ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventis Pharmaceuticals, Inc. v. Doc Noss
Case No. D2008-1058
1. The Parties
The Complainant is Sanofi-Aventis, Paris, France and Aventis Pharmaceuticals, Inc., United States of America, represented by Selarl Marchais De Candé, France.
The Respondent is Doc Noss, Sunset Beach, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 14, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 14, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 23, 2008. 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 July 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 14, 2008.
The Center appointed Adam Taylor as the sole panelist in this matter on August 21, 2008. 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 Complainants are part of a large French pharmaceutical group “Sanofi Aventis” with a presence in more than 100 countries and employing approximately 100,000 people worldwide.
Sanofi-Aventis, the “First Complainant” produces and distributes worldwide a medication called SCULPTRA, designed to restore and/or correct the signs of facial fat loss (lipoatrophy) in people with human immunodeficiency virus or cancer.
Aventis Pharmaceuticals, Inc, the “Second Complainant” owns a number of SCULPTRA trademarks worldwide including, by way of example, United States of America (“United States”) trademark number 3056196 dated June 25, 2003 in classes 5, 10 and 44.
The disputed domain name was registered on June 29, 2006.
On an unspecified date (the printouts supplied by the Complainants are undated), the disputed domain name resolved to parking page with sponsored links to websites related to plastic surgery including some which offered products competing with the Complainant’s product.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name wholly incorporates the Complainant’s distinctive trademark SCULPTRA, an invented word with no particular meaning.
The addition of the term “newport beach” is insufficient to prevent the likelihood of confusion because it is a completely descriptive term referable to geographical location on the west coast of the United States.
The average consumer will believe that the disputed domain name relates to sale or manufacture of this drug in the city of Newport Beach.
Likelihood of confusion also arises because of the fame of the of the Complainants’ trademark.
The Respondent does not have any legitimate interest in the respect of the disputed domain name.
The name “Doc Noss” has no resemblance to Sculptra. The Respondent has consequently no prior rights and/or legitimate interest to justify the use of this well-known trademark.
The Complainants have never permitted the Respondent to register any domain name including their trademark.
The Respondent has adopted the Complainants’ trademark for its own use and incorporated it into its domain name without the Complainant’s authorization.
The absence of any permission from the Complainants proves that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registered and Used in Bad Faith
At the time of the registration of the disputed domain name, the Respondent was well aware of the existence of the drug named SCULPTRA, developed and sold by the Complainants, as well as the numerous worldwide SCULPTRA trademarks.
The Respondent is deliberately trying to gain unfair benefit from the Complainants’ reputation by using their trademark to divert internet users to its parking website with links to commercial websites where competing products are advertised and offered for sale.
It is very likely that the Respondent’s purpose is to profit on a pay-per-click basis.
By using the disputed domain name as a parking website, the Respondent is intentionally attempting for financial gain to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants undoubtedly have rights in the mark SCULPTRA by virtue of their many registered trade marks as well as their extensive trading activities under that name.
Disregarding the domain suffix “.com”, the disputed domain name wholly incorporates the distinctive SCULPTRA trademark and differs only by the addition of the term “newport beach”. This descriptive geographical term is insufficient to distinguish the domain name and trademark.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. The Panel therefore finds that the Complainants have established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainants must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003 0070.
The Complainants have not licensed or otherwise authorized the Respondent to use their trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainants’ products. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainants have established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainants have therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with the Complainants’ trademark in mind.
The disputed domain name incorporates the Complainants’ distinctive trademark and is used for a website with sponsored links to sites offering products competing with the Complainants’ product.
The Respondent has not come forward to deny that the Complainants’ assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
The Panel concludes from the foregoing that the Respondent has registered and is using the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel therefore finds that the Complainants have established the third element of the Policy.
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, be transferred to Aventis Pharmaceuticals, Inc.
Date: September 4, 2008