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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis Pharmaceuticals Products Inc., and Merrell Pharmaceuticals Inc.
PBS Publishing, LLC
Case No. D2002-0343
1. The Parties
Complainants are Aventis Pharmaceuticals Products Inc., and Merrell Pharmaceuticals Inc., corporations organized under the laws of the United States of America, both companies having their registered offices at 300 Somerset Corporate Boulevard, Bridgewater 08807, New Jersey, United States of America and both represented by Maître Patrice de Candé, ("Complainant").
Respondent is PBS Publishing, LLC, a corporation organized under the laws of the United States of America, having its registered offices at 400 E. 71st Street, #9E, New York, NY 10021, United States of America, ("Respondent").
2. The Domain Names and Registrar
The domain names at issue are <allegrad.com>, <allegra-d.com>, <nasocort.com>, <nasocortaq.com>, <nasacortaq.com> and <asthmacort.com>.
The Registrar is Namesecure.com, having its postal address as 2135 Ridgetop Circle, Dallas, VA 20160, United States of America ("the Registrar").
3. Procedural History
The Complaint was submitted electronically to the WIPO Arbitration and Mediation Center ("the Center") on April 10, 2002. The hardcopy under cover of a letter of the same date was received on April 17, 2002 ("the Complaint"). An Acknowledgement of Receipt was sent by the Center to Complainants on April 15, 2002.
On April 15, 2002, a Request for Register Verification was transmitted to the Registrar. On April 26, 2002, the Registrar confirmed by e-mail that the disputed domain names were registered with the Registrar and that Respondent is the current registrant of those domain names.
On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline of May 20, 2002, by which Respondent could make a response to the Complaint.
On May 17, 2002, Respondent emailed its Response to the Center. A hard copy of the Response was received by the Center on May 22, 2002.
On May 21, 2002 the Center sent an Acknowledgment of Receipt of Response to Respondent.
On May 29, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Mr. H.W. Wefers Bettink was appointed as the Sole Panelist.
On June 5, 2002 Complainants submitted a supplement to their Complaint. This document has not been accepted by the Panel. On June 5, 2002, the Center notified both parties of this decision.
4. Factual Background
Complainants are the owner of the trademarks NASACORT, AZMACORT, ALLEGRA and ALLEGRA-D registered in several countries, among which the United States, for pharmaceutical products (US trademark registration numbers 2 008 763 (1989); 1 525 186 (1989); 2 067 728 (1997); and 2 157 669 (1998)).
Complainants have developed, and sell worldwide, drugs marketed under the trademarks NASACORT and AZMACORT for the treatment of allergic rhinitis and asthma. Complainants also offer drugs for sale under the trademarks ALLEGRA and ALLEGRA-D for the treatment of allergic rhinitis.
The domain names at issue were registered by Respondent on respectively June 4, 2000 (<nasocort.com>); June 6, 2000 (<nasocortaq.com>); July 3, 2000 (<nasacortaq.com> and <astmacort.com>) and November 30, 2000 (<allegrad.com> and <allegra-d.com>).
On July 24, 2001 one of the Complainants contacted Respondent by email requesting the transfer of the domain names at issue. On July 24, 2001, Respondent replied by email. Complainants and Respondent did not reach a settlement.
On April 10, 2002, Complainants filed a Complaint by the Center.
5. Applicable Rules
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interest to the domain name for the purpose of Paragraph 4(a) (ii) above.
6. Parties’ Contentions
Complainants are nowadays leaders of the pharmaceutical brands. In the field of respiratory and allergy diseases, Complainants have developed and sell world-wide under the trademarks NASACORT and AZMACORT two drugs used for the treatment of allergic rhinitis and asthma. Complainants also offer under the trademarks ALLEGRA and ALLEGRA-D drugs for the treatment of allergic rhinitis.
All relevant information regarding these products is available on the websites <www.nasacort.com>, <www.azmacort.com> and <www.allegra.com>.
Complainants states that the domain names at issue are identical or confusingly similar to their trademarks. The minor differences in some of the domain names are not enough to avoid the risk of confusion.
Complainants further submit that Respondent has no rights or legitimate interests in respect of the domain names at issue.
Respondent is the owner of the website <www.pbspublishing.com>. On this website it is stated that PBS Publishing is "a conglomeration of business for the advancement of business systems and computer solutions."
