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Countrywide Financial Corporation, Inc. and Countrywide Home Loans, Inc. [2005] GENDND 496 (9 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti

Case No. D2005-0037

1. The Parties

The Complainants are Aventis Pharma S.A., of Antony, France, and Aventis Pharma Deutschland GmbH, of Frankfurt am Main, Germany, represented by Carole Tricoire, France.

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

2. The Domain Name and Registrar

The disputed domain name <buylantus.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2005. On January 14, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 15, 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. 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 January 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2005.

The Center appointed David J.A. Cairns as the sole panelist in this matter on February 28, 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 are affiliate companies, being the French and German wholly owned subsidiaries of the Sanofi-Aventis group. The Sanofi-Aventis group, including the Complainants, are leaders in the pharmaceutical industry. In the field of diabetes the Complainants have developed and sell throughout the world a long-acting basal insulin analogue medicine under the trademark LANTUS.

The Complainant Aventis Pharma S.A. manages all the domain names of the former Aventis group. The Complainant Aventis Pharma Deutschland GmbH is the owner of numerous widely used registrations of the LANTUS trademark in connection with class 5 of the international classification (pharmaceutical products) including the following:

(a) International registration Nş 590,551, first registered August 31, 1992, for the LANTUS trademark;

(b) United States trademark registration Nş 2,183,182, registered on August 25, 1998, for the trademark LANTUS;

(c) Canadian trademark registration Nş TMA577,101, registered on March 7, 2003, for the trademark LANTUS;

(d) Mexican trademark registration Nş 542,648, registered on February 26, 1997, for the trademark LANTUS;

(e) Argentinean trademark registration Nş 1,769,591, for the trademark LANTUS;

(f) South African trademark registration Nş 97/02165, filed on February 12, 1997, for the trademark LANTUS;

(g) Chinese trademark registration Nş 3,098,379, for the trademark LANTUS;

(h) Japanese trademark registration Nş 3,025,781, for the trademark LANTUS;

The Complainant Aventis Pharma S.A. owns the domain name < lantus.com> The Complainants promote its LANTUS medicine and provide information to healthcare professionals and patients from this website.

The Respondent registered the disputed domain name on December 8, 2004. The Respondent was using the domain name (as at January 7, 2005) to direct internet users to the website of CanadaDrugsDiscount.com. This website offered many medicines for sale, but not any of the Complainants’ medicines marketed under the LANTUS trademark.

The Administrative Panel entered the disputed domain name on March 9, 2005. On this date the dispute domain name was parked with the Registrar, GoDaddy Software.

5. Parties’ Contentions

A. Complainant

The Complainants state that there is no doubt that the disputed domain name is confusingly similar to the LANTUS trademark, which it reproduces entirely. The addition of the word ‘buy’, a descriptive term, to LANTUS is not sufficient to alleviate the likelihood of confusion. The noteriety of the LANTUS trademark will increase the likelihood of confusion.

The Complainants state that the Respondent does not have any rights or legitimate interest in the disputed domain name. The disputed domain name does not resemble the Respondent’s name in any way. It is used to take Internet users to a website of CanadaDrugsDiscount.com, which demonstrates that the Respondent was intentionally trying to attract Internet users to its website by creating a likelihood of confusion. The Respondent has not been authorised by the Complainants to use its trademark in this way, nor is there any relationship between the Complainants and the Respondent that could be a source of any rights or legitimate interest.

The Complainants also state that the disputed domain name is being registered and used in bad faith, because the Respondent was undoubtedly aware at the time of registration of the LANTUS trademark and <lantus.com> domain name owned by the Complainants, and sought to take the benefit of the Complainants’ reputation. The Complainants further state that the Respondent intentionally associated ‘buy’ and ‘lantus’ in order to lead consumers to think that the Respondent’s website was devoted to the sale of insulin drugs. The disputed domain name is being used in bad faith as the Complainants’ LANTUS insulin drugs are not in fact available for sale on the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

The Panel is required to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks:

The Administrative Panel accepts that the Complainant Aventis Pharma Deutschland GmbH is the owner of the LANTUS trademark registrations referred to above, and that the Complainants’ products are well known internationally under this trademark.

The disputed domain name is not identical to the LANTUS trademark, but does entirely incorporate the LANTUS trademark, adding the prefix ‘buy’. The practice of adding a prefix or suffix to a well-known trademark has been the subject of numerous UDRP Decisions. Whether, in these circumstances, the trademark and the disputed domain name are confusingly similar depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin (see: Philip Morris USA Inc. v. n/a WIPO Case No. D2004-0462 (August 5, 2004); Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003)).

In the present case, the disputed domain name is confusingly similar to the LANTUS trademark for the following reasons: (i) LANTUS is an invented work with a high degree of inherent distinctiveness reinforced by widespread international use; (ii) ‘buy’ is an ordinary descriptive word; (iii) the word ‘buy’ exploits the