The Complainant is Aventis Inc. of Grennville, Delaware, United States of America, represented by Selarl Marchais De Candé of France.
The Respondent is healthtrust pharm of Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <allegrarobax.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2008. On September 18, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On September 18, 2008, eNom transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted the required copies of the Complaint on September 22, 2008. 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 September 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 31, 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.
As no response was filed by the Respondent, the Panel has checked to satisfy himself that the steps taken by the Center to notify the Complaint to the Respondent were adequate. Although the Respondent failed to provide in the Whois particulars for the Domain Name any adequate physical address, and the telephone and fax numbers in the Whois particulars appear to be fictitious, it appears that the copies of the Complaint and Notice of Commencement of Proceeding were successfully transmitted to the Respondent's email address. The Panel is satisfied that the Center has discharged its responsibility to employ reasonably available means calculated to achieve actual notice of the Complaint to the Respondent.
4. Factual Background
The following (uncontested) facts are taken from the Complaint.
A. The Complainant
The Complainant is an affiliate company of Sanofi-aventis, a corporation formed in 2004, following the merger between the two French companies, Aventis SA and Sanofi-Synthelabo. Completion of that merger created the largest pharmaceutical group in Europe and the fourth largest in the world. Sanofi-aventis has a presence in all major world markets, and it boasted a sales level of €28 billion in the 2007 year.
“Allegra” is a drug used in the treatment of seasonal allergies. It was developed by the Complainant before the 2004 merger, and it is one of the Complainant's best-selling products. The Complainant markets the drug in more than 55 countries, including in the United States of America (“the USA”) and Canada.
The Complainant is the registered proprietor of the word mark ALLEGRA in Canada and in the USA, in respect of antihistamines. The ALLEGRA word mark was registered in 1998 and 1997 in Canada and the USA respectively.
The Complainant is also the registered proprietor of the mark ALLEGRA-D in Canada and in the USA, in respect of antihistamines and decongestant pharmaceutical preparations. The ALLEGRA-D word mark was registered in 2001 and 1998 in Canada and the USA respectively.
The Complainant is also the owner of a number of “allegra” domain names, including <allegra.com>, <allegra.info>, <allegra.us>, and <allegra.biz>.
“Robax” is a pharmaceutical preparation used as a muscle relaxant. It is marketed by Whyet Consumer Healthcare Inc., a competitor of the Complainant.
B. The Respondent and the Domain Name
The Domain Name was registered on August 15, 2007.
The Domain Name resolves to a website (“the Respondent's website”) which features Sanofi-aventis and Whyet Consumer Healthcare Inc. products. The Complainant produced pages from the Respondent's website, printed on August 28, 2008. The Respondent's website reproduced the Complainant's ALLEGRA and ALLEGRA-D trademarks on several occasions, but it did not provide any link to the official Sanofi-aventis website. Rather, Internet users were provided with click-on links, including the links “Order cheap Allegra D without prescription” and “Buy cheap Allegra 12 hour with no prescription”. There were similar click-on links offering the competitor's products, Robaxin and Robaxacet, without prescription. At the foot of the single page which constituted the Respondent's website, there was a reference to an online pharmacy called “77 Canada Pharmacy”, advising that the company offers mail order Internet sales on over-the-counter and “rx” items at low prices.
The Panel has visited the Respondent's website and noted that the click-on links all resolve to the 77 Canada Pharmacy websites at “www.77canadapharmacy.com” and “www.77canadianpharmacy.com”. The Respondent's website is, therefore, acting purely as a referral portal, directing Internet users to the online pharmacy operated at “www.77canadapharmacy.com” and “www.77canadianpharmacy.com”. The Complainant's “Allegra 12” product is offered for sale, on a non-prescription basis, at the website at “www.77canadapharmacy.com”.
5. Parties' Contentions
A. Complainant
The Complainant contends as follows:
1. the Domain Name is confusingly similar to the Complainant's ALLEGRA mark. The ALLEGRA mark has no meaning other than to refer to the Complainant's pharmaceutical product. It is, therefore, highly distinctive.
