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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AstraZeneca AB v. Alvaro Collazo

Case No. D2005-0367

 

1. The Parties

The Complainant is AstraZeneca AB, Sцdertдlje, Sweden, represented by Groth & Co KB, Sweden.

The Respondent is Alvaro Collazo, Tarariras, Colonia, Uruguay.

 

2. The Domain Names and Registrar

The disputed domain names <astraseneca.com> and <aztrazeneca.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005.

On April 11, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue.

On April 12, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both of the domain names in issue.

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 by e-mail, and the proceedings commenced on April 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2005. A hard copy of notification was delivered to the Respondent on April 18, 2005, by courier

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2005.

The Center appointed James Bridgeman as the sole panelist in this matter on May 11, 2005. 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.

In the view of this Panel, proper procedures were followed and this Panel was properly constituted.

 

4. Factual Background

The company Astra AB was founded in 1913. In 1999, the Swedish company merged with Zeneca Group PLC in United Kingdom of Great Britain and Northern Ireland and the name was changed to AstraZeneca AB. The Complainant is one of the world’s leading companies that develops and sells pharmaceutical products. The corporate headquarters are based in London, United Kingdom of Great Britain and Northern Ireland and the R&D headquarters are located in Sцdertдlje, Sweden. The production and marketing takes place in over 100 countries around the world and the Complainant has about 64,000 employees. The Complainant provides medicines designed to fight disease in areas such as cancer, cardiovascular, gastrointestinal, infection, neuroscience and respiratory.

The Complainant, AstraZeneca AB, is directly or indirectly through subsidiaries, the legal owner of numerous registered trademarks being confusingly similar to the disputed domain names <astraseneca.com> and <aztrazeneca.com>. The registered trademarks upon which the Complaint is based are:

Registered trademark ASTRAZENECA in the United States of America with registration number 2,663,581, dated December 17, 2002, registered in the name of Astrazeneca Plc. a United Kingdom public company.

Registered Swedish trademark (word) ASTRA with registration number 55137, dated November 1, 1941, for the classes 1 and 5 registered in the name of the Complainant.

Registered Swedish trademark (word) ASTRA with registration number 115518, dated March 24, 1966, for the classes 1 to 42 registered in the name of the Complainant.

Registered Swedish trademark (word) ZENECA with registration number 260885, dated September 23, 1994, for the classes 1, 5, 10, 35, 41 and 42 registered in the name of AstraZeneca UK Limited.

Registered CTM trademark (word) ASTRA with registration number 000038604, dated March 19, 1998, for the classes 5 and 10 registered in the name of the Complainant.

Registered CTM trademark (word) ASTRAZENECA with registration number 001192137, dated October 6, 2004, for the classes 1, 2, 5, 10, 29, 35, 37, 39, 41 and 42, with priority dating back to 1998, from the US trademark registered in the name of Astrazeneca Plc. a United Kingdom public company.

In addition to the above, the Complainant also claims to have numerous ASTRAZENECA trademarks in various countries, including Uruguay trade mark registration number 313.155, dated February 16, 2000, the jurisdiction where the Respondent is established. No evidence of these registrations or their owners have been submitted by the Complainant.

There was no response filed, the only information available about the Respondent is that provided in the Complaint and from the WHOIS details provided by the registrar to the Center in response to the request for registrar verification. The domain name <aztrazeneca.com> was registered on June 27, 2003, and <astraseneca.com> was registered on June 16, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests that this Panel issue a decision that said domain names <astraseneca.com> and <aztrazeneca.com> be transferred to the Complainant.

The Complainant submits that the domain names <astraseneca.com> and <aztrazeneca.com> are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In this regard the Complainant refers to the above referenced registrations.

The disputed domain name <aztrazeneca.com> incorporates the trademark ZENECA in its entirety and the domain name <astraseneca.com> incorporates the trademark ASTRA in its entirety. Both the disputed domain names are confusingly similar to the trademark ASTRAZENECA in which the Complainant, AstraZeneca AB, has rights, save for the TLD “.com”.

The Complainant submits that the Respondent has no rights or legitimate interests in either of the domain names in issue.

The Complainant submits that on January 12, 2005, the Complainant sent a letter via certified mail and via e-mail, requesting the Respondent to transfer the domain names to the Complainant. On January 13, 2005, the Respondent answered via e-mail to the Complainant and explained that the domain names were free and that is why he registered them. The Respondent offered to transfer the domain names for a fee of USD$ 270. The Complainant replied on January 14, 2005, stating that the Complainant would not pay a ransom fee in order to use the domain names that are confusingly similar to the Complainant’s trademark. No further answer was received from the Respondent. On February 14, 2005, the Complainant sent a reminder via e-mail but received no answer from the Respondent.

