The Respondent is Allegra Bonner, San Francisco, California, United States of America; Domains By Proxy, Inc., Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <allegrashock.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2007. On November 5, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On November 6, 2007 GoDaddy.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 November 7, 2007 providing the 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 November 8, 2007. 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”), 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 November 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2007.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on December 14, 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.
On December 24, 2007, the Center forwarded to the Panel a communication attached to an email of December 21, 2007, from the Respondent to the Center, containing substantive arguments in response to the Complaint, and putting forward reasons for the Respondent’s failure to respond within the required term. Under the Rules, Para 10 (a)-(d) the Panel has a broad discretion to conduct proceedings in a manner it considers appropriate. The Respondent asserted in the communication, that her name is ‘Allegra Bonner’ and that she had been absent from her normal abode and had not received the relevant communications earlier. In the circumstances and in accordance with Paragraph 10 and 12 of the Rules, the Panel requested the Center to issue Procedural Order No. 1 of January 10, 2008. The Panel thereby requested the Respondent to provide, within specified terms, further statements and relevant supporting material in relation inter alia to the identity of the Respondent and specified to include: i) the Respondent’s birth certificate or a certified copy of the citizenship indicating the Respondent’s full name; and ii) any connection or association between the Respondent and the domain name at issue; and iii) an explanation of the use, or of the preparations to use the disputed domain name.
The Center sent a courtesy reminder to the parties on January 15, 2008. On January 17, 2008, the Center forwarded an email from the Respondent to the Panel, containing further assertions concerning her identity and use of the name Allegra Shock, and indicating that a copy of a relevant birth certificate was forthcoming. On January 18, 2007, the Center forwarded an email from the Complainant’s legal representative to the Panel, containing observations concerning those assertions of the Respondent. The Center forwarded a further email from the Respondent to the Panel on January 19, 2008, which attached a scanned copy of the State of California birth certificate of Allegra Celeste Bonner, and provides a date of birth. The Panel resolved to take note of the birth certificate although it was received after the deadline for response to Procedural Order, given that its existence and the intention to submit it was asserted in the Respondent’s timely response to that Order, it was received within a very short delay, and because of the Panel’s view that the Complainant’s interests were not adversely affected by the delay.
4. Factual Background
The Complainant is the owner of the trademark ALLEGRA in relation to pharmaceutical preparations, namely antihistamines, in a number of jurisdictions, inter alia in Canada (TMA 492711); in the United States (No. 2 067 728) and in Brazil (No. 819351520).
The Complainant has also registered the domain names <allegra.com> (June 4, 1998) and <allegra.us> (April 19, 2002).
The contested domain name was registered on December 7, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant is one of the largest pharmaceutical companies in the world. It owns the trademark ALLEGRA, which is registered and used in relation to pharmaceutical preparations, in particular antihistamines. The Complainant markets ALLEGRA, which treats the symptoms of seasonal allergies, in a number of jurisdictions, including the United States. It is one of a wide range of drugs it offers for sale.
The Complainant asserts that the trademark ALLEGRA is reproduced in its entirety in the contested domain name and constitutes its first and dominant part. As a result the contested domain name is confusingly similar regardless of the additional elements. The Complainant cites the decision in Oki Data Americas Inc v. ASD Inc.,WIPO Case No. D2001-0903 in support. According to the Complainant the addition of the word “shock” is used in a descriptive manner, alluding to the quality and efficiency of “allegra”. For that reason it is not sufficient to alleviate the likelihood of confusion, as has been recognized frequently in analogous cases by previous Panels. The term “shock” does not prevent an internet user from thinking there is a link between the Respondent and the Complainant. The words “allegrashock” could, according to the Complainant, designate an improved version of the treatment especially since ALLEGRA designates an allergy treatment, a type of medicine that could be associated with “shock” or “shock treatment”. The Complainant cites Sanofi-aventis and Aventis Inc v. Web Advertising Corp and Keyword Marketing Inc.,WIPO Case No. D2007-0678 in support, in which “allegrarelief” was at issue, and where the Panel pointed out that the term “relief” generically describes the intended result of many, if not all pharmaceutical treatments, and therefore does not serve to distinguish. For all these reasons the Complainant asserts that the contested domain name is confusingly similar to the trademark ALLEGRA.
The Complainant further asserts that the Respondent does not use the contested domain name in connection with a bona fide offering of goods or services. The Respondent’s website diverts internet users to numerous other websites. The sole diversion of Internet traffic by the Respondent is not a use of a domain name in connection with bona fide goods or services, as held in Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990. Hence the Complainant asserts the Respondent has no legitimate interest to justify use of the trademark.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademark ALLEGRA in any manner, and there is no relationship between the parties. Consequently the Complainant asserts that the Respondent has no right or legitimate interest in the contested domain name.
