WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi and AVENTISUB II Inc. v. Nikolay Fedotov

Case No. D2013-2121

1. The Parties

The Complainants are Sanofi of Paris, France and AVENTISUB II Inc. of Greenville, Delaware, United States of America (“US”), represented by Selarl Marchais & Associés, France (hereinafter both referred to as “the Complainant”).

The Respondent is Nikolay Fedotov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <allegra-store.com> is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2013. On December 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2013, 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.

On December 19, 2013, the Center informed the parties that the language of the registration agreement for the disputed domain name is Russian, and invited the Complainant to: (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English; or (ii) submit the Complaint translated into Russian; or (iii) submit a request for English to be the language of the proceedings. The Respondent was invited to provide comments in light of the Complainant’s submission. On December 20, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit any comment on the Complainant’s submission.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 in both English and Russian, and the proceedings commenced on December 27, 2013. In its notification, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Russian; 3) appoint a Panel familiar with English and Russian, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2014.

The Center appointed Ladislav Jakl as the sole panelist in this matter on January 29, 2014. 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 Sanofi is a French multinational pharmaceutical company headquartered in Paris. One of the largest multinational pharmaceutical company by prescription sales. Sanofi engages in research and development, manufacturing and marketing pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication. Sanofi is a multinational company settled in more than 100 countries on all 5 continents employing 110,000 people. The Second Complainant AVENTISUB II Inc. of Greenville, Delaware, US, is in the field of respiratory and allergy diseases and develops and sells utility drugs under various trademarks, including ALLEGRA, which treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat. ALLEGRA is marketed in more than 55 countries including the US and Canada. The Complainant is the owner of the Canadian trademark ALLEGRA No. TMA 492711, priority date June 2, 1995 and registered on April 9, 1998, in class 5; Canadian trademark ALLEGRA–D No. TMA 542661, filed on March 9, 1998 and registered on March 19, 2001, in class 5; US trademark ALLEGRA No. 2067728, filed on June 2,1995 and registered on June 3, 1997 in class 5 and US trademark ALLEGRA-D No. 2157669, filed on November 1, 1996 and registered on July 22, 1997, in class 5 (Annex 9 to the Complaint).

Moreover, the Complainant is the owner of the domain name <allegra.com>, registered on June 4, 1998 and <allegra.us>, registered on April 19, 2002.

The disputed domain name was registered on October 3, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name <allegra-store.com> identically reproduces the ALLEGRA trademarks and domain names, which as themselves do not have any particular meaning and are therefore highly distinctive. The reproduction of the Complainant’s trademarks and domain names as the attack and dominant part of the disputed domain name <allegra-store.com> is confusingly similar to these trademarks, regardless of the adjunction of the generic term “store”, which obviously refers to an online shop and constitutes as such a common English word remains insufficient to avoid confusing similarity. On the contrary, it merely suggests to Internet users that the disputed domain name offers for sale the Complainant’s products (Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903; Hoffmann-La Roche Inc. v. ML, Matt Leavsi / Whois Guard, WIPO Case No. D2012-0587; Rockefeller & Co.Inc. v. All Value Network a/k/a AVN, WIPO Case No. D2011-1957). The adjunction of the term “store” with the hyphen placed after the trademark ALLEGRA in the disputed domain name is undoubtedly insufficient to alleviate the likelihood of confusion between the Complainant’s trademarks and domain names and the disputed domain name <allegra-store.com> registered by the Respondent. The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and domain names.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that it is obvious that the Respondent does not have legitimate interests in using the disputed domain name since the name “Nikolay Fedotov” does not bear any resemblance with the word “Allegra”, which has no meaning and is therefore highly distinctive. The Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant. Moreover, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the Complainant’s trademarks. Consequently, there is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainant’s trademarks and domain names for its own use and incorporated them into his domain name without the Complainant’s authorization. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in accordance with paragraph 4(c)(I) of the Policy. Further, the Complainant contends that the disputed domain name is leading to a competing website which offers for sale pharmaceutical products and delivers inaccurate information on the Complainant’s products and consequently disparages its well-known trademarks. The disputed domain name has therefore been registered only for the purpose of unfairly attracting the Complainant’s consumers, as it is clearly revealed on the Respondent’s web page, reference made to the Respondent’s support made to Internet users to “buy generic Allegra with no rx needed” as well as to the allusive affiliation between the Respondent and the Complainant through the headline “Allegra (Fexofenadine Hcl) online”. The Complainant contends that the disputed domain name was registered for the sole purpose of misleadingly diverting consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant and that none of which is, in fact, the case. Such misleading consequences should be considered indicative of bad faith on the part of the Respondent. In addition, the Complainant argues that this cybersquatting behavior in itself tarnishes the Complainant’s well-known trademarks, domain names and goodwill by making Internet users presume the purchasing of “generic Allegra with no rx needed”, is somewhat approved and endorsed by the Complainant. The Respondent has therefore clearly adopted the Complainant’s trademarks and domain names for its own use and incorporated them into his domain name in order to confuse Internet users into believing that the Respondent is linked to Complainant, which in any case does not constitute a bona fide offering of goods and services. In this connection, the Complainant refers to a series of UDRP decisions (Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v.Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD,WIPO Case No. D2006-0340; Brink´s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353; and Sanofi-Aventis v. Finance Credit Lleida SL / Registration Private Domains by Proxy, Inc., WIPO Case No. D2011-0567). Finally, the Complainant refers that the Respondent did not reply to its cease and desist letter dated November 15, 2013 and argues that in such a case the Respondent has no rights or legitimate interests in the disputed domain name (Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230; and Pfizer Inc. v. Vladyslav Rybak, WIPO Case No. D2012-1838). Under these circumstances, the Complainant concludes that the both absence of any permission by the Complainant and the lack of legitimate reason in the use of the disputed domain name prove that the the Respondent has no rights or legitimate interests in respect of the disputed domain name <allegra-store.com>.