To the best of the Complainants’ knowledge, the Respondent is not an owner of any trademark, service mark or name similar to the domain names in question. The Respondent’s answer dated January 13, 2005, which contains no information or indication of any such rights, further implies the lack of such rights. It is therefore the opinion of the Complainant that the Respondent has no rights or legitimate interests in respect of the domain names <astraseneca.com> and <aztrazeneca.com>.

The Respondent is not using the domain names in connection with a bona fide offering of goods or services. The domain name <astraseneca.com> is currently redirected to the domain name <aztrazeneca.com> where the Respondent has created a commercial website containing sponsored commercial hyperlinks within the pharmaceutical area. The website also contains various commercial pop-up advertisements. The Complainant has provided printouts from the Respondent’s website connected to which the disputed domain names resolve.

The Complainant believes that the Respondent is taking unfair commercial advantage of the goodwill associated with the trademark by having accidental Internet traffic redirected to a commercial website containing advertisements within the pharmaceutical area. The Respondent is misleading and diverting consumers that search for the Complainant’s trademark on the Internet. The above-mentioned behaviour of registering a misspelled trademark as a domain name is often referred to as “typosquatting”.

The Complainant further submits that said domain names were registered and are being used in bad faith.

The Complainant has continuously used the trademark ASTRAZENECA since 1999. The Complainant submits that because the trademark is used in over 100 countries, it is fair to say that the trademark is well known within the pharmaceutical area, the very same area in which the Respondent is actively using the disputed domain names for commercial gain.

The domain name <aztrazeneca.com> was registered on June 27, 2003, and the domain name <astraseneca.com> was registered on June 16, 2004.

Both domain names were registered several years after the Complainant started using the trademark ASTRAZENECA. It goes without saying that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain names since he uses them for a commercial website within the pharmaceutical area.

The Complainant submits that it wishes to emphasize that it is not the first time that the Respondent has registered domain names that are confusingly similar to registered trademarks. Previous domain name disputes where domain names have been transferred from the Respondent to other complainants include cases such as Sociйtй Air France v. Alvaro Collazo, WIPO Case No. D2004-0446; Bellsouth Intellectual Property Corporation v. Alvaro Collazo, WIPO Case No. D2004-0572; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787; Sociйtй Air France v. Alvaro Collazo, WIPO Case No. D2003-0417; TV Globo Ltda. v. Alvaro Collazo, WIPO Case No. D2003-1013; Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716; Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo, WIPO Case No. D2004-1095; Hewlett-Packard Company v. Alvaro Collazo, NAF Claim Number: FA0302000144628; Bank of America Corporation v. Alvaro Collazo, NAF Claim Number: FA0403000248681; The Neiman Marcus Group, Inc. v. Alvaro Collazo, NAF Claim Number: FA0403000248954; Bank of America Corporation v. Alvaro Collazo, NAF Claim Number: FA0408000319586; Time Warner, Inc. v. Alvaro Collazo, NAF Claim Number: FA0410000338464; The Vanguard Group Inc. v. Alvaro Collazo, NAF Claim Number: FA0410000349074; and Wells Fargo & Company v. Alvaro Collazo, NAF Claim Number: FA0412000373882.

The Complainant submits that the Respondent has a well-documented history of previous domain name registrations being identical or confusingly similar to third party trademarks and that the behaviour of the Respondent constitutes a clear and deliberate pattern.

The Complainant submits that the Respondent is using the disputed domain names for his commercial activities with the intention of attracting financial gain or alternatively disrupting the business of the Complainant. The Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

Considering the fact that the disputed domain names are used for a commercial website within the pharmaceutical area and the fact that the Respondent has registered such a large number of domain names confusingly similar to third party trademarks, the Complainant submits that the Respondent must have been aware of the Complainant’s ASTRAZENECA trademark when registering and using the confusingly similar domain names <astraseneca.com> and <aztrazeneca.com> and that both the registrations and the use has been conducted in bad faith.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and

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

A. Identical or Confusingly Similar

The domain name in dispute is clearly confusingly similar to the ASTRAZENECA trademark.

While the Complainant itself is not the registered owner of the ASTRAZENECA trademark. Both the USA registration and the CTM registration of the ASTRAZENECA mark are registered in the name of a United Kingdom public limited company Astrazeneca Plc. The Complainant has registered the ASTRA trademark in Sweden and as a CTM and yet another entity AstraZeneca UK Limited is the registered owner of the ZENECA registrations.

