website is dispelled by the fact that the Respondent had attempted to do exactly the same thing by registering the domain names mentioned in the last sub-paragraph of paragraph 4 above.
Finally, in view of the Respondent’s history of registering domain names that are confusingly similar to the Complainants’ trademarks, the offer in the Respondent’s email of February 7, 2007, to “work out some mutually agreeable arrangement” mentioned in paragraph 5 above is arguably circumstantial evidence of registration “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” which is another circumstance that evidences registration and use in bad faith (paragraph 4(b)(i) 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 domain name <sculptrhiv.com> be transferred as requested in the Complaint to the Third Complainant.
John Lambert
Sole Panelist
Dated: August 2, 2007
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