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Ares Trading S.A. v. Bill Edwards [2005] GENDND 1044 (24 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ares Trading S.A. v. Bill Edwards

Case No. D2005-0189

1. The Parties

The Complainant is Ares Trading S.A. (“Ares”), a societe anonyme organized and existing under the laws of Switzerland with offices in Aubonne, Switzerland. Ares is represented by Ostrolenk, Faber, Gerb & Soffen, LLP, New York, New York, United States of America.

The Respondent is Bill Edwards of Austin, Texas, United States of America.

2. The Domain Names and Registrar

This dispute concerns the domain names <buysaizen.com>, <saizeninjection.com>, <seronosaizen.com>, <serostimforinjection.com>, <serostimhgh.com> and <serostiminjection.com> (the “Domain Names”). The registrar with which the Domain Names are registered is: Innerwise, Inc. d/b/a itsyourdomain.com, Schaumburg, Illinois, United States of America (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2005. On February 18, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On March 4, 2005, the Registrar 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. 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.

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 March 7, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was set for March 27, 2005. The Respondent did not submit a Response by that deadline. Accordingly, the Center notified the Respondent’s default on March 29, 2005.

The Center appointed David H. Bernstein as the sole panelist in this matter on April 12, 2005. The Panel finds that it was properly constituted. The Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On April 13, 2005, the Center sent the case file to the Panel via DHL. Unfortunately, DHL misplaced the package, and its delivery was delayed. DHL ultimately did not deliver the case file to the Panel until May 2, 2005.

Upon then reviewing the case file, the Panel discovered that DHL also misplaced the Notification of Complaint and Commencement of Administrative Proceeding that was supposed to be delivered to the Respondent. The package should have been delivered to Respondent on March 9, 2005, in fact, DHL did not effectuate delivery until April 19, 2005, well after the March 29, 2005, deadline for Respondent to submit its Response. Moreover, because the Respondent provided only a post office box address in its registration information, DHL needed to obtain a physical address to complete delivery. Although DHL now states that it delivered the package on April 19, 2005, it is unable to provide confirmation of the delivery address used, and thus it is not clear whether Respondent actually received the DHL package.

Under the circumstances, the Panel determined that it was necessary to renotify the Complaint and to reset Respondent’s time to respond. Accordingly, on May 19, 2005, the Panel issued a Procedural Order granting Respondent an additional ten days to respond or indicate that it would like further time to respond to the Complaint.

The Procedural Order was sent to all known email addresses for the Respondent, and also by Federal Express. Like DHL, Federal Express does not deliver to post office boxes and thus it needed to obtain from the Respondent a physical address for delivery of the package. Unfortunately, Federal Express was unable to reach Respondent at the telephone number included in Respondent’s registration information. On June 15, 2005, after repeated efforts to contact Respondent, Federal Express returned the package to the Center.

Although the Federal Express package was never delivered, the Center’s emails to Respondent did not bounce back.

The Panel finds that Respondent probably has received actual notice of these proceedings. If, after all of these efforts, the Respondent has not received actual notice, the responsibility lies solely with Respondent who either failed to respond to Federal Express’ requests to provide a delivery address or included inaccurate contact information in its registration information. The Panel thus concludes that the Center has satisfied its obligation to provide fair notice to Respondent under Paragraph 2(a). See Advance Magazine Publishers Inc. v. Svanity Group, WIPO Case No. D2003-1020.

On June 15, 2005, the Center issued an email confirming the Respondent’s default, at which point the case proceeded to decision.

4. Factual Background

Complainant owns various United States Trademark Registrations, including for the marks “SERONO,” for use in connection with pharmaceutical preparations for infertility treatment and/or ovulation induction, “Saizen,” for use in connection with pharmaceutical preparations used to stimulate growth, and “Serostim,” for use in connection with pharmaceutical preparations for human use for the treatment of patients with AIDS-associated catabolism/wasting. The Complainant has registered these marks in many other countries around the world.

The Complainant also has registered a variety of domain names corresponding to these marks, including in the .com, .net, .org, .biz and .info gTLDs, and in many ccTLDs.

On or about October 24, 2004, the Respondent registered the Domain Names. Each name resolves to a website at which Respondent provides information about the use of human growth hormone (“HGH”) by athletes and bodybuilders and advertises, through hyperlinks, that consumers can “Buy Human Growth Hormones.” Navigating through the various links leads to websites promoting and selling various companies’ HGH products.

5. Parties’ Contentions

A. Complainant

The Complainant, Ares, is related to Serono S.A., a societe anonyme based in Geneva, and its American subsidiary Serono, Inc. (collectively “Serono”). Serono is a major pharmaceutical company specializing in reproductive health, multiple sclerosis, growth and metabolism, and dermatology. Serono has over 4,900 employees and worldwide yearly revenues of almost two and a half billion dollars.

Serono produces a prescription growth hormone under the mark SEROSTIM for the treatment of AIDS wasting. Serostim, a recombinant HGH, is the only growth hormone approved by the U.S. Food and Drug Administration (the “FDA”) for the treatment of AIDS wasting. Serostim sales were over US $85 million around the world in 2004.

Serono also produces a prescription pharmaceutical under the mark SAIZEN for the treatment of growth hormone deficiency in children and adults, Turner’s syndrome, and chronic renal failure. Saizen is therapeutically equivalent to the natural growth hormone made by the body. It accelerates the growth of children who have insufficient growth hormones. Children who respond well to the drug will be taller as adults than they would have been had they not taken the drug. In 2004, Saizen sales were over US $180 million worldwide.