The Complainant has nonetheless claimed that it is the owner of all these registrations either itself or through its subsidiaries. It makes this assertion without any evidence of its relationship with either Astrazeneca Plc or AstraZeneca UK Limited. On the other hand it would seem clear from the Complaint that the Complainant has common law rights in the use of the mark ASTRAZENECA as the Complainant has traded using this name since the mark was created following the merger in 1999, of Astra AB with Zeneca Group PLC to form AstraZeneca AB. The combination of these two words produces a distinctive name and mark.

This Panel accepts the Complainant’s submissions that the disputed domain name <astraseneca.com> incorporates the trademark ASTRA in its entirety and the domain name <aztrazeneca.com> incorporates the trademark ZENECA in its entirety.

Both of the disputed domain names are confusingly similar to the trademark ASTRAZENECA.

While these proceedings may have been more appropriately brought by Astrazeneca Plc., on the balance of probabilities the Complainant has established that it has rights in the ASTRAZENECA mark and in the circumstances the Complainant has succeeded in proving the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has shown that its group of companies has a worldwide reputation and there is little likelihood that the Respondent could have any rights or legitimate interest in these domain names that are so confusingly similar to the Complainants ASTRAZENECA trademark.

On January 12, 2005, the representative of the Complainant sent a letter to the Respondent stating inter alia that when the Respondent entered legal contracts to register the domain name, he explicitly guaranteed that the domain names would not violate third party rights, that the Complainant is the owner of the trademarks ASTRAZENECA, ASTRA and ZENECA, that the Complainant believed that the Respondent registered said domain names with the Complainant’s ASTRAZENECA trademark in mind and that the Respondent was taking unfair commercial advantage of the goodwill associated with the trademark by having accidental Internet traffic redirected to the site with numerous pop up advertisements.

In his replying e-mail on January 13, 2005, the Respondent effectively acknowledged that he had no rights or legitimate interest in the domain name in the following terms : “I am really sorry, I have not idea. The domain name were free and that is why I registered them. I am willing to transfer the domain if you cover my out of pocket expenses of $135 for each one.”

In the circumstances the Respondent has established the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The facts relating to the third element of the test are more troublesome.

The Complainant’s evidence is that in said e-mail on January 13, 2005, the Respondent has stated that he had no idea that he was not entitled to register these domain names and he offered to transfer them for his out of pocket expenses. The Complainant’s response was to refuse to accept this offer.

The question then arises, should the Complainant not have offered to pay these out of pocket expenses rather than initiate these administrative proceedings. In other words is the Respondent entitled to be paid $ 135 in respect of each of the registrations.

This Panel accepts the Complainant’s submissions that the Respondent has a well-documented history of previous domain name registrations being identical or confusingly similar to third party trademarks and it is fair to conclude that the behaviour of the Respondent constitutes a clear and deliberate pattern, nonetheless each case must be taken on its own merits.

In the present case, the evidence is that the Respondent was quite well aware of the provisions in the Policy. He has been involved in the above list of UDRP cases dating back to 2003.

The Respondent registered these domain names on June 27, 2003 and June 16, 2004.

The evidence is that at the time that the Respondent registered the first of these domain names on June 27, 2003, he would have been acutely aware of the provisions of the UDRP and its consequences. The case Sociйtй Air France v. Alvaro Collazo, WIPO Case No. D2003-0417, commenced on June 6, 2003, and the due date for Response was June 26, 2003. It is noteworthy that he did not submit a response in that case either.

While in many circumstances, it could be inappropriate for a party to reject a reasonable offer from a registrant to transfer a domain name for the out of pocket expenses, in the circumstances of the present case, the Complainant was quite correct in taking the view that his offer was disingenuous.

Given this lack of candour on the part of the Respondent, the distinctiveness of the Complainant’s mark, the fact that the Respondent was clearly aware of the Complainant’s reputation and goodwill when he registered the domain names and the fact that he has arranged for these domain names to resolve to a website that offers retail sales of pharmaceutical products, indicates that the Complainant is correct in alleging that the Respondent is intentionally attempting to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

It follows that the Respondent has registered and is using said domain names in bad faith and the Complainant has succeeded in proving all three elements of the test in paragraph 4(a) of the Policy and is therefore entitled to succeed in this application.

 

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 names <astraseneca.com> and <aztrazeneca.com> be transferred to the Complainant.


James Bridgeman
Sole Panelist

Dated: May 23, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0367.html

 

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