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AstraZeneca AB v. Ventures, Inc. Asia [2005] GENDND 278 (27 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AstraZeneca AB v. Ventures, Inc. Asia

Case No. D2005-0264

1. The Parties

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

The Respondent is Asia Ventures, Inc, Central Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <astrazenecapharm.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2005. On March 15, 2005, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On March 18, 2005, The Registry at Info Avenue d/b/a IA Registry 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 March 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2005.

The Center appointed Fabrizio Bedarida as the Sole Panelist in this matter on April 20, 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 a member of the AstraZeneca Group of Companies headed by AstraZeneca Plc. AstraZeneca is the trading name of the Group. AstraZeneca was formed as a result of a merger in 1999, between Astra Aktiebolag of Sweden and Zeneca Group Plc of the United Kingdom.

The Complainant is a subsidiary of AstraZeneca Plc. AstraZeneca Plc and the Complainant are the proprietors of many trade mark registrations including the following registrations for the AstraZeneca name:

(a) ASTRAZENECA under Trade Mark Registration Number 2196315 in Classes 1, 2, 5, 9, 10, 29, 35, 36, 37, 39, 41 and 42 in the name of AstraZeneca Plc in the United Kingdom;

(b) ASTRAZENECA under Community Trade Mark Registration Number E1192137 in Classes 1, 2, 5, 10, 29, 35, 36, 37, 39, 41 and 42 in the name of AstraZeneca Plc in the European Community;

(c) ASTRAZENECA Life Inspiring Ideas and Logo under Trade Mark Registration Number 200500248 in Class 5 in the name of AstraZeneca AB in Hong Kong;

(d) ASTRAZENECA under Trade Mark Registration Number 2663581 in Class 5 in the name of AstraZeneca Plc in the United States of America.

The Respondent registered the domain name <astrazenecapharm.com> on March 25, 2003.

Complainant’s trademark rights on the name ASTRAZENECA predate the disputed domain name registration.

5. Parties’ Contentions

A. Complainant

The Complainant submits that:

The disputed domain name is confusingly similar to the trademark ASTRAZENECA.

It is clear that the reason for appropriating the Complainant’s trade mark to host a website that features links to sites connected to the pharmaceutical industry is for the purpose of creating and causing confusion in the minds of Internet users. In an industry sector such as the pharmaceutical industry, where products and services affect the health and even the life of an individual, any confusion as to the provenance of a website may cause severe damage to the reputation of the rights holder.

The fact that Respondent’s website also features links to industry sectors that offer services that have nothing to do with the Complainant is highly misleading.

The use of the name ‘astrazenecapharm.com’ with a statement on the site that it is the ‘top pharmaceutical industry resources on the net’ is very likely to lead Internet users to believe that the Respondent’s website belongs to or is somehow authorised by the Complainant when this is not the case.

The word PHARM is descriptive of the services offered by the Complainant and as such should not be used to distinguish the Domain Name from the Complainant’s mark but rather supports a finding that the Domain Name is identical, if not confusingly similar to the Complainant’s mark.

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

To the best of the Complainant’s belief, the Respondent has no trade mark or service mark rights registered or unregistered in respect of the Domain Name or any corresponding name.

The Respondent is using the Domain name to host a website that links to websites connected to various commercial activities both in the pharmaceutical industry as well as unrelated industries. This is not a legitimate non-commercial or fair use of the Domain Name.

There is no credible reason for the Respondent to choose the Domain Name <astrazenecapharm.com> and ASTRAZENECA is not a common name.

The Respondent must have been aware of the Complainant and its trademark when it registered the disputed domain name. Thus Respondent selected the Domain Name with a view to earn income from Internet users visiting the sites having been lured to the site by the Complainant’s trade mark in the Domain Name.

The Respondent has a history of registering domain names incorporating the trademarks of third parties and for that it has been involved in a number of proceedings under the Policy made against it including the following:

(a) Museum of Science v. Asia Ventures, Inc., WIPO Case No. D2003-0691;

(b) Six Continents Hotels, Inc v. Asia Ventures, WIPO Case No. D2003-0659;

(c) Shabby Chic Inc v. Asia Ventures, Inc, FA0409000335486;

(d) HBD International, Inc v. Asia Ventures, Inc, CPR 0401;

(e) The Sportsman’s Guide, Inc v. Asia Ventures, Inc, WIPO Case No. D2002-1116;

(f) Dell Inc v. Asia Ventures, Inc, WIPO Case No. D2004-0452.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Thus Respondent has failed to submit any statement. It has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and shall draw such inferences from the Respondent’s default that it considers appropriate without the benefit of any Response from Respondent (paragraph 14(b) of the Rules).

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:

(1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

(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.

