Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited
Case No. D2007-1641
1. The Parties
The Complainant is Sanofi-aventis, Aventis Inc., of France, represented by Marchais De Candé, France.
The Respondent is Hostmaster, Domain Park Limited, of Samoa.
2. The Domain Name and Registrar
The disputed domain name <allegrabigrata.info> is registered with Monike Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2007. On November 8, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 9, 2007, Moniker Online Services, LLC 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 November 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2007.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on December 12, 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 Complainant is the registered owner of the trademark ALLEGRA in a number of jurisdictions, including Canada (No. TMA 492 711), the United States of America (No. 2067728), and Brazil (No. 819351520), in relation to pharmaceutical preparations. It also owns the trademarks ALLEGRA-D in the United States of America and Canada.
The Complainant has registered the domain names <allegra.com> (June 4, 1998); <allegra.us> (April 9, 2002) and <allegra.biz> (March 27, 2002).
5. Parties’ Contentions
A. Complainant
The Complainant asserts that Sanofi-aventis is a very large pharmaceutical company, with an extensive portfolio of high-growth drugs. It operates in many countries, and offers a wide range of patented prescription drugs. It is a major player in the worldwide pharmaceuticals market, in particular in the United States of America. Under the trademark ALLEGRA the Complainant markets a drug to treat the symptoms of seasonal allergies. ALLEGRA is marketed in more than 55 countries including the United States of America and Canada.
The Complainant further asserts that the contested domain name identically reproduces the Complainant’s trademark ALLEGRA, which was registered prior to the registration of the contested domain name. The trademark ALLEGRA is highly distinctive so that a risk of confusion arises between the contested domain name and the Complainant’s trademarks. The reproduction of the trademark ALLEGRA in its entirety as the first and dominant part of the contested domain name results in a confusingly similar domain name, notwithstanding the addition of other words – see Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903. The only difference is the juxtaposition of the term “bigrata”. This addition does not prevent Internet users from thinking there is a link with the Complainant’s trademarks. The likelihood of confusion is further enhanced by the great notoriety of the Sanofi-aventis trademarks. The Complainant contends that for those reasons the addition of “bigrata” is not sufficient to alleviate the likelihood of confusion with its distinctive trademark ALLEGRA.
Further the Complainant asserts that the Respondent has no legitimate interest in using ALLEGRA since that term bears no resemblance to “hostmaster”. The Respondent has not been licensed or otherwise permitted by the Complainant to use its trademarks or register a domain name including them. There is no relationship whatsoever between the parties in these proceedings, and the Respondent has adopted and incorporated the Complainant’s trademarks without authorization. The absence of permission proves that the Respondent does not have relevant rights or legitimate interests.
Further the Complainant asserts that the domain name was registered in bad faith. It contends that, given the worldwide fame of its trademarks, and its domain names incorporating the term “allegra”, it is crystal clear that the Respondent has registered the contested domain name in order to abusively take advantage of the Complainant’s notoriety and that of its products.
The Complainant also contends that the contested domain name is used in reference to services provided by the Complainant. The contested domain name leads to a home page, where, if the search term “medicine” is entered in the search bar, different web links appear which evoke the Complainant’s activity. The links so appearing on the website printout attached to the Complaint are “Medicine”, “Gold Pharma EU Pharmacy”, “Medical Trials Volunteers Needed UK Wide”; and “Medicine, Jobs at naturejobs.com”. In the circumstances the Complainant contends that it is inconceivable that the Respondent registered the contested domain name unaware of the Complainant’s rights.