2. the Domain Name incorporates the Complainant's ALLEGRA mark, in its entirety, as the first and dominant part of the Domain Name, and that is sufficient to establish confusing similarity for the purposes of the Policy (citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
3. the addition of the expression “robax” is not sufficient to counter the likelihood of confusion created by the use of the Complainant's ALLEGRA mark in the Domain Name.
The conjunction of two well-known and unrelated trademarks in one domain name is, as such, inherently confusing. Internet users could think that both drugs are marketed by only one single company and could be deceived about the origin of the products (citing Viacom International Inc. v. Beomjoon Park,
WIPO Case No. D2001-0220 and Sanofi-Synthelabo v. Nicki On,
WIPO Case No. D2003-0871).
4. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following factors:
(i) The Respondent's name is healthtrust pharm, which has no resemblance to the word “Allegra”. The Respondent had no need to use the Domain Name.
(ii) The Respondent has no prior rights or legitimate interest to justify the use of the well-known mark ALLEGRA.
(iii) The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks, or to register any domain name including the Complainant's trademarks. There has never been any relationship whatsoever between the parties.
(iv) The Respondent has adopted the Complainant's trademarks and domain names for its own use, without the Complainant's authorization.
5. The Domain Name was registered and is being used in bad faith. The bad faith registration and use is demonstrated by the following facts:
(i) The Sanofi-aventis Group is famous, and its products, including its ALLEGRA product, are famous around the world. Before registering the Domain Name, the Respondent must have been aware of the existence of the Complainant's ALLEGRA and ALLEGRA-D products. That knowledge is confirmed by the references on the Respondent's website to the Complainant's ALLEGRA and ALLEGRA-D products.
(ii) The Respondent must have been aware of the risk of deception and confusion that would inevitably follow when the Domain Name was registered, as the registration would give the impression that the Respondent's website was somehow endorsed by the Complainant, when in fact it is not.
(iii) The Respondent has been deliberately trying to gain unfair benefit from the ALLEGRA product reputation, by using the ALLEGRA mark to divert Internet users (via the Respondent's website) to third party websites which sell, online, ALLEGRA products. Diverting users in this misleading manner is evidence of bad faith use.
(iv) The advertisements and links on the Respondent's website probably provide income for the Respondent, on a pay-per-click basis (citing Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations,
WIPO Case No. D2005-0377).
(v) By using the Domain Name to direct consumers to the “online pharma resource”, the Respondent is intentionally attempting to attract, for financial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks and domain names as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of products or services offered on the Respondent's website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. What the Complainant must prove – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g., by failing to file a Response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint.
The Complainant is the registered proprietor of the mark ALLEGRA, and that mark has been incorporated in its entirety into the Domain Name. Numerous panel decisions have noted that the inclusion of a complainant's trademark in full in a disputed domain name will often be sufficient to establish confusing similarity for the purpose of paragraph 4(a)(i) of the Policy (see, for example, Nokia Group v. Mr. Giannattasio Mario,
WIPO Case No. D2002-0782, recently followed by this Panel in La Quinta Worldwide, LLC v. Ali Aziz,
WIPO Case No. D2008-1389).
The Panel also accepts the Complainant's submission that the addition of another party's well-known trademark (being another mark well-known in the pharmaceutical field) does nothing to alleviate the confusion which is likely to be caused by the prominent use in the Domain Name of the Complainant's ALLEGRA mark. As the Panel put it in the Sanofi-Synthelabo, supra:
“There is little doubt that the conjunction of the two famous trademarks of competing pharmaceutical companies is confusing in the eyes of the public. Visually as well as phonetically, the evocation of each trademark creates instantaneously an association with one source. As the sources are different, the disputed domain names can only confuse the public. In other words, the conjunction of two well-known and unrelated trademarks in one domain name, as such, is inherently confusing.”
