The Complainant is Sanofi-aventis, of Paris, France, represented by Marchais De Candé law firm, France.
The Respondent is Vertical Markets Online, of Sumas, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <eloxatin.biz> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2007. On December 3, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 3, 2007, 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”), 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”).
3.2 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 6, 2007.
3.3 In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 16, 2008. 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
4.1 The Complainant was formed in 2004 as a result of merger between Aventis SA and Sanaofi-Synthelabo. It is the largest pharmaceutical group in Europe and the third largest in the world, with € 500 million of sales in 2005 from 11 products.
4.2 The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases. One of these is eloxatin, which is a treatment for colorectal cancer. The drug is marketed in close to 70 countries world wide.
4.3 The Complainant is the owner of trademark no. 648310 for the word “ELOXATIN” registered under the Madrid Agreement and Protocol in class 5 for “Pharmaceutical products for the treatment of cancers”. The trademark was filed on December 5, 1995 and designated various territories including Germany, Russia, Italy, and Benelux.
4.4 The Complainant is also the owner, through its US subsidiary, Sanofi-aventis US LLC, of US trademark no. 2870847 for the word “ELOXATIN”. That trademark was filed on April 25, 2002 in class 5 for “pharmaceutical preparations, namely an anticancer preparation, excluding use for the treatment of prostate cancer, for parenteral administration”.
4.5 The Complainant is the owner of various domain names that incorporate the mark “ELOXATIN”, including <eloxatin.com>, <eloxatin.info> and <eloxatin.net>.
4.5 The exact legal status of the Respondent is unclear although it appears to be associated with one “Mark Catroppa”. The Respondent registered the Domain Name on December 29, 2006.
4.6 Since the registration, or shortly thereafter, the Domain Name has resolved to a website that contains the banner heading with “ELOXATIN.com” in large letters underneath which in smaller text are the words “the reference site for eloxatin”. Below this banner is an advertisement for the company “Canada Pharmacy”, and underneath this is to be found medical information regarding the administration and side effects associated with eloxatin.
4.7 At the bottom of the web page is to be found links to three “Sponsored Pharmacy sites”; i.e. “canpharm.com”, “Canada Pharmacy” and “CanadaMedicineShop.com”.
4.8 This website remains operational as at the date of this decision.
5. Parties’ Contentions
A. Complainant
The Complainant’s Trademarks
5.1 The Complainant contends that the Domain Name “is practically identical” with its registered trademarks “notwithstanding the added gTLD. biz”. In support of its contention that the gTLD <.biz> can be ignored for these purposes it cites a number of UDRP cases including Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 and Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002-0033.
No Rights or Legitimate Interests
5.2 The Complainant contends that the Respondent does not use the Domain Name in connection with a bona fide offering of goods or services. Whilst the website purports to be the “reference site for ELOXATIN” it is said to have the purpose of “divert[ing] the Internet user to other pharmacy-online websites”. The Complainant refers to the decision in Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinf,WIPO Case No. D2004-0990 and quotes a passage from this decision in which the panel confirmed that the diversion of Internet traffic for the “purpose of generating revenues” does not constitute use of a domain name “in connection with a bona fide offering of goods or services”.
5.3 The Complainant also claims that “the [R]espondent’s name, Vertical Markets Online is obviously not related to the sign ELOXATIN and therefore the [R]espondent’s grounds in choosing this name for a website are very suspicious”.
5.4 Lastly the Complainant asserts that it “has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including [its trademarks]”.
Bad Faith
5.5 The Complainant contends that the Respondent “has obviously registered its domain name in order to abusively take benefit from the Complainant’s notoriety”. Since Eloxatin is “an invented word”, the Respondent “must have been aware of” the Complainant’s “world famous” trademark. This inference is said to be “especially likely [given that] the Respondent uses [the website] mostly to provide information on [the eloxatin] treatment”. Therefore, according to the Complainant, the “Respondent must have undoubtedly been aware of the risk of deception and confusion that would inevitably follow when registering the disputed domain name since it could give the impression that his website, and thus even the Respondent himself, were somehow endorsed by the Complainant, when in fact they were not”.
5.6 Similarly, the Complainant contends that the Domain Name is also being used by the Respondent in bad faith. It asserts that it “clearly appears that the contested domain name” is being used as a “non official information portal on eloxatin”. It also makes reference to the fact that at the bottom of the webpage operating from the Domain Name are three hyperlinks to online pharmacies. According to the Complainant, anyone clicking on the first of these links is directed to the third party website “www.canpharm.com”. The Complainant claims that whilst “www.canpharm.com” offers for sale various types of medicines, it does not offer for sale eloxatin.
5.7 The Complainant accordingly concludes that the Respondent’s true purpose in adopting and using the Domain Name “is to collect money on a pay-per-click basis.” In support of its contention that such use is in bad faith it refers to Sanofi-aventis v. Montanya Ltd,
WIPO Case No. D2006 and the Sanofi-aventis and Aventis Pharma SA v. Advent Innovations WIPO Case No. D2005-0377.