Complainant states that Respondent registered the Domain Names without Complainant’s permission. The websites at these Domain Names contain commentary discussing use of HGHs by athletes and bodybuilders and provides links to various third party websites at which vendors other than Complainant or Respondent sell HGH drugs. On some of its sites, Respondent provides a link advertising “Buy Human Growth Hormones.” When consumers click on this link, it takes them to a third party website, “www.legalsteroids.com”, which advertises the sale of HGH under the mark Somatroph HGH. The website claims that taking Somotroph HGH will provide analogous results to taking Complainant’s Serostim medication.

Serostim is approved for use as a treatment for AIDS wasting, but is not intended to increase mass for bodybuilding. The FDA has not approved the sale of Serostim or Saizen for enhancing athletic performance. Nevertheless, Respondent’s websites claim that bodybuilders and athletes often use HGH for better muscle growth and athletic performance. Complainant claims Respondent has strong connections with the field of bodybuilding, including through his ownership of the domain name <anabolicsteroid.org>; moreover, Respondent’s telephone number is linked to a web page located at “www.1stbodybuilding.com/musclebody.html”.

Complainant claims it wrote to the Respondent twice requesting transfer of the Domain Names before initiating this proceeding. Complainant states it did not receive a response from the Respondent.

B. Respondent

As noted above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and

(ii) The Respondent has no right or legitimate interest in respect of the Domain Names; and

(iii) The Domain Names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by Paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in Paragraph 4(a)(ii) referred to above.

A. Identical or Confusingly Similar

The Domain Names are irrefutably confusingly similar with the Complainant’s trademarks. Each Domain Name incorporates, in its entirety, at least one of Complainant’s registered trademarks, which alone renders the Domain Names confusingly similar to Complainant’s marks for purposes of the Policy. EAuto v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.”). Some of the Domain Names also incorporate generic terms such as “hgh” or “buy” or “injection”; the addition of those generic terms does not change the conclusion that these Domain Names are confusingly similar to Complainant’s marks. Advance Magazine Publishers, Inc. v. Vanilla Ltd., WIPO Case No. D2004-1068.

Accordingly, the Complainant has satisfied the first prong of the test.

B. Rights or Legitimate Interests

i. Paragraph 4(c)(i)

Complainant has satisfied its burden of proving that Respondent has not used the Domain Names in connection with a bona fide offering of goods and services. These websites are not being used to sell Complainant’s products. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. To the contrary, the sites provide links to sites at which other HGHs are sold, including some that purportedly are meant as replacements for Complainant’s medicines. Such bait and switch tactics cannot form the basis for a legitimate interest. Kanao v. J.W. Roberts Co., CPR Case No. 0109.

Moreover, Respondent’s websites promote the unauthorized use of these drugs for recreational and athletic purposes, rather than for the serious medical purposes for which they have been approved by the FDA. Such conduct cannot be characterized as legitimate.

ii. Paragraph 4(c)(ii)

Complainant also has satisfied its burden of proving that Respondent is not commonly known by the Domain Names. The Respondent is Bill Edwards. There is no indication in the evidence or on the websites that Respondent is commonly known by any of the Domain Names. Accordingly, Respondent does not have a right to the domain names pursuant to Paragraph 4(c)(ii). See Systima Ltd. v. Byrne, WIPO Case No. D2001-0300.

iii. Paragraph 4(c)(iii)

Complainant also has satisfied its burden of proving that Respondent is not making a noncommercial or fair use of the domain names. Respondent’s websites provide links to various third party sites at which HGH products are promoted and sold. Even though the actual commerce occurs on other sites, the Panel infers that Respondent profits from the sales, either through direct ownership of the other sites or through referral fees. See Lilly LICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750. Moreover, consumers visiting sites such as <buysaizen.com> would expect such a site to offer SAIZEN medicines for sale; thus, Respondent’s use of these Domain Names to promote other medicines is likely to confuse consumers and misleadingly divert them from Complainant’s websites to Respondents. Finally, the Panel concludes that Respondent’s use of these Domain Names to promote the recreational use of Complainant’s medicines constitutes tarnishment of Complainant’s marks.

For the reasons stated above, Respondent does not have a right or legitimate interest in the Domain Names.

A. Registered and Used in Bad Faith

Complainant has shown that Respondent registered and used the Domain Names in bad faith. Respondent has used the Domain Name to attract users to his websites for commercial gain. Respondent also has created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. And, Respondent is using these Domain Names to promote the recreational use of these HGH drugs, which have been approved by the FDA only for treatment of serious diseases and disorders, not for bodybuilding and athletic prowess. See N.V. Organon v. Johnatan Johnston, WIPO Case No. D2001-1077 (Respondent registered and used domain name in bad faith because Respondent’s website connected Complainant’s drug, intended to treat testosterone deficiency in men, with bodybuilding, a use Complainant’s websites explicitly stated was dangerous and unintended). Accordingly, the Panel finds Respondent registered and used the domain names in bad faith.

7. Decision

For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <buysaizen.com>, <saizeninjection.com>, <seronosaizen.com>, <serostimforinjection.com>, <serostimhgh.com> and <serostiminjection.com> be transferred to the Complainant.

David H. Bernstein
Sole Panelist

Date: June 24, 2005