The domain names at issue link to homepages describing the specification of the corresponding drugs sold by Complainants. This linkage has absolutely no relation to the activities of Respondent. The absence of rights or legitimate interest of Respondent in respect of the domain names is therefore demonstrated.
Furthermore, Complainants submit that Respondent has registered and uses the domain names at issue in bad faith. Respondent was undoubtedly aware, at the time of the registration of the domain names at issue, of the existence of Complainants’ trademarks. This knowledge is proven by the fact that the domain names at issue are used in reference to Complainants’ trademarks and is further supported by Respondent’s email of July 24, 2001, in which is stated:
"My partner and I regularly subscribe these medications to nearly all of our patients."
The domain names at issue are used to present Complainants’ products which leads to a risk of confusion. All the domain names at issue are directly linked to another website, which is a medical site specializing in allergies. This website contains a catalogue of drugs known for their use against allergies and offers visitors a diagnosis of a possible allergy. The domain names at issue link to homepages of the aforementioned website on which the trademarks of Complainants are reproduced exactly as they appear on the packaging of the drugs sold by Complainants. The reproduction of Complainants’ trademarks, without any authorization by Respondent, creates confusion for consumers with the official products of Complainants. The consumer is led to believe that there is an official affiliation between Respondent and Complainants.
Moreover, the domain names at issue were registered and are being used for commercial purposes. All the domain names at issue are linked to websites, which link to another website (<www.tactent.com>), also registered by Respondent, at which website Respondent offers for sale different accessories for allergy needs.
By using the trademarks of Complainants, Respondent intends to benefit financially from the renown associated with Complainants’ trademarks.
After being summoned by Complainants to transfer the domain names to them, Respondent offered to sell the domain names at issue to Complainants for an amount exceeding the expense of registration i.e. for an amount of USD 5,000.
Respondent is a limited liability company established and owned by David Melamed. Respondent is a conglomeration of various businesses operating throughout North America. David Melamed is a licensed physician and has been practicing medicine and surgery in the United States since 1990. The focus of his medical practice is on allergy, asthma and immunology. His medical practice is also managed by Dr. Nejat. Melamed and Nejat have acquired the services of PBS Publishing for the registration and design of their medical domain names and websites.
Melamed and Nejat use their medical websites to provide medical education and information to patients. On the website <allergyasthmatherapy.com> Respondent gives not-for-profit information to patients seeking specific information on drugs, therapies and conditions. On <tactent.com> Respondent offers for sale the medical equipment patients need and use. At Respondent’s website <nyallergy.com> patients can access appointments, medical data etc. Respondent states that Complainants’ websites <azmacort.com>, <nasacort.com> and <allegra.com> present biased drug information without attention to alternative drugs, the disadvantages of therapy and with no regard to full disclosure in order to benefit the patients. Respondent has registered and is using the domain names in question in the capacity of a medical doctor, with license to prescribe these medications, in order to communicate unbiased and relevant patient educational information concerning Complainants’ drugs.
Respondent admits that the domain names at issue are similar to the trademarks held by Complainants. The intent of Respondent is not to confuse patient-consumers, but rather to educate them by providing them with accurate information. All Respondent’s websites are described as "Patient Education and Information Sites".
Respondent submits that it has rights and a legitimate interests in respect of the domain names in question, since Complainants have on numerous occasions delivered dozen of samples to Respondent’s offices. Complainants have made every effort to encourage Respondent to write appropriate prescriptions for their products. This relationship has in fact made Respondent an "authorized representative" to represent, distribute and prescribe the medications manufactured by Complainants. Therefore, Respondent has the right to use the domain names at issue in connection with a bona fide offering of services.
Furthermore, Respondent submits that it has been making a legitimate non-commercial use of the domain names at issue, without intent for commercial gain, to misleadingly divert customers or to tarnish the trademark or service mark at issue.
