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WIPO Arbitration and
Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero
Case No. D2004-0094
1. The Parties
The Complainant is Aventis Pharmaceuticals Inc., Bridgewater, New Jersey, United States of America and Aventis Pharma SA, Antony, France, represented by Carole Asenci, France.
The Respondent is Goldie Fishero, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cheap-nasacort-on-line.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2004. On February 4, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom failed to submit a verification response however. Therefore, the Center made a Whois printout on February 6, 2004, which showed that the disputed domain name was registered with eNom, and that the Respondent was the current registrant of the disputed domain name. 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 this proceeding began on February 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2004. Per paragraph 5(e) of the Rules, in the face of the Respondent’s default and in the absence of exceptional circumstances, the Panel will decide this Case based on the Complaint alone.
The Center appointed Dennis A. Foster as the Sole Panelist in this matter on March 3, 2004. 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 markets a wide range of patented prescription drugs to treat patients with serious diseases in a number of therapeutic areas, including respiratory/allergy, cardiology/thrombosis, oncology and diabetes.
In the field of respiratory and allergy diseases, the Complainant has developed a drug used to treat allergic rhinitis which it sells throughout the world under the trademark NASACORT (Complaint Annex 3).
The Complainant owns many NASACORT trademark registrations, including: European trademark no.002303493 registered in 2001 (Complaint Annex 4-2); Canadian trademark No. TMA 421499 registered on December 24, 1993, (Complaint Annex 4-5); and United States trademark registration No. 1,538,836 dated May 16, 1989, (Complaint Annex 4-1). All these trademarks are in international class 5 for prescription drugs.
After registering the disputed name <cheap-nasacort-on-line.com> on March 26, 2003, the Respondent began offering an on-line prescription drug service at this website.
5. Parties’ Contentions
- In the field of respiratory and allergy diseases, the Complainant has developed and sells throughout the world under the trademark NASACORT a drug with demonstrated utility for treating allergic rhinitis.
- The Complainant registered the domain name <nasacort.com> on March 8, 1997, and set up an information website there (Complaint Annexes 5/6).
- The disputed domain name is confusingly similar to the Complainant’s trademark NASACORT, as the prefix "cheap" and the suffix "on-line" are made up of generic terms, which are not apt to influence significantly the overall impression produced by the disputed domain name. Therefore, the terms Cheap-Nasacort-On-Line and the trademark NASACORT are visually and phonetically similar, and this creates a risk of public confusion.
- The Respondent does not have any legitimate interest to use the domain name <cheap-nasacort-on-line.com>. At Respondent’s disputed domain name website (Complaint Annex 6), the Respondent advertises an on-line prescription services business.
- Thus there is no doubt that by using the disputed domain name, the Respondent intentionally attempted to attract for financial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the registrant’s websites or of the products or services on the registrant’s websites.
- Respondent has not been authorized to use the Complainant’s NASACORT trademark.
- There is no relationship between Complainant and Respondent.
- Respondent undoubtedly was aware of the Complainant and its trademarks when Respondent registered the disputed domain name.
- The Complainant has used the NASACORT trademarks worldwide since the 1980’s.
- Respondent seeks to confuse and attract the public for commercial gain.
- Respondent’s unauthorized reproduction of Complainant’s trademarks creates confusion for consumers as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
- The disputed domain name, <cheap-nasacort-on-line.com>, should be transferred to the Complainant (Aventis Pharmaceuticals, Inc.).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must show the following per the Policy, paragraph 4(a)(i-iii):
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has exhibited several of its NASACORT trademark registrations in various countries such as European trademark No. 002303493 registered in 2001 (Complaint Annex 4-2); or Canadian trademark No. TMA 421499 registered on December 24, 1993, (Annex 4-5); or United States, location of the Respondent, registration No. 1,538,836 dated May 16, 1989, (Complaint Annex 4-1). The Complainant’s trademarks were registered in international class 5 for pharmaceutical products.
The disputed domain name <cheap-nasacort-on-line.com> contains, in addition to the Complainant’s NASACORT trademark, the word "cheap" and the phrase "on-line." The first is descriptive of the drug Nasacort while the second is a logical, generic add-on in the context of the Internet. In sum, the Respondent’s disputed domain name is saying the Respondent sells the Complainant’s trademarked drugs cheaply on the Internet.
Other panels have reached similar results in this fact situation. In one instance
where the disputed domain name was <4microsoft2000.com>, the Panel stated:
"Therefore, the Sole Panelist finds that the matter in the Domain Name
other than the Microsoft mark is non-distinctive and descriptive." Microsoft
Corporation v. J. Holiday Co., WIPO Case
No. D2000-1493, February 20, 2000.
The Panel thus finds the disputed domain name, <cheap-nasacort-on-line.com>, is confusingly similar to the Complainant’s NASACORT trademark, and that the Complainant has carried its burden of proof under Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant avers that the Respondent is not authorized to use the Complainant’s
NASACORT trademark. Indeed, the Complainant asserts there is no business relationship
whatsoever between the Complainant and the Respondent. For its part, the Respondent
is in default in this proceeding and has chosen not to come forward to attempt
to show rights or legitimate interests in the disputed domain name as allowed
by the Policy under paragraph 4(c)(i-iii). Since the Complainant has made
out a prima facie case, and the Respondent has not come forward
with a response, the Panel finds the Complainant has carried its burden of proof
under Policy paragraph 4(a)(ii). (On the Complainant’s and the Respondent’s
burdens of proof in this situation, see Cornell Trading Inc. v. Web-Interactive.com
Inc., WIPO Case No. D2000-0887, October 11, 2000;
and Tremco Incorporated v. IA Consulting, Inc., WIPO
Case No. D2003-0997, February 23, 2004).
C. Registered and Used in Bad Faith
The Complainant has shown that it has been marketing its NASACORT trademark products around the world since the 1980’s. Furthermore, the Complainant has operated a website using the NASACORT trademark since March 8, 1997, (<nasacort.com>). Thus, the Panel is convinced that, as the Complainant argues, the Respondent was well aware of the notoriety of the Complainant’s trademark when the Respondent registered the disputed domain name on March 26, 2003.
Likewise, the Panel is convinced the Respondent registered the disputed domain name in order to make the public think it was the Complainant marketing the Complainant’s well-known NASACORT pharmaceutical. The Respondent hoped to sell not only the Complainant’s NASACORT pharmaceutical in this manner, but also other drugs, all in violation of Policy paragraph 4(b)(iv): "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Panel thus finds the Complainant has carried its burden of proof under
Policy paragraph 4(a)(iii) to show that the Respondent registered and is
using the disputed domain name in bad faith.
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 <cheap-nasacort-on-line.com> be transferred to the Complainant (Aventis Pharmaceuticals Inc.).
Dennis A. Foster
Dated: March 16, 2004