Further the Complainant asserts that the Respondent is deliberately trying to obtain unfair benefit from Sanofi-aventis and its Allegra product reputation by using its trademark ALLEGRA to divert Internet users to a parking website belonging to “hostmaster” with links to website offering medical services or selling Allegra products. As the Panel held in F. Hoffmann-La Roche AG v. Macalve e-dominiosS.A., WIPO Case No. D2006-0451, the use of a domain name as a parking site is not a bona fide commercial use. The Complainant asserts that when clicking on the interactive parts of one of the websites appearing as links on the homepage, one is automatically directed to other websites which are selling online various products and/or services. The web page printout reproduced directly below this assertion in the Complainant’s submissions shows a page with the hyperlinks referred to in the previous paragraph. Nothing indicates which of the “interactive parts” referred to above have been clicked on to arrive at this later page, but in the search bar as reproduced in the later page the term ‘medicines’ appears. The Complainant also contends that when the term “allegra” is typed into the search bar on the homepage, several Internet links appear for websites where one can buy Allegra products. The web page printout reproduced directly below this assertion in the Complainant’s submissions shows two links, “Buy ALLEGRA Online”; and “Allegra at Amazon.com.uk”. The Complainant further contends that when clicking on “Buy ALLEGRA Online” one is directed to a website “www.getpharma.com” which offers to consumers various e-marketing services, and which sells online, amongst others, the Allegra drug for 19 EURO. A printout of this web page is reproduced immediately below in the Complainant’s submission to this effect. The Complainant asserts that this web page also gives information concerning usage, cautions and possible side effects of this medicine, and reproduces the Sanofi–aventis’ trademark by inserting the reproduction of a drug box similar to Allegra’s. Immediately below this assertion the Complainant has reproduced a printout of this drug box which also appears in the webpage printout referred to above. This printout shows a boxed area containing the mark Telfast distinctively represented with the word “comprimidos” just below and some further words with in the bottom right hand corner the trademark Aventis, including a precedent device. The Complainant then asserts that Telfast and Allegra are identical products produced by Sanofi-aventis, which sells the same product under the mark Allegra everywhere in the world, except in Europe where it is sold as Telfast. The Complainant contends that therefore the domain name <allegrabigrata.info> is only used to lead consumers to other websites offering to sell Allegra products online. The Respondent is using the contested domain name to link third party websites which claim to sell all kinds of medical products and services.
Further, the Complainant asserts that the advertisements and links to be found on the website to which the contested domain name resolves probably provide hit-dependent income to the Respondent. Panels have consistently found that a domain name that reproduces a well known trademark and which leads to a parking website is being used in bad faith. The Complainant cites Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations,
WIPO Case No. D2005-0377; Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 in support of its contention that parking websites, in generating click-through or advertising fees qualify as bad faith use because they allow respondents to derive profit from the recognition and notoriety of third party trademarks incorporated without authorization in contested domain names. The Complainant further contends that it is regularly the victim of such commercially unfair behaviour, as has been repeatedly confirmed by WIPO Panels in proceedings brought by the Complainant (e.g.
WIPO Case No. D2006-1079 and
WIPO Case No. D2005-0377). According to the Complainant, there can therefore be no doubt that the Respondent is intentionally attempting to attract for financial gain, Internet users to the abovementioned website or other online locations by creating a likelihood of confusion with the Complainant’s trademarks and domain names as to source, sponsorship, affiliation or endorsement of the registrant’s website or location or of a product or service on the Respondent’s website or location.
Further the Complainant asserts that in response a formal notice letter from the Complainant, the Respondent communicated in the following terms: “Hi, Happy to push over in exchange for reimbursement of cost and fees. $150 will cover it.” This the Complainant contends proves that the Respondent registered the contested domain name primarily for the purpose of selling renting or otherwise transferring the domain name registration to the owner of the trademarks for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
Consequently the Complainant asserts that the contested domain name was registered intentionally and is being used for a commercial purpose without ant rights or legitimate interest by the Respondent.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name wholly incorporates the Complainant’s trademark ALLEGRA. However, the addition of “bigrata” results in a domain name that is not identical to the Complainant’s trademark.
The question before the Panel is therefore whether the contested domain name is confusingly similar to the Complainant’s trademark ALLEGRA. The trademark ALLEGRA is wholly distinctive in that it has no generic meaning or significance and only secondary meaning as a trademark evoking the Complainant’s business and products. The trademark appears to be well known in many jurisdictions and is used in relation to a widely available pharmaceutical product for a common ailment.
The term “allegra” appears first in the contested domain name, thus forming the dominant part of that name. As such it would most likely catch the attention and be recognized as the Complainant’s trademark by an Internet user. “Bigrata” appears as no more than an addition, apparently without meaning or significance, to the distinctive trademark of the Complainant. The resulting compendious term does not itself apparently have an established significance or meaning, nor does “bigrata” communicate anything in particular concerning the term “allegra” or products sold under that mark, whether by way of criticism, indication of availability for sale, consumer endorsement or in some other meaningful way. Therefore the addition does nothing to dispel the impression of some connection between the contested domain name and “allegra” or the Complainant, registered owner of the ALLEGRA trademark. The Panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 pointed out that the 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”. This of course depends on the circumstances, but in this case there is no basis for concluding otherwise than that the contested domain name, because of its incorporation of the Complainant’s trademark, will generate confusion of the relevant kind amongst Internet users.