According to Respondent, Complainants want control of Respondent’s registered domain names in order to deprive patients of the information given by Respondent and to be the sole promoter of their drugs. Complainants have made numerous offers to purchase the domain names at issue. In a letter dated February 5, 2002, Complainants offered to pay Respondent USD 5,000. This letter was accompanied by a domain name assignment contract to be signed by Respondent. The contract required Respondent "not to use any trademarks in a domain name or in the content of its website in the future". As a medical practitioner, Respondent has the legal right to provide medical and drug information to his patients. Respondent could therefore not accept the above-mentioned requirement in the contra
The domain names have not been registered and are not being used in good faith by Respondent. Respondent has not registered or acquired the domain names for the purpose of selling, renting or otherwise transferring the domain names in question to Complainants, or a competitor of Complainants. Nor has Respondent registered the domain names to prevent Complainants from using their marks in a corresponding domain name. Furthermore, Respondent has not registered the domain names with the intention of disrupting Complainants’ business.
Respondent is not using the domain names in question for commercial use or gain. Respondent has a right to provide medical and drug information to his patients without the bias or influence of drug manufacturers such as Complainants.
Furthermore, Respondent has never approached Complainants with an offer to sell, rent or transfer the domain names for valuable consideration in excess of his out-of-pocket costs directly related to the domain names in question. Complainants have offered to purchase the domain names at issue for USD 5,000. Respondent expressed a willingness to transfer the registered domain names, but did not agree to the clause in the domain name assignment contract, drafted by Complainants, which required Respondent to refrain from using Complainants’ trademarks in the content of his website in the future.
7. Discussion and Findings
Complainants must provide evidence of all elements of Paragraph 4(a) of the Policy.
a. Trademark Rights
Complainants have provided sufficient evidence of their rights to the trademarks NASACORT, AZMACORT, ALLEGRA and ALLEGRA-D.
b. Identical or Confusingly Similar
<nasacortaq.com>, <nasocort.com>, <nasocortaq.com>
The domain names <nasocort.com>, <nasocortaq.com> and <nasacortaq.com> are clearly confusingly similar to Complainants’ trademark NASACORT. The suffix ".com" indicates that the domain name is registered in the .com gTLD. The domain name <nasacortaq.com> incorporates the trademark NASACORT with the addition of the suffix "aq". The suffix "aq" is a pharmaceutical abbreviation meaning "aqueous". It is clear that the distinctive trademark NASACORT is the most prominent element in this combination, and that this may cause the public to think that this domain name is somehow connected to the NASACORT trademark. The ability of the suffix "aq" to distinguish the domain name from Complainants’ trademark is limited. The Panel finds that Respondent does not create a new or different mark in adding the suffix "aq" and that this addition does not alter the likelihood of confusion with Complainants’ trademark.
The only difference between the domain name <nasocort.com> and Complainants’ trademark NASACORT is the letter O, which replaces the letter A. The latter change does not prevent the public from thinking that this domain name is somehow connected to the NASACORT trademark. The Panel finds that Respondent does not create a new or different mark in changing "nasacort" into "nasocort".
From the above follows that the domain name <nasocortaq.com> is also confusingly similar to Complainants’ trademark NASACORT.
The domain name <asthmacort.com> is clearly confusingly similar to Complainants’ trademark AZMACORT,the only difference - apart from the suffix .com - being the replacement of the letter Z with the letters STH, which letters are phonetically similar. The Panel finds that Respondent does not create a new or different mark with this irrelevant change and that this addition does not alter the likelihood of confusion with Complainants’ trademark.
<allegrad.com> and <allegra-d.com>
The domain name <allegra-d.com> is - apart from the suffix .com - identical to the Complainant’s trademark ALLEGRA-D.
The domain name <allegrad.com> is confusingly similar to Complainants’ trademark ALLEGRA and ALLEGRA-D. The only difference between the domain name and the trademark ALLEGRA-D is that in the domain name the hyphen between "allegra" and the letter "d" is left out. The Panel finds that this change does not create a new or different mark and does not alter the likelihood of confusion with Complainants’ trademarks ALLEGRA and ALLEGRA-D.
c. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Paragraph 4(a)(ii) of the Policy, inter alia, by providing evidence of any of the following circumstances:
"(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In order to support its claim to an own right or legitimate interest, Respondent has put forward two arguments:
(a) It is an "authorized" representative of the Complainants;
(b) It is making a non-commercial fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the trademarks of Complainants.
