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Merrell Pharmaceuticals Inc., Aventis Pharma SA, Aventis Pharma Deutschland GMBH, Aventis Pharmaceuticals Inc v. Jonathan Valicenti [2005] GENDND 1306 (13 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merrell Pharmaceuticals Inc., Aventis Pharma SA, Aventis Pharma Deutschland GMBH, Aventis Pharmaceuticals Inc v. Jonathan Valicenti

Case No. D2005-0518

1. The Parties

The Complainants are Merrell Pharmaceuticals Inc., Aventis Pharma SA, Aventis Pharma Deutschland GMBH and Aventis Pharmaceuticals Inc, France; represented by Carole Tricoire, France.

The Respondent is Jonathan Valicenti, Montreal, Quebec, Canada.

2. The Domain Names and Registrar

The disputed domain names are: <buyallegra-d.com>, <buyallegrad.com>, <buyamaryl.com>, <buyarava.com>, <buybenzaclin.com> and <buyddavp.com> (hereinafter also referred to as the “Domain Names”).

The Domain Names are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2005. On May 13, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On May 13, 2005, Go Daddy Software 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 Complainants filed an amendment to the Complaint on May 25, 2005. 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 May 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2005.

The Center appointed Alfred Meijboom as the sole panelist in this matter on June 29, 2005. 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 Merrell Pharmaceuticals Inc., Aventis Pharmaceuticals Inc., Aventis Pharma Deutschland GmbH and Aventis Pharma SA are all affiliated companies, belonging to the Group Sanofi-Aventis.

Sanofi-Aventis and its affiliated companies are leaders in the pharmaceutical branch. Sanofi-Aventis offers a wide range of patented prescription drugs, including the products branded ALLEGRA, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL.

The Complainant Merrell Pharmaceuticals Inc. holds trademark registrations for ALLEGRA in the United States of America, Canada, Mexico, Argentina, Brazil, South Africa and Taiwan, Province of China and trademark registrations for ALLEGRA-D in the United States and Taiwan, Province of China. The earliest registrations date from 1997 for ALLEGRA and 2003 for ALLEGRA-D. Furthermore, Merrell Pharmaceuticals Inc. holds the domain names <allegra.com>, <allegra-d.com> and <allegrad.com>.

The Complainant Aventis Pharmaceuticals Inc. holds trademark registrations for BENZACLIN in the United States of America, Lebanon, Malta, Paraguay, Peru, Russian Federation, Uruguay and Zimbabwe and a trademark registration for DDAVP in the United States of America, which dates from 1996. The earliest registration for BENZACLIN dates from 2001. Furthermore, Aventis Pharmaceuticals Inc. holds the domain name <ddavp.com>.

The Complainant Aventis Pharma Deutschland GmbH holds trademark registrations for ARAVA in the United States of America, Argentina, Germany, Australia, Brazil, Canada, Japan and South Korea and trademark registrations for AMARYL in Germany, the United States of America, Canada, Japan, the United Kingdom and Mexico. The earliest registrations date from 1997 for ARAVA and 1992 for AMARYL.

The Complainant Aventis Pharma SA holds the domain names <benzaclin.com>, <arava.com> and <amaryl.com>.

The Respondent holds the Domain Names <buyallegra-d.com>, <buyallegrad.com>, <buyamaryl.com>, <buyarava.com>, <buybenzaclin.com> and <buyddavp.com>, which were registered on December 8, 2004.

The websites behind the Domain Names redirect to the same ‘parking web page’ of the registrar Go Daddy.

5. Parties’ Contentions

A. Complainants

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Names, the Complainants are required to prove that the three elements mentioned below are met. The Complainants make the following assertions with respect to these elements:

(i) the Domain Names are identical or confusingly similar to trademarks or service marks to which the Complainants have rights.

The Complainants contend that the Domain Names contain the Complainants’ trademarks ALLEGRA-D (only spelled differently as ALLEGRAD), BENZACLIN, DDAVP, ARAVA and AMARYL in their entirety and as a result thereof are confusingly similar.

The mere difference between the Domain Names and the trademarks is the addition of the term ‘buy’ placed at the beginning of the Domain Names. The term ‘buy’ is descriptive for websites that offer consumers the possibility to purchase goods and/or services online. Therefore the addition of the term ‘buy’ is not sufficient to avoid likelihood of confusion, the more so since the Complainant’s trademarks have acquired a reputation.

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names.

The Complainants contend that that the Respondent has no legitimate interest in the Domain Names. According to the Complainants this can be derived from the fact that the Respondent’s name shows no resemblance with the terms ALLEGRA, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL and that there is no real activity under these Domain Names.

Furthermore, the Complainants state that there exists no relationship whatsoever between the Complainants and the Respondent. The Complainants have not in any way authorized the Respondent to use their trademarks or to register the Domain Names.

(iii) the Domain Names were registered and are being used in bad faith.

Bad faith registration

The Complainants contend that the Respondent was undoubtedly aware of the Complainants’ trademarks at the time of registration of the Domain Names, since the Domain Names correspond with Complainants’ trademarks and domain names.