Furthermore, the Complainant argues that the Respondent has registered the disputed domain name in bad faith since he does not have any legitimate interests in registering or in using the disputed domain name since the name “Nikolay Fedotov” does not bear any resemblance with the word “Allegra”, which has no meaning and is therefore highly distinctive. The Respondent has neither prior right nor legitimate interest to justify the registration or use of the already well-known and worldwide trademarks and domain names of the Complainant and therefore the absence of legitimate interest somewhat induces that of good faith. The Complainant further contends that the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the Complainant’s trademarks and domain names and the disputed domain name <allegra-store.com> not only as to source, but as to possible affiliation, connection, sponsorship, association, and/or approval between the Complainant and respondent who simply could not have ignored the Complainant’s existence on registering the disputed domain name. Furthermore, the Complainant recalls that he is the owner of ALLEGRA trademarks which are worldwide well known and different domain names reproducing the distinctive term “Allegra”. The Complainant refers to numerous UDRP decisions which have recognized the reputation of the Complainant’s trademarks. The Complainant further contends that the Respondent, at the time he registered the disputed domain name, had actual notice as to Complainant’s trademarks and that it suggests that the Respondent acted with opportunistic bad faith in having registered the disputed domain name in order to make an illegitimate use. The disputed domain name is also being used for the purpose of disrupting the Complainant’s business through the attraction of Internet users to the Respondent’s website by creating a likelihood of confusion between ALLEGRA trademarks and domain names and the disputed domain name <allegra-store.com> not only as to source, but as to possible affiliation, connection, sponsorship, association, and/or approval between the Complainant and Respondent. The Respondent’s use in bad faith is, according to the Complainant’s meaning, all the more characterized by the website’s structure which delivers inaccurate information on the Complainant’s Allegra products and offers pharmaceutical products for sale, thus directly competing with the Complainant’s activities. Once again the Complainant refers to a cease and desist letter in which explained that the use of the disputed domain name constituted a breach of the Complainant’s prior rights over the trademarks ALLEGRA and requested the immediate transfer of the disputed domain name, however, the Respondent did not even answer. The Respondent’s failure to express any denial or explanation despite the opportunity offered to him reinforces the inference of bad faith registration and bad faith use (Sanofi-Aventis v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, WIPO Case No. D2009-1634). The Complainant concludes that the disputed domain name <allegra-store.com> was registered and used intentionally with bad faith without any rights or legitimate interests by the Respondent.

In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel appointed in this administrative proceeding to issue a decision that the disputed domain name <allegra-store.com> be cancelled.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Preliminary Issue: Language of the Proceedings

The Panel notes that the language of the registration agreement for the disputed domain name is Russian. The Complainant filed its Complaint in English and submitted a request for English to be the language of the proceedings. The Respondent did not provide any comments in this regard. The Center communicated with the parties in both English and Russian.