Further the Complainant asserts that the Respondent must have been aware of the Complainant’s trademark ALLEGRA before registering the contested domain name since it is world famous and the Respondent would also have been aware of the existence of the domain name <allegra.com>. The Respondent must have been aware of the risk of deception and confusion that would follow from its registration of the contested domain name since it could give the impression of endorsement from the Complainant. Further, the Complainant asserts that the contested domain name is clearly also used in bad faith because the homepage to which the contested domain name resolved was a parking site which operates as a referral point to divert internet users by way of sponsored links to third parties’ sites. The links on the homepage included ones to health product information. If “Allergy relie” was typed into the search bar a webpage appeared with further links, uppermost of which was the link “Allergy Relief”. When this link was activated an internet user was directed to the online pharmacy “healthline.com” on which information concerning asthma and allergies was displayed and on which competing anti-allergy products were advertised. Nevertheless, no information relating to the products of the Complainant was provided there.
The Complainant asserts that it is very likely that the Respondent’s purpose was to collect money on a pay-per-click basis, as had been recognized in previous WIPO Panel decisions such as Sanofi-aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2006-0377.
In its Observations on the Respondent’s assertions made in response to Procedural Order No. 1, the Complainant states the Respondent did not provide the Center with any official document proving her identity, and thus there is no evidence that the Respondent has a legitimate interest in the disputed domain name. The Panel notes in this regard that the scanned copy of the birth certificate referred to above was received after the date of the Complainant’s Observations.
The Complainant further asserts that the Respondent’s contention that she has the disputed domain name and the domain name <allegraproof.com> for the purpose of her businesses of music and fashion design are not borne out by the facts, since the actual use made of the contested domain name is as a parking website. The Complainant also asserts that <allegraproof.com> is a similar parking website also linking to pharmaceuticals, which amounts to strong evidence of bad faith. The Complainant asserts that the Respondent cannot claim an interest in a name for one alleged activity while practically using it for a completely different business.
The Complainant therefore adheres to its initial request for transfer of the contested domain name.
B. Respondent
As indicated above the Respondent did not reply to the contentions in the original Complaint within the stipulated term. However, in her reply of January 17, 2008, to Panel Procedural Order No. 1 the Respondent asserts that her name is ALLEGRA CELESTE BONNER, born in California, USA. She further asserts that she was at that time touring to promote an upcoming album and therefore did not have immediate access to her birth certificate but had sent away for it. A scanned copy of a birth certificate was in fact received on January 19, 2008, by the Center and forwarded to the Panel. The Respondent further asserts that she has been performing under the name ALLEGRA SHOCK and owns the domain names <allegrashock.com> and <allegraproof.com> for the purpose of her businesses, i.e. music and fashion design. The Respondent asserts that she has been an artist and performer all her life and that since the drug ALLEGRA was created, she had to add a last name as <allegra.com> was not an available option. The Respondent further provides a number of hyperlinks to websites where she asserts her music and clothing designs (in connection with which the term PROOF is used) can be accessed. The Respondent also provides some further hyperlinks which she asserts prove her identity and use in the music business of the name Allegra Shock. She asserts that her work has nothing to do with, and is no threat to a pharmaceutical company which manufactures the drug ALLEGRA, created after she was born.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name is not identical to the Complainant’s trademark ALLEGRA. However, it wholly incorporates ALLEGRA as the first and dominant part. A number of Panels have held that where a trademark is wholly incorporated into a domain name, with the addition of generic terms, a confusingly similar domain name results. In this case nothing in the compendious term “allegrashock” operates to disclaim a connection between the contested domain name and the Complainant. The term “shock” may be taken in different ways, but the Panel is not persuaded that it is a term which a consumer would take to indicate that there is no connection between the contested domain and the Complainant, for instance because it may imply criticism of the ALLEGRA product. As the Complainant asserts, it could just as well imply something positive about ALLEGRA, for instance in terms of its rapid and comprehensive effect. Alternatively it simply does not convey any particular meaning, and an Internet user’s attention would therefore be focused on the distinctive, recognizable and well known aspect of the contested domain name, i.e. the widely known trademark ALLEGRA which constitutes the dominant first part. The inclusion of this term suggests some connection with the Complainant, which does not in fact exist.
Therefore the Panel holds that the contested domain name is confusingly similar to the trademark ALLEGRA of the Complainant.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use the trademark ALLEGRA as a mark or to incorporate it in a domain name in any way. The Complainant in the original Complaint did not address the fact that the Respondent’s first name is “Allegra”, but this failure resulted from the fact that the initial Respondent identified by the Complainant was a differently named entity, i.e. Domain By Proxy. Only after later verification by the Center identified Allegra Bonner as the registrant, was the Complaint amended accordingly. The Complainant points out that Domain By Proxy is a corporation which registers domain names on behalf of third parties in order to keep their real identity secret.
In its Observations of January 18, 2008 the Complainant asserts that the Respondent has not provided any proof of identity. At that time the copy of the birth certificate had not been received. However, the Panel is persuaded that the scanned copy of a Californian birth certificate subsequently received on January 19, 2007, establishes that the Respondent’s birth-name is Allegra Celeste Bonner. However, the Complainant contends that irrespective of any legitimate claim to the name at issue, the use made of the contested domain name is inconsistent with the assertion that she required the domain name in connection with the music business allegedly conducted under the name Allegra Shock.
