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AstraZeneca plc v. Dreamlight [2005] GENDND 1953 (11 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AstraZeneca plc v. Dreamlight

Case No. D2005-1010

1. The Parties

The Complainant is AstraZeneca plc, of Södertälje, Sweden, represented by Willoughby & Partners, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Dreamlight, of Bellingham, Washington, United States of America.

2. The domain name and Registrar

The disputed domain name <wwwastrazeneca.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2005. On September 23, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 28, 2005, eNom 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 (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 September 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2005.

The Center appointed Luca Barbero as the Sole Panelist in this matter on October 25, 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 Complainant is one of the world’s leading pharmaceutical companies, formed as a result of a merger in 1999 between Astra Aktiebolag of Sweden and Zeneca Group Plc of the United Kingdom. The Complainant’s products are available in over 100 countries, with an operating profit last year of US $ 4.8billion.

The Complainant is the owner of several trademark registrations consisting in the sign ASTRAZENECA such as No. 2196315 of May 4, 1999 in Classes 1, 2, 5, 9, 10, 29, 35, 36, 37, 39, 41 and 42 in the United Kingdom; Community Trademark Registration Number 1192137 of May 25, 1999 in Classes 1, 2, 5, 10, 29, 35, 36, 37, 39, 41 and 42; No. 2663581 of December 17, 2002 in Class 5 in the United States of America.

The Respondent registered the domain name <wwwastrazeneca.com> on June 22, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant states that as a result of an extensive use and promotion of its AstraZeneca brand, the latter has come to enjoy substantial reputation and goodwill and that is the owner of a global portfolio of registered trademarks for the AstraZeneca name in over 100 countries providing the Panel with evidence of three trademark certificates in the United Kingdom, in the European Union and in the United States of America.

The Complainant emphasizes that while conducting routine investigations online it came to the Complainant’s attention that the domain name, which is identical to the Complainant’s main web address (save for the omission of a ‘dot’), had been registered and was directed to a directory website at ‘www.wwwastrazeneca.com’.

The Complainant underlines that at first sight that website appears to deal mainly with matters pertaining to the Complainant as - in the left hand column of the Respondent’s home page - it features links for instance to “Astrazeneca Patient Assistance Program Application” and “Astrazeneca Foundation”.

On August 30, 2005, the Complainant’s representatives wrote to the Respondent via email notifying the Respondent of the Complainant’s rights and requesting that the domain name be transferred to the Complainant.

The Complainant contends that disputed domain name <wwwastrazeneca.com> is confusingly similar to trademarks and domain names in which Complainant has rights as the domain name comprises the Complainant’s name and registered trademark, ASTRAZENECA, flanked by the introductory ‘www’ prefix and the generic ‘.com’ domain suffix. Neither the prefix nor the suffix serves any distinctive function.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name as is not using the domain name for a bona fide offering of goods or services, is not known by the domain name and is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. To the best of the Complainant’s belief, the Respondent has no trademark or service mark rights registered or unregistered in respect of the domain name or any corresponding name.

The Respondent is not authorised by the Complainant or any of its associated companies to use the Complainant’s name and registered trademark ASTRAZENECA or any other trademark belonging to the Complainant or any name or names confusingly similar thereto.

With reference to the circumstances evidencing bad faith, the Complainant indicates that at the time of registration the Respondent knew that ASTRAZENECA was a trademark of the Complainant since there is no credible and justifiable reason to select ASTRAZENECA that is not a common name. In view of the Complainant, the Respondent selected a substantially identical name precisely because it was the trademark of the Complainant

The Complainant contends that Internet users visiting the site will be doing so in the belief that it is in some way associated with the Complainant as there is little on the site to indicate that the site is not associated with the Complainant. It is only as one works one’s way through the site and its links that it becomes apparent that it is a ‘pay per click’ site.

The Complainant indicates that the Respondent is earning money from allowing its site to be used to host advertising links and the use of the Complainant’s well-known name and trademark is being deliberately used to attract Internet users to the site and to give credibility and a sense of reliability to the site and its hosted advertisers.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of Complainant’ submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

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

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

6.1. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registrations embodying the mark ASTRAZENECA such as No. 2196315 of May 4, 1999 in Classes 1, 2, 5, 9, 10, 29, 35, 36, 37, 39, 41 and 42 in the United Kingdom; Community Trademark Registration Number 1192137 of May 25, 1999 in Classes 1, 2, 5, 10, 29, 35, 36, 37, 39, 41 and 42; No. 2663581 of December 17, 2002 in Class 5 in the United States of America.