According to paragraph 11(a) of the Rules, the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Panel, taking into account the circumstances of this case, and a number of previous UDRP cases (Mammut Sports Group AG v. Deminzheng, WIPO Case No. D2011-0475; BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceeding is English.

B. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

C. Identical or Confusingly Similar

There is no doubt that the disputed domain name <allegra-store.com> incorporates the Complainant’s trademarks ALLEGRA and domain names. The adjunction of the term “store“ with the hyphen placed after the trademark ALLEGRA in the disputed domain name is insufficient to eliminate the likelihood of confusion between the Complainant’s trademarks and domain names and the disputed domain name <allegra-store.com> registered by the Respondent. Such a combination of the Complainant’s trademark and the generic term does not avoid the confusing similarity (Davidoff & Cie SA v. Paul Darnell o/b/o Cuban Cigars International, NAF Claim No. 97331). The mere addition of the element “store” to the Complainant’s mark does not adequately distinguish the disputed domain name from the Complainant’s mark, pursuant to the Policy, paragraph 4(a)(i) (Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717). Moreover, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and such suffix is therefore irrelevant to determining the confusing similarity between the trademark ALLEGRA and the disputed domain name. The mere addition of the gTLD “.com” is irrelevant because it is not a distinctive element when assessing whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks (Accor v. Noldc Inc, WIPO Case No. D2005-0016; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). The Panel accepts the general principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone (Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310).

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

D. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate:

(i) before the Respondent obtained the notice of the dispute, had not used of, or had not made demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was not 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.

The Panel accepts the arguments of the Complainant that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in accordance with paragraph 4(c)(i) of the Policy. In the Panel’s assessment, the disputed domain name has been registered only for the purpose of unfairly attracting the Complainant’s consumers, as it is clearly revealed on the Respondent’s website, reference made to the Respondent’s support made to Internet users to “buy generic Allegra with no rx needed” as well as to the allusive affiliation between the Respondent and the Complainant through the headline “Allegra (Fexofenadine Hcl) online”. It is also necessary to accept the Complainant’s arguments that the Respondent does not have legitimate interest in using the disputed domain name since the name zRespondent “Nikolay Fedotov” does not bear any resemblance with the word “Allegra”, which has no meaning and is therefore highly distinctive. The Respondent did not establish rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy as the Complainant has exclusive rights for ALLEGRA and that no license, authorization or consent was granted to the Respondent to use ALLEGRA in the disputed domain name. The mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). In the Panel’s view, it is obvious that the Respondent uses disputed domain name for commercial gain and with the purpose of capitalizing on the Complainant’s trademark and that the disputed domain name clearly alludes to the Complainant. According to the available record, the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation, or endorsement of the website or of a product available at the website. It is necessary to accept the arguments of the Complainant that the Respondent’s use of the disputed domain name to misdirect consumers is not a bona fide offering of goods or services, and therefore does not constitute a legitimate noncommercial or fair use of the disputed domain name under the Policy (Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

E. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.

The Panel accepts the arguments of the Complainant that the disputed domain name is being used in bad faith, as at the time of its registration, the Respondent had undoubtedly knowledge of the Complainant’s well-known trademarks ALLEGRA. The disputed domain name was registered on October 3, 2011, while the Complainant’s ALLEGRA trademark was first registered on June 3, 1997.. Moreover, the Complainant is the owner of the domain name <allegra.com>, registered on June 4, 1998 and <allegra.us>, registered on April 19, 2002. In the Panel’s view, there is no doubt that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and disrupt its business. The Respondent, by registering disputed domain name containing the Complainant’s well-known trademarks, is attempting to attract, for commercial gain through the sale of products relating to the Complainant’s, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location. The Respondent’s use in bad faith is also characterized by the website’s structure which delivers inaccurate information on the Complainant’s ALLEGRA products and offers pharmaceutical products for sale, thus directly competing with the Complainant’s activities. Furthermore, the Complainant’s cease and desist letter, in which it explained to the Respondent that the use of the disputed domain name constituted a breach of the Complainant’s prior rights over the trademarks ALLEGRA and requested its immediate transfer to which the Respondent did not reply, reinforces the inference of bad faith registration and use of the disputed domain name (Sanofi-Aventis v. Above.com Domain Privacy/Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634).

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <allegra-store.com> be cancelled.

Ladislav Jakl
Sole Panelist
Date: February 9, 2014