Having regard to the foregoing considerations, the Panel is satisfied that the Domain Name is confusingly similar to the ALLEGRA mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to the respondent of the dispute, use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) where the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) where the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
“[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Complainant has not authorized the Respondent to use its ALLEGRA mark, whether in a domain name or otherwise. The Domain Name is confusingly similar to the Complainant's ALLEGRA mark, and there is nothing in the evidence which would suggest that the Respondent, or any business operated by it, might be commonly known by the Domain Name.
That combination of circumstances is sufficient to establish a prima facie case of “no right or legitimate interest”. The evidentiary onus, therefore, shifts to the Respondent to demonstrate that it has some right or legitimate interest in respect of the Domain Name. The Respondent has failed to file any Response, and has, therefore, failed to discharge that onus. The Complainant, therefore, succeeds on this part of its Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that a respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
The Panel is also satisfied that the Complainant has proved bad faith registration and use, of the kind described in paragraph 4(b)(iv) above. The Complainant has proved that its ALLEGRA mark is both distinctive and well-known, and the Respondent's use of the mark on the Respondent's website leaves no room for doubt that the Respondent was aware of the Complainant and its ALLEGRA mark when the Domain Name was registered. It would in any event have been an amazing coincidence if the Respondent had somehow thought of the name “Allegra Robax” without knowledge of either the Complainant's “Allegra” product or its competitor's “Robax” product, and the Respondent has not denied that it knew of the Complainant's mark when it registered the Domain Name. In those circumstances, the obvious inference is that the Respondent chose the Domain Name because it knew of the “Allegra” and “Robax” products, and wished to attract to the Respondent's website Internet users looking for sites associated with those products.
The Domain Name points indirectly to the online pharmacy operating at the websites at “www.77canadapharmacy.com” and “www.77canadianpharmacy.com”, and in the absence of any Response, the Panel concludes that the Respondent is either the owner of the websites (or commercially associated with the owner in some way), or is receiving revenue by referring Internet visitors who arrive at the Respondent's website to the websites at “www.77canadapharmacy.com” and “www.77canadianpharmacy.com”. In either event, it is clear that the Respondent is using the Domain Name for commercial gain.
A number of additional factors confirm the Panel's view that the Respondent has registered and used the Domain Name in bad faith. First, there is the Respondent's failure to provide proper contact details when it registered the Domain Name. The only physical address provided was “Vancouver, B.C”, and the telephone and fax number provided – “+55555” – appears to be fictitious. Secondly, there is the unauthorized use of the Complainant's ALLEGRA trademark on the Respondent's website. Thirdly, there is the Respondent's failure to file a Response. All of those factors suggest bad faith registration and use.
In summary, it is abundantly clear that the Respondent has been trading on the value of the Complainant's goodwill in its ALLEGRA mark, for the purpose of attracting Internet users to the Respondent's website.
For completeness, the Panel notes that this is not a case of the Respondent operating as a genuine reseller of the Complainant's products. The circumstances in which a respondent who is a reseller of a complainant's trademarked products may register the complainant's trademark as a domain name, have now been well settled. The leading panel decision on that issue is the case of Oki Data, supra, where the panel held that a respondent's use of a manufacturer's trademark as a domain name would only be regarded as a bona fide use if a number of conditions were satisfied. One of the conditions was that the website at the disputed domain name must accurately disclose the respondent's relationship with the trademark owner. Another condition was that the respondent must use the website to sell only the trademarked goods; otherwise, the respondent could be using the trademark to bait Internet users and then switch them to other goods.
The Respondent fails the Oki Data test on both of those counts. The Respondent's website fails to make clear that the Respondent has no relationship with the Complainant, and the Respondent's website is used for the sale of the products of a competitor, in addition to those of the Complainant.
Having regard to the foregoing factors, the Panel is satisfied that the Domain Name was registered and is being used for the bad faith purpose described at paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's ALLEGRA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of products offered on the Respondent's website.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders (in accordance with the Complainant's request) that the domain name <allegrarobax.com> be cancelled.
Warwick Smith Sole Panelist
Dated: November 14, 2008
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