In comparing Complainant’s marks to the domain name, taking into account the well established principle that the suffix “.com” must be excluded from consideration as being merely a functional component of the domain name, the Panel also finds that the prefix “www” is not to be considered a factor of differentiation as it has no distinguishing capacity when included in a domain name, being the acronym of “world wide web”. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, transferring <wwwreuters.com>; and Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346; transferring <wwwticketmaster.com>.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

6.2. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

As far as the Panel is aware, there is no relation between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks and trade name under any circumstance.

The Panel concurs with the views expressed in MBNA America Bank N.A. v. Vertical Axis, Inc. NAF Case No. FA 0211000133632, where the Panel made clear that the redirection of Internet users to websites containing a series of links to other commercial websites “[…]is not a bona fide offering of goods and services under Policy 4(c)(i), or a legitimate non-commercial or fair use of the domain name under policy 4(c)(iii)[…]. Nothing on the infringing domain names website references either ‘mbna’ or ‘mbna acess’, and Respondent appears to be known as Vertical Axis, Inc. Thus,… Respondent is not ‘commonly known by’ the name MBNAACESS or mbnaacess.net”.

In line with a number of prior decision in cases of “typosquatting”, the Panel finds that the Respondent knew that a significant proportion of Internet users would be deceived on the basis of “initial interest confusion”. The fact that, upon arriving at the web site and/or after a certain amount of further investigation, some users might be disabused is to be considered irrelevant since, by that time, the Respondent would have obtained its commercial business opportunity, an opportunity that the Respondent might well not otherwise have obtained had he adopted a domain name not confusingly similar to registered trademark.

As also stated in Autosales Incorporated v. Don Terrill WIPO Case No. D2001-1341 the Panel finds that “[t]he Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the domain name. Although Respondent asserts that the domain name is being used for commercial gain, Respondent denies any intent to misleadingly divert consumers to his own website, pursuant to the Policy paragraph 4(c)(iii). However, of critical importance on the Internet is the routing or diversion of traffic to one’s website. The use of a registered trademark in a domain name allows the entity registering the domain name to capture traffic and point or divert it to another website”.

Initial interest confusion is a well recognised phenomenon in prior UDRP decisions and the Panel finds that amongst all cases dealing with initial interest of Internet users, the addition of “www” as prefix of a well known registered trademark has deprived the Respondent of any right or legitimate interest in respect of the domain name in issue.

On the “www” typoquatting issue, see also Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 and Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205, where it was stated that “the only difference being that ‘www’ has been inserted in front of the Pfizer mark, a practice known as a ‘typo’ or ‘typo squatting’, for the purpose of exploiting users’ typographical mistakes when seeking Complainant’s site, namely those users who erroneously omit the period between ‘www’ and ‘pfizer’”.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

6.3. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

With regard to bad faith registration of the domain name, the Panel notes that the Respondent was certainly aware of the registered trademark since the very registration of a domain name identical to a registered trademark (with the exception of the prefix “www”) is to be considered implying actual knowledge of the trademark. [Note to Mr. Barbero: the web sites linked to the disputed domain names can be accessed without adding “www.” after “http://”, hence our suggestion to remove this last sentence.]

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant’s trademark at the time of registration of the disputed domain name may lead to an inference of bad faith as stated in Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

With regard to bad faith use of the domain name, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s services.

As also stated in Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274 the Panel finds that “the Respondent has considered a predictable typing error that users could make by excluding the period that goes in between “www” and the second level domain name. That could not be anything else but a trick that Respondent has employed to circumvent the existing domain names that Complainant has registered”.

Previous Panels have also considered “typosquating” as a circumstance evidencing bad faith. For example in InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069, the Panel stated that the addition of “www” to a domain name is best explained as a deliberate attempt to exploit user’s typographical mistakes when seeking Complainant’s website, which has to be understood as bad faith under Paragraph 4(a)(iii) of the Policy.

As stated in Automobiles Peugeot SA v. Good Domains, Formerly Domains For Sale Inc. WIPO Case No. D2002-0805, the Respondent’s registration of <wwwpeugeot.com>, a misspelling of Complainant’s registered mark is a circumstance evidencing bad faith. See also PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale Inc. NAF Case No. FA0201000104101 transferring the domain name <wwwpncbank.com>, Prada S.A. v. Domains For Sale Inc. WIPO Case No. D2002-0512, transfering the domain name <wwwprada.com>, AltaVista Co. v. Stoneybrook, WIPO Case No. D2000-0886, transfering <wwwalavista.com>, and Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 transfering domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com>.

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that (a) the domain name registered by the Respondent is confusingly similar to the Complainant’s trademarks; (b) the Respondent has no rights or legitimate interests in respect of the domain name and (c) that the domain name has been registered and used in bad faith.

Accordingly, the Panel requires that the domain name <wwwastrazeneca.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: November 11, 2005