A. Identical or Confusingly Similar

The Domain Name consists of the combination of two elements - the Complainant’s name and registered trade mark ASTRAZENECA and the word PHARM which is an abbreviation of ‘pharmaceutical’, the industry sector in which the Complainant is a market leader. It is Panel’s opinion that the addition of the term “pharm” which is referable to Complainant’s business is not sufficient to distinguish the domain name from Complainant’s trademark but on the contrary is likely to increase the confusion between Respondent’s website and Complainant’s business and trademark. In this sense see Six Continents Hotels, Inc. v. Asia Ventures WIPO Case No. D2003-0659: “Further when considering that the word ‘resorts’ is descriptive of the services offered by the Complainant under its HOLIDAY INN SUNSPREE® mark, such does not distinguish the Domain Name from the Complainant’s mark but rather supports a finding that the Domain Name is identical, if not confusingly similar, thereto. See, e.g., Six Continents Hotels, Inc. v. Interbase, Inc., WIPO Case No. D2002-1045 (domain name <royalpalmcrowneplazaresort.com> identical to the Complainant’s ROYAL PALM CROWNE PLAZA RESORT hotel name and service mark)”; and Museum of Science v. Asia Ventures, Inc, WIPO Case No. D2003-0691, where it was found that: “when a domain name wholly incorporates a complainant’s mark and adds a generic word, that is sufficient to establish confusing similarity for the purposes of the Policy.”

In view of all the above, the Panel finds that the domain name <astrazenecapharm.com> is confusingly similar to the Complainant’s trademark ASTRAZENECA.

B. 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 in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that before any notice to the respondent of the dispute, he or she used or 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; or

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

(c) that the respondent 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.

Respondent uses its domain name to re-direct Internet users into accessing websites containing a series of links to other commercial websites. Such use is not a bona fide offering of goods and services under Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy paragraph 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., NAF Case FA 96577 (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204 (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also Kosmea Pty Ltd. v. Krpan, WIPO Case No. D2000-0948 (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Furthermore, Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademarks. There is no record that the Respondent has been known under the disputed domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the above constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. 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.

Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.

The Panel finds that:

Respondent uses the <astrazenecapharm.com> domain name to misdirect Internet users to its own website. Complainant asserts without contest that this redirection is motivated by profit presumably either from commissions for pop-up advertising or referral fees for websites that the disputed domain name links to. The Panel agrees. This diversion of Internet consumers, done for commercial gain, qualifies as bad faith use and registration of a domain name under Policy paragraph 4(b)(iv). In this sense see MBNA America Bank, N.A. v. Vertical Axis, Inc. NAF Case FA 133632, Kmart v. Kahn, NAF Case FA 127708 (finding that if Respondent profits from its diversionary use of Complainant’s mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also America Online, Inc. v. Tencent Comm. Corp., NAF Case FA 93668 (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

In addition, the Respondent also states on the top of its website home page that the domain name <astrazenecapharm.com> is for sale.

The fact that Respondent has chosen to combine for its domain name <astrazenecapharm.com> a generic term such as <pharm> together with the trademark ASTRAZENECA, which is a combination that strengthens the idea of an existing connection between Complainant and the domain name is another inference of bad faith registration.

Complainant submitted sufficient elements to infer that Respondent was aware of Complainant’s rights when it registered the disputed domain name. The Panel thus notes that actual knowledge of Complainant’s rights at the time of the registration of the disputed domain name has been repeatedly held by previous panels as inference of bad faith registration.

Furthermore, Respondent has established a pattern of infringing on famous marks and then using them to mislead Internet users into viewing linked websites of Complainant’s competitors. See Museum of Science v. Asia Ventures, Inc, WIPO Case No. D2003-0691, Six Continents Hotels, Inc v. Asia Ventures, WIPO Case No. D2003-0659, Shabby Chic Inc v. Asia Ventures, Inc, NAF Case FA0409000335486, HBD International, Inc v. Asia Ventures, Inc, CPR Case 0401, The Sportsman’s Guide, Inc v Asia Ventures, Inc, WIPO Case No. D2002-1116 and Dell Inc v. Asia Ventures, Inc, WIPO Case No. D2004-0452.

The pattern of preventing trademark holders from reflecting their mark on the Internet evidences bad faith use and registration pursuant to Policy 4(b)(ii). See Harcourt, Inc. v. Fadness, NAF Case FA 95247 finding that “one instance of registration of several infringing domain names satisfies the burden imposed by the Policy 4(b)(ii))”; See also Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others.

Respondent has not denied Complainant’s submission and has not asserted, proven or provided the Panel with any elements to consider a different version of the facts.

In view of all the above, Respondent’s registration and use of the disputed domain names constitutes use in bad faith within the meaning of the Policy.

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 name <astrazenecapharm.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist

Dated: April 27, 2005