According to the Complainants the Respondent, by registering the Domain Names, has intentionally tried to generate a likelihood of confusion with consumers by making them think there exists a general website which is devoted to selling generic drugs.

Bad faith use

The Complainants contend that the fact that the Respondent has never used the Domain Names to create active websites demonstrates his bad faith. In this respect the Complainants refer to previous decisions, in which panels have decided that being used in bad faith is not limited to positive action, but that the Policy recognizes that inaction can, in certain circumstances, constitute use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275).

The Complainants are of the opinion that the following circumstances justify that the Respondent’s inaction should be considered to be use in bad faith. Firstly, considering the Complainant’s worldwide reputation, the Respondent knew that he had no rights to use the Complainants’ trademarks. Secondly, the Respondent chose the terms ALLEGRAD, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL intentionally. Thirdly, the Respondent, by registering the Domain Names, has intentionally added the term buy to the Complainant’s trademarks, as a result of which Internet users are wrongfully lead to believe that the Complainants’ drugs are generic drugs.

B. Respondent

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

6. Discussion and Findings

The Domain Names concerned are all registered in one and the same name, the Respondent’s name, and the Complainants are all affiliated companies belonging to the Group Sanofi-Aventis. Therefore the Panelist decides that it is permissible to deal with this Complaint regarding the different Domain Names in a single administrative proceeding and to render one Administrative Panel Decision.

A. Identical or Confusingly Similar

The Complainants have several trademark registrations for ALLEGRA, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL worldwide. The Panelist finds that the Complainants have rights in the ALLEGRA, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL trademarks.

For the purpose of assessing whether the Domain Names are identical or confusingly similar to the trademarks in which the Complainant has rights, the “.com” suffixes are disregarded, being necessary elements of domain names. The relevant parts of the Domain Names are buyallegrad, buyallegra-d, buybenzaclin, buyddavp, buyarava and buyamaryl. These parts contain the Complainant’s trademarks in their entirety, adding the term ‘buy’ at the beginning. “Buy” is a descriptive, not particularly distinctive word. Therefore the Panelist is of the opinion that the addition of “buy” does not reduce the likelihood of confusion. Consequently, the Panelist finds the Domain Names to be confusingly similar to the Complainant’s ALLEGRA, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL trademarks.

B. Rights or Legitimate Interests

The Complainants contend that they are not affiliated with the Respondent in any way and that they have not authorized the Respondent to use their trademarks or register the Domains Names. At present the Respondent has not activated the websites under the Domain Names. There is no evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Names.

Consequently, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The Domain Names are composed of the Complainants’ trademarks ALLEGRA-D (and spelled differently as ALLEGRAD), BENZACLIN, DDAVP, ARAVA and AMARYL preceded by the term ‘buy’. All Domain Names were registered on the same day, December 8, 2004. As substantiated under B the Panelist has concluded that the Respondent has no rights or legitimate interests in the Domain Names. Considering all this, the Panel finds, in accordance with ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625, that it is reasonable to conclude that only someone who was familiar with the ALLEGRA, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL trademarks could have registered the Domain Names. Consequently, the Panelist concludes that the Domain Names have been registered in bad faith.

The Complainants must also prove that the Domain Names are being used in bad faith. The websites behind the Domain Names redirect to the same ‘parking web page’ of the registrar Go Daddy. The Panel agrees with the Complainants that this could be qualified as non use or passive holding by the Respondent or at least be placed in line therewith.

In previous decisions panelists have found that under certain circumstances non use of a disputed domain name may nevertheless constitute use in bad faith under the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

The Panel takes the following circumstances of this particular Complaint into account. The Complainants are leaders in the pharmaceutical branch and widely use their trademarks ALLEGRA, ALLEGRA-D, BENZACLIN, DDAVP, ARAVA and AMARYL for pharmaceutical products. Consequently, the Domain Names must have been registered with the Complainants’ trademarks in mind. The websites behind the Domain Names currently redirect to the registrar’s ‘parking page’, but may be altered at the Respondent’s will. There is no information as to the (business) activities of the Respondent and the Panel has concluded under B that the Respondent does not have any rights or legitimate interests in the Domain Names. Furthermore, the Respondent has failed to file a Response or make any attempt to traverse the claims and submissions made by the Complainants, which leads to the conclusion that the Respondent appears to be unwilling to account for the registration and use of the Domain Names. Taken these circumstances into consideration, the Panel concludes that the Respondent’s holding of the domain Names sufficiently satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Names “are being used 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 concerned be transferred to the Complainants as follows:

- <buyallegra-d.com> and <buyallegrad.com> to Merrell Pharmaceuticals Inc;

- <buyamaryl.com> and <buyarava.com> to Aventis Pharma Deutschland GmbH;

- <buybenzaclin.com> and <buyddavp.com> to Aventis Pharmaceuticals Inc.

Alfred Meijboom
Sole Panelist

Date: July 13, 2005