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WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SANOFI-AVENTIS , AVENTIS PHARMA DEUTSCHLAND GmbH v. WEB ADVERTISING, Corp

Case No. D2006-1273

1. The Parties

The Complainant is SANOFI-AVENTIS, of Gentilly Cedex, represented by Selarl Marchais De Candй, France.

The Respondent is WEB ADVERTISING, of Nassau, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <ambienwithdrawal.org> and <lantusinsulin.org> are registered with Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2006. On October 5, 2006, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain names at issue. On October 6, 2006, Capitoldomains, LLC 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 administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 17, 2006. The Center verified that the Complaint together with the amendment to 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 November 23, 2006. Due to technical difficulties regarding the email deliveries, the Center re-notified the Respondent of the commencement of the proceedings on January 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 13, 2007. 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 is a multinational group of companies comprising of Aventis Pharma Deutschland GmbH and Sanofi-Aventis present in more than 100 countries across 5 continents. The Complainant has a large portfolio of high-growth drugs including Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It enjoys established positions in fast-growth therapeutic fields such as cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines. The Complainant has developed and sold throughout the world:

(a) Under the trademark LANTUS a drug which provides a slow, steady release of insulin to help control blood glucose for patients suffering from diabetes.

(b) Under the trademark AMBIEN a drug which is indicated for the short-term treatment of insomnia.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant asserts that it is the owner of the following trademarks:

(a) LANTUS trademarks and domain name:

LANTUS International trademark No. 590 551 registered on August 31, 1992 in class 5;

LANTUS slogan Community semi-figurative trademark No. 001 704 642 registered on November 20, 2001 in class 5;

LANTUS UK trademark No. 1 511 636 registered on August 26, 1992 in class 5 and duly renewed;

LANTUS American trademark No. 2 183 182 registered on August 25, 1998 in class 5 and duly renewed;

LANTUS Canadian trademark No. 1 007 055 registered on March 3, 2003 in class 5;

LANTUS Mexican trademark No. 542 648 registered on February 26, 1997 in class 5;

LANTUS South African trademark No. 97/02165 registered on March 2, 2000 in class 5;

LANTUS OAPI trademark No. 40966 registered on May 7, 1999 in class 5;

The Complainant has also registered on August 3, 1998 the domain name <lantus.com> to present its particular line of products.

(b) AMBIEN trademarks and domain name:

AMBIEN International trademark No. 605 762 registered on February 19, 1993 in class 5, duly renewed;

AMBIEN French trademark No. 93 456 039 registered on February 19, 1993 in class 5 and duly renewed;

AMBIEN UK trademark No. 1 466 136 registered on May 31, 1991 in class 5 and duly renewed;

AMBIEN Irish trademark No. 149 250 registered on May 29, 1992 in class 5 and duly renewed;

AMBIEN American trademark No. 1 808 770 registered on July 12, 1993 in class 5 and duly renewed;

AMBIEN Australian trademark No. 761 307 registered on May 6, 1998 in class 5;

AMBIEN Chilian trademark No. 521 911 registered on September 16, 1998 in class 5.

The Complainant has also registered on April 12, 2000, the domain name <ambien.com> to present its particular line of products.

(i) LANTUS and lantusinsulin.org

The Complainant contends that it noticed that the Respondent has registered the domain name <lantusinsulin.org> on February 3, 2006. The Complainant asserts that the domain name <lantusinsulin.org> reproduces the trademark LANTUS in its entirety, which has no particular meaning and is therefore highly distinctive. The replication of the Complainant’s trademark LANTUS in its entirety as the dominant part of the disputed domain name is confusingly similar to its trademark. In this respect, the Complainant contends that case law has held that confusing similarity is established when a domain name wholly incorporates a Complainant’s trademark in its entirety despite the addition of other words. The mere difference between the disputed domain name <lantusinsulin.org> and the Complainant’s trademarks LANTUS is the addition of the word “insulin”. “Insulin” is a hormone that is needed to convert blood sugar, or glucose, into usable energy. In people without diabetes the body maintains an appropriate level of insulin throughout the day but for people with diabetes, the body no longer has an ability to produce or release the right amount of insulin. The Complainant’s LANTUS product may be prescribed to people suffering from diabetes when long-acting insulin is needed. These terms are consequently descriptive of the Complainant’s product. On this matter, the Complainant cites the decisions of the previous WIPO UDRP Panels constantly which have held that “where a domain name consists of a registered trademark followed by a generic term, the latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark” (See The Nasdaq Stock Market, Inc. v. Green Angel WIPO Case No. D2001-1010) and that “the addition of descriptive terms does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademarks”. (See Aventis, Aventis Pharma S.A. v. John Smith, WIPO Case No. D2004-0624 Consequently, the Complainant contends that the adjunction of the word “insulin” is not sufficient to suppress the likelihood of confusion between the aforementioned trademarks and the disputed domain name <lantusinsulin.org> registered by the Respondent. This addition does not permit to prevent the public from thinking that this domain name is somehow connected to the Complainant’s trademarks LANTUS.