From the website prints submitted by Complainants and Respondent and from the Panel’s own observation of the websites operated under the domain names at issue, it is clear that Respondent has linked all the domain names at issue to a website under the domain name <allergyasthmatherapy.com>, on which information is provided on drugs and therapies, including information on Complainants’ products Nasacort, Azmacort and Allegra-D. The Panel observes that the mere fact that Respondent is an authorized representative of Complainant – leaving aside whether this is an adequate description of a doctor receiving delivery of and prescribing certain brand drugs to his patients – does not in itself give Respondent an own right or legitimate interest in the (registration and use of) the domain names corresponding to the trademarks involved. Such an own right or legitimate interest would exist if Respondent shows that Complainant has given its consent or a license to Respondent for registration of the domain names at issue. This however, is not the case. (See also e.g. Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (October 18, 2001) and cases cited there).
Respondent creates confusion by suggesting an affiliation with or authorization from Complainants both through the domain names themselves, and by prominently displaying images of the original packaging of the drugs sold by Complainants under the trademarks NASACORT, AZMACORT and ALLEGRA. The addition of a disclaimer on Respondent’s websites does not alter this: "The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion." (See also Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (September 25, 20002), <estelauder.com> and <estelauder.net>.)
In relation to Respondent’s second argument - in fact the ground contained in Paragraph 4 (c)(iii) of the Policy - the Panel observes, first, that the public that is familiar with Complainants' trademarks - which is the public most likely to search for these websites - will expect to find under the domain names at issue one or more websites of Complainants with information on their products.
The fact that Respondent is using these domain names for its own websites instead, will therefore misleadingly divert customers to Respondent’s websites under the domain name <allegryasthmatherapy.com>. Respondent has admitted that this is done with intent but emphasizes that it is not done for commercial gain, since the website merely provides not-for-profit information on Complainants’ drugs involved. The Panel does not accept this argument, since:
- Complainants’ trademarks which Respondent uses in the domain names at issue concern drugs used for certain types of allergy and asthma;
- Respondent operates a medical practice focused, inter alia, on allergy and asthma;
- As appears from documents submitted by Complainants and not contested by Respondent, at the time of the submission of the Complaint, Respondent's website under <allergyastmatherapy.com> - to which the domain names at issue lead - contained the logo of the NY Allergy and Sinus Centers, which linked to a commercial website of Respondent, under <nyallergy.com> where patients could make appointments with Respondent's practice. The website under <nyallergy.com> linked to another commercial website of Respondent under <tactent.com>, where patients could order all kinds of products for their allergy needs;
- the link from the website <allergyasthmatherapy.com> to the commercial <nyallery.com> website has been disenabled apparently after the Complaint was filed;
- the homepage of each of the three websites still features the same photo collage with the question "Do you think you have allergies?" in the same characteristic typeface.
In light of the foregoing, the Panel finds that Respondent has no right or legitimate interest in the domain names at issue.
d. Bad Faith
Paragraph 4(b) of the Policy states - by way of example - four circumstances, each of which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel points out that the circumstances as indicated under Paragraph 4(b) of the Policy are examples of evidence of registration and use of a domain name in bad faith. These examples are not exhaustive. Other circumstances can also provide evidence of the registration and use of a domain name in bad faith.
Respondent has registered the trademarks of Complainants or names confusingly similar to Complainants’ trademarks as domain names, while it was aware of Complainants’ trademarks. As set out above, Respondent uses those domain names to lead Internet users to its website under <allergyasthmatherapy.com>. Furthermore, Respondent displays on that website the original packaging of Complainants’ products sold under the trademarks, and provided, until recently, direct links (under the logos of company names) to commercial websites in which Respondent apparently has an interest. In so doing, Respondent has intentionally attempted to attract Internet users to his websites, by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the website under these domain names. By registering six domain names that are identical or confusingly similar to Complainants’ trademarks Respondent clearly has engaged in a pattern of such conduct.
The Panel concludes, in light of the foregoing, that there is sufficient evidence that Respondent’s registration and use of the domain names at issue have been made in bad faith.
On the basis of the foregoing, the Panel decides that Complainants have provided the required evidence to request the transfer of the domain names at issue from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration of the domain names <nasocort.com>, <nasocortaq.com>, <nasacortaq.com> and <asthmacort.com> be transferred to Aventis Pharmaceuticals Products Inc., and the domain names <allegrad.com> and <allegra-d.com> be transferred to Merrell Pharmaceuticals Inc.
Wolter Wefers Bettink
Dated: June 12, 2002