B. Respondent
5.8 The Respondent did not reply to the Complainant’s contentions and is therefore in default pursuant to paragraph 5(e) and paragraph 14 of the Rules. The Panel considers the implications of this below.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.5 This aspect of this case is very straight forward. The Panel accepts that the Domain Name is, apart from the <.biz> gTLD, identical to various trademarks in which the Complainant has rights. The Panel also accepts that in the circumstances of this case the <.biz> gTLD can be disregarded when conducting the relevant comparison and that therefore, for the purposes of the Policy, the Domain Name and the Complainant’s trademarks are identical.
6.6 Accordingly, the Panel concludes that the Complainant has made out paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 The Panel accepts the Complainant’s claims that the Respondent has not been authorised by the Complainant to use the “Eloxatin” name and that the Respondent is not known by the “Eloxatin” name.
6.8 The Complainant contends that the real reason why the Domain Name was registered in this case was not so much to provide the information about “Eloxatin” that appears on the website that now operates from the Domain Name, but instead to divert Internet users to that website who were looking for information on Eloxatin that was either provided or authorised by the Complainant. This is said to have been done in the hope and expectation that a number of those Internet users would in turn click on the links that appear on the website and thereby be taken to one of a number of pharmacy-online websites. Such activities are said to have been undertaken by the Complainant in order to generate revenues.
6.9 For the reasons that the Panel provides under the heading of “bad faith” below, the Panel accepts for the purposes of these proceedings that the Complainant’s characterisation of the Respondent’s activities and intentions is correct. It also accepts that such activity does not constitute use of a domain name in connection with “a bona fide offering of goods or services”, as contemplated by paragraph 4(c)(i) of the Policy. Nor does it otherwise provide the Respondent with rights or legitimate interests in the Domain Name.
6.10 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 There can be no doubt that the Respondent in this case registered the Domain Name in full knowledge of the Complainant’s use of the “Eloxatin” name for one of its products. There is the fact that “Eloxatin” is an invented name that exclusively refers to such a product, the extensive reputation of that product as a result of worldwide sales prior to the date of the registration of the Domain Name, and the fact that the website operating from the Domain Name refers directly to that product.
6.12 There is also little doubt that the Domain Name was registered with the intention of using it for the website that continues to operate from the Domain Name to this day. Therefore, the key question in this case is what were the true intentions of the Respondent in setting up and operating this website and whether given those intentions, the registration and use of the Domain Name for that website was in bad faith.
6.13 The Complainant asserts that the real purpose of the Respondent in registering the Domain Name was to use it in connection with a website whose true purpose was to make money for the Respondent by the inclusion on that website of “pay-per-click” links. The Panel concludes for the purposes of these proceedings that these contentions are correct.
6.14 So far as the website is concerned, the reasons for this are as follows:
(i) The website operating from the Domain Name incorporates a banner heading that prominently incorporates the text “ELOXATIN.com”. This seems odd given that the Domain Name is <eloxatin.biz>, until one remembers that <eloxatin.com> is a separate domain name that is owned and used by the Complainant. There seems to be no reason why a legitimate drug “reference site” would need or want to impersonate the Complainant in this manner.
(ii) Whilst the website purports to be “the reference site for eloxatin” there is actually very little information on this drug on the website operating from the Domain Name. There is no information on what eloxatin is, nor is there any information on the conditions for which it might be prescribed. The website contains a conventional “About us” link, but when this is clicked upon it takes the Internet user to an empty page. In short, the overall impression that one gets from the website when one looks at its pages for more than a few moments, is that it is masquerading as a reference site and its true purpose is to advertise third parties products.
(iii) The website contains links to “Sponsored Pharmacy Sites”, at least one of which according to the uncontested evidence of the Complainant, does not provide the eloxatin product.
(iv) The very name of the Respondent, i.e. Vertical Markets Online, suggests that the primary focus of the Respondent’s activities is not the provision of information about drugs, but online marketing.
(v) The Respondent has not sought to deny the allegation made by the Complainant in the Complaint that the Respondent’s real intention was to obtain “click through revenues”.
6.15 Given the similarity between the Domain Name and the Complainant’s trademarks and the domain names operated by the Complainant, the Panel is also of the view that the Domain Name was registered by the Respondent in the knowledge, hope and belief that Internet users would type the Domain Name into their Internet browsers with the intention of reaching a website that was either operated or authorised by the Complainant.
6.16 Given these findings by the Panel, it necessarily follows that the registration and use of the Domain Name was in bad faith. In particular, the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy which states that the following shall be evidence of bad faith registration and use:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
6.17 Accordingly, the Panel concludes that the Complainant has made out paragraph 4(a)(iii) 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 <eloxatin.biz> be transferred to the Complainant.
Matthew S. Harris Sole Panelist
Dated: January 30, 2008
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