(ii) AMBIEN and <ambienwithdrawal.org>

The Complainant further contends that it noticed that the Respondent has registered the domain name <ambienwithdrawal.org> on February 6, 2006. The domain name <ambienwithdrawal.org> entirely reproduces the Complainant’s trademark AMBIEN, which has no particular meaning and is therefore highly distinctive. As in the case of the LANTUS trademark and the disputed domain name <lantusinsulin.org>, the Complainant contends that case law has held that confusing similarity is established when a domain name wholly incorporates a Complainant’s trademark in its entirety despite the addition of other words. The mere addition of the term “withdrawal” which is added in second position in front of the “.org”, is in the opinion of the Complainant of secondary importance and is not sufficient to suppress the likelihood of confusion which stems from the use of the word AMBIEN which is the main and attractive word. The Complainant contends that the term “withdrawal” must be taken in its everyday meaning which means that the drug AMBIEN should be withdrawn from the market which is clearly inferring that the product AMBIEN of the Complainant is harmful to the consumers.

Based on the arguments above, the Complainant contends that it is undoubtedly established that the disputed domain names <lantusinsulin.org> and <ambienwithdrawal.org> are confusingly similar to the trademarks LANTUS and AMBIEN in which the Complainant has rights.

Rights or Legitimate Interests

The Complainant contends that when one looks at the websites of the Respondent, it is obvious that he does not need to use the disputed domain names for its activity as his name is “Kentech” which has nothing to do and is completely different from LANTUS and AMBIEN. Moreover it must be emphasized that when one clicks on any interactive part of the Respondent’s websites at “www.lantusinsulin.org” or at “www.ambienwhithdrawal.org” one is automatically directed to other websites which are selling online various products and/or services. Thus, the Complainant contends that it is obvious that the domain names <lantusinsulin.org> and <ambienwithdrawal.org> are only used by the Respondent in order to lead consumer to other websites offering to sell online various products and/or services to consumers. Furthermore, the Complainant or its associated companies have never licensed nor otherwise permitted the Respondent to use its trademarks LANTUS and/or AMBIEN or to apply for any domain names incorporating these terms in their entirety. There is no relationship between the Complainant and the Respondent. The Complainant contends that based on the aforesaid arguments, the Respondent has no right or legitimate interests in the respect of the domain names <lantusinsulin.org> and <ambienwithdrawal.org>.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered in bad faith the disputed domain names <lantusinsulin.org> and <ambienwithdrawal.org> which corresponds to the trademarks and domain names owned by the Complainant. The Complainant asserts that before registering the disputed domain name, the Respondent must have been aware of the existence of:

- the drugs named LANTUS and AMBIEN developed and sold by the Complainant;

- the different trademarks LANTUS and AMBIEN owned by the Complainant;

- the domain names <lantuscom> and <ambien.com> registered by the Complainant;

- the websites “www.lantus.com” and “www.ambien.com” on which the Complainant presents its LANTUS products and its AMBIEN products.

Moreover, the Complainant points out that it is not the first time that an UDRP proceeding is initiated against the Respondent. As of 2005, at least three administrative proceedings were made against the Respondent, and one of them was initiated by the Complainant. In each of these previous proceedings the Panels have ordered the transfer of the disputed domain names after finding bad faith on the part of the Respondent. In the precedent Bart van den Bergh Merk-Echt BV v. Kentech Company Ltd, WIPO Case No. D2005-0127 the Complainant has asserted that the Respondent was offering for sale 144,000 domain names on its website “www.kentech.com”. As of today when one types in the address “www.kentech.com”, one is directed to a Home Page saying the website “NAMEICON.COM” on domain name auction will soon be presented on this website. Consequently, as in the previous cases it is obvious that the disputed domain names must have been registered in bad faith.

The disputed domain names were not only registered in bad faith but are also used by the Respondent in bad faith. The fact that the websites “wwwlantusinsulin.org” and “www.ambienwithdrawal.org” of the Respondent hosts sponsored links, and when one clicks on any of these links one is automatically directed to other websites which are offering to sell online to the consumers various products or services, clearly demonstrates in the opinion of the Complainant that the domain names <lantusinsulin.org> and <ambienwithdrawal.org> are used by the Respondent in order to generate money on every click made on the sponsored links. There is no doubt that by using the domain names <lantusinsulin.org> and <ambienwithdrawal.org> in such a way, the Respondent is intentionally attempting to attract for financial gain, Internet users to the above mentioned websites or other on-line locations 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 location or of a product or service on the Respondent’s websites or location.

The Complainant do not wish Internet users to be under the impression that the Complainant has checked, authorized or guaranteed that the information given and the products sold on the websites linked to the Respondent’s ones as this was not in fact true and would be prejudicial to the Complainant in the event of consumers or Internet users having purchased products based on untrue and inaccurate information provided on the websites linked to the Respondent’s disputed domain names. The Complainant has sent an e-mail to the Respondent on July 6, 2006, to inform him on its IP rights and to tell him that the registration of the domain names <lantusinsulin.org> and <ambienwithdrawal.org> violates these rights but has received no answer to this e-mail.