Therefore the Panel finds that the contested domain name is confusingly similar to the Complainant’s trademark ALLEGRA.
B. Rights or Legitimate Interests
The Respondent has not been licensed or authorized by the Complainant to use its trademark ALLEGRA or to register a domain name including that trademark. There is also nothing before the Panel to indicate that the Respondent “hostmaster” is commonly known by the domain name and would have a resulting legitimate interest in its registration and use. The Respondent has not filed a response and has not demonstrated any rights or legitimate interests. As to a possible bona fide offering of goods or services, which might be inferred from the present use of the domain name, it is not apparent that the Respondent is directly offering any goods or services at all on the website to which the contested domain name resolves. All that appears on this website is a number of hyperlinks to other websites, so that no goods or services can actually be derived or obtained from the relevant website. Nor is there any evidence of a legitimate noncommercial or fair use of the domain name.
The Panel therefore finds that the Respondent has not rights or legitimate interests in the contested domain name.
C. Registered and Used in Bad Faith
The Complainant has established that the trademark ALLEGRA is widely known in many jurisdictions. It is used in relation to a commonly employed pharmaceutical substance for a common ailment. It is striking and distinctive and has no generic meaning. In the circumstances the Panel is persuaded that the contested domain name was registered by the Respondent with knowledge of the Complainant’s reputation and trademark rights.
The Complainant contends that on the website to which the contested domain name resolves, links are found to websites offering competing medical services and Allegra products for sale. However, this is not strictly speaking the case. The links appearing on the homepage are not apparently for medical products or services, but appear to relate more to unrelated products or services, such as motor vehicles. It is only when the search term “medicine” is activated in the search bar on the homepage that links appear relating to medical products and services. Similarly, it is also only when the search term “allegra” is entered that links to other websites offering Allegra products for sale appear. In the light of this, the Panel is not persuaded that the Respondent on its website offers links to either websites where Allegra product are offered for sale or to websites where competing products or services are on offer. Rather, an Internet user to find his or her way to such websites, has to choose to insert and activate relevant search terms. There is little in the homepage which directs an Internet user more directly to medical services websites.
However, it appears to the Panel that the Complainant’s assertions in this regard are either misdirected or superfluous. The Policy directs the Panel to find bad faith if either of the circumstances listed in paragraph 4 (b)(i) – (iv) are present. In this case, where it is well known, as the Complainant asserts and as has been found in many Panel decisions, that website owners earn additional clickthrough and advertising fees simply from generating additional traffic, it is clear that paragraph 4 (b)(iv) applies to the present circumstances. The Panel is persuaded that by incorporating the trademark ALLEGRA in the contested domain name, the Respondent has sought to rely on its striking, distinctive and widely known character to attract, for commercial gain from additional clickthrough fees, Internet users to its website. The contested domain name in its entirety is a meaningless and nonsensical combination and the conclusion is inescapable that its purpose is to attract traffic by relying on the first part which stands out as a widely known trademark.
The presence of an inactive window on the homepage to which the contested domain name resolves, containing female names graphically represented is no doubt intended to give color to an innocent intent on the part of the Respondent by suggesting that the term “allegra” in the contested domain name was adopted because it is a known girl’s name. However, the presence of hyperlinks, as described above, on the same homepage undermines this possible explanation for the adoption of the term “allegra” in the contested domain name, as does the absence of any other indication that the website is somehow concerned with girls’ names. The Panel is persuaded that the Respondent has in fact adopted the term “allegra” as a means of creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website which results from its incorporation and dominant position in the contested domain name.
Further, arguably paragraph 4 (b)(i) of the Policy may also be applicable, since there is evidence before the Panel that the Respondent sought to sell the contested domain name back to the Complainant for valuable consideration. However, there is no evidence of documented out of pocket expenses before the Panel.
Therefore the Panel finds that the contested domain name was 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 domain name <allegrabigrata.info> be transferred to the Complainant.
WiIliam A. Van Caenegem Sole Panelist
Dated: December 26, 2007
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