The Policy in paragraph 4(c)(i) provides that a Respondent may demonstrate rights or legitimate interests by reference to, [before any notice to you 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. As evidenced by the material submitted in the original Complaint, at the relevant time prior to notice of the Complaint, the contested domain name resolved to a parking website, on which links were displayed to websites concerned with various goods or services. The Panel notes that when accessed on January 25, 2008 the contested domain name resolved to a website on which figures a ‘Coming soon’ notice, a large photograph of two shade figures in a dance-like pose and the notice ‘THANKS FOR STOPPING BY! THIS SITE IS BEING BUILT RIGHT NOW SO IN THE MEANTIME, LISTEN TO ALLEGRA’S MUSIC AND FIND OUT ABOUT UPCOMING SHOWS @ WWW.MYSPACE.COM/THEDYNAMORTALS. THANK YOU.’ However, this use of the domain name does not predate notice of the dispute.
The website at the relevant time before notice was not concerned with the Respondent herself or any other person called or known as Allegra or Allegra Shock or with some aspect of her businesses or activities, or with anything else intrinsically connected with the first name Allegra or other girls’ first names or anything of the sort. In any case, it is questionable that where only links to other websites which may or may not themselves offer goods or services are displayed on a homepage, any goods or services in the relevant sense are offered there at all.
However, the Policy refers to use of ‘the domain name or a name corresponding to the domain name’. The Respondent asserts that she uses and has used for a period before notice of the Complaint, the name ‘Allegra Shock’ in connection with her music business, i.e. as a stage name under which she provides musical entertainment. The birth certificate submitted establishes that her first name is indeed Allegra. Some of the hyperlinks the Respondent provides to substantiate her use of the name Allegra Shock, are not operational. However, the Panel is satisfied, by reference to those hyperlinked websites that do contain references to Allegra Shock; to the secondary material provided referring to performances by ‘Allegra Shock’; and to other references to her available on the internet, that the Respondent had adopted and did use the name ‘Allegra Shock’ at the relevant time. She apparently used it as a stage name in connection with musical performances and recordings, and has a legitimate interest in using it on the internet, a significant medium for music diffusion. The Panel is satisfied that under the name Allegra Shock, the Respondent offered goods and services (music performances and recordings) in a bona fide manner. It is not necessary for the Panel to decide whether the Respondent is commonly known by the name Allegra Shock.
Therefore the Panel finds that the Respondent has rights or legitimate interests in the contested domain name.
C. Registered and Used in Bad Faith
The trademark ALLEGRA is used by the Complainant in relation to readily available medication for a common ailment. It is well established in the market and the Complainant is a leading pharmaceutical company which also operates a website under the name <allegra.com>. The Panel accepts that the Respondent must have been aware of the reputation of the trademark ALLEGRA at the time of registration, as she implicitly admits by asserting that ‘since the drug ALLEGRA was created, I had to add a last name as allegra.com was not an option’ (see Respondent’s Communication of January 11, 2008). However, the Panel accepts that the Respondent’s own name is Allegra and that she conducted a music business under the name Allegra Shock at the relevant time. These facts alone may not necessarily defeat an inference of bad faith, given that the Respondent did not operate the website in a manner connected with herself or her music business, but as a parking website, for a considerable period after registration, and apparently only modified her use of the domain name after notice of the Complaint. The Panel accepts that it is probable that the Respondent was gaining, during the relevant period, some financial advantage by way of click-through or pay per click fees or royalties.
However, the question of bad faith does not in substance arise. To succeed the Complainant must establish that all three elements of similarity, absence of right or interest, and bad faith are present cumulatively, and the Panel has already found that the Respondent does have legitimate rights or interests.
Nonetheless, if it had been necessary to decide the matter, in the circumstances the Panel is not persuaded that a finding of bad faith would have been warranted. Where a respondent has incorporated in a contested domain name a well known trademark in which it has no rights, and which is bound to be recognized by, and attract internet users to a website on which a number of unrelated hyperlinks are displayed, a claim of abusive registration may be substantiated.
However, depending on all the circumstances the use of a parking website, even where a well-known trademark is involved, may amount to nothing more than taking advantage of an opportunity offered in the period between acquisition of a domain name and initiating an intended website use reflecting a legitimate interest. In this case the contested domain name is not identical to the Complainant’s trademark, and the Respondent is found to have a legitimate interest, since the contested domain name both incorporates her first name, and reflects a stage name in which she enjoys some degree of recognition and reputation amongst interested members of the public. Further, hyperlinks on the parking website did not directly and specifically seek to derive advantage from the association between the contested domain name and the pharmaceutical substance Allegra; rather they were varied, inconsistent and largely unrelated to that subject matter. It required an Internet user to insert relevant search terms to arrive at websites connected with the drug Allegra or competing pharmaceutical products or services.
Therefore the Panel finds that the contested domain name was not 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 Complain be denied.
WiIliam A. Van Caenegem Sole Panelist
Dated: January 26, 2008
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