Based on the above arguments, the Complainant contends that there is no doubt that the disputed domain names <lantusinsulin.org> and <ambienwithdrawal.org> were registered intentionally and are being used for a commercial purpose, without any rights or legitimate interest by the Respondent, with the only purpose of disrupting the business of a competitor.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the marks LANTUS and AMBIEN in many countries throughout the world. The Panel accepts the Complainant’s evidence and finds that the Complainant has rights in these two trademarks.

In assessing the degree of similarity between the Complainant’s trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download the Complainant’s medical and pharmaceutical products.

The first disputed domain name <lantusinsulin.org> comprises of the Complainant’s trademark LANTUS and the English word INSULIN. The Panel finds that the Complainant’s trademark LANTUS is a coined word with no meaning and is thus distinctive. Consequently, the most prominent and distinctive part of the domain name is the word LANTUS. The English word INSULIN placed together with the Complainant’s trademark LANTUS is merely descriptive of the Complainant’s products and it does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark LANTUS. The confusion created by the similarity between the Complainant’s trademark LANTUS and the Respondent’s domain name <lantusinsulin.org> is heightened by the fact that the Complainant has marketed a drug which provides a slow, steady release of insulin to help control blood glucose for patients suffering from diabetes under the trademark of LANTUS. In fact, given the substantial reputation built up by the Complainant in the medical and pharmaceutical field, it is not inconceivable that Internet users searching for the Complainant’s LANTUS products on the Internet looking at the domain name <lantusinsulin.org> may think that it belongs to the Complainant or is in some way associated with the Complainant.

In the case of the second disputed domain name <ambienwithdrawal.org>, the domain name comprises of the Complainant’s trademark AMBIEN and the English word WITHDRAWAL. The Panel also finds that the Complainant’s trademark AMBIEN is a coined word with no meaning and is thus distinctive. Consequently, the most prominent and distinctive part of the domain name is the word AMBIEN. The English word WITHDRAWAL in its plain meaning according to Oxford Advanced Learner’s Dictionary of Current English refers “take back” in the ordinary sense and also to “a physical or mental reaction” as in a “withdrawal symptom”. In either sense of the word, the addition of the English WITHDRAWAL to the Complainant’s trademark AMBIEN is in the opinion of the Panel merely descriptive in nature as the Respondent chooses words associated with medical or mental conditions so as to evoke possible association with the Complainant’s trademark AMBIEN, a mark used essentially to market pharmaceutical or medical products. In this regard, the Panel finds that the addition of the word WITHDRAWAL does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark.

Bearing in mind the following factors, in particular (a) the substantial reputation of the Complainant’s trademark built up by the Complainant in the field of medical and pharmaceutical field since its incorporation in 2004; (b) the distinctive character of the Complainant’s marks LANTUS and AMBIEN; (c) the dominant components of the disputed domain names; (d) the visual, aural and similarities between them; and (e) the non-distinctive merely descriptive components added in disputed domain names, the Panel therefore finds that the disputed domain names <ambienwithdrawal.org> and <lantusinsulin.org> are confusingly similar to a trademark or service mark, LANTUS and AMBIEN, in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. the Respondent has not provided evidence of a legitimate use of the domain names or reasons to justify the choice of the words “lantusinsulin” and “ambienwithdrawal” in its business operations;

3. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademarks LANTUS or AMBIEN or to apply for or use any domain names incorporating these trademarks;

4. there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services;

5. the Complainant has built up a substantial reputation in its LANTUS and AMBIEN trademarks in the medical and pharmaceutical field since its incorporation in 2004. Consequently, in the absence of contrary evidence from the Respondent, the LANTUS and AMBIEN marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark 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 domain name; or

(ii) the Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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.

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Firstly, the Panel finds that the Complainant has built up a substantial reputation in its trademarks LANTUS and AMBIEN particularly in the medical and pharmaceutical field since its incorporation in 2004. Furthermore, the Complainant has also marketed its products on the Internet with the use of the domain names <lantus.com> and <ambien.com>. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of an association with the Complainant and its pharmaceutical and medical products.

The Panel finds that there is compelling evidence that the Respondent has registered the disputed domain names for less than honorable intentions. The Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites. Furthermore, the Respondent has through the use of a confusingly similar domain names created a likelihood of confusion with the Complainant’s trademarks and this constitutes a misrepresentation to the public that his websites are associated or connected with the Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names, the conduct of the Respondent as far as the websites on to which the domain names resolve and the history of the UDRP administrative proceedings by other trademark proprietors taken against the Respondent are indicative of registration and usage of the disputed domain names in bad faith.

The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain names in bad faith.

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, <lantusinsulin.org> and <ambienwithdrawal.org> be transferred to the Complainant AVENTIS PHARMA DEUTSCHLAND GmbH and SANOFI AVENTIS respectively.


Susanna H.S. Leong
Sole Panelist

Dated: February 27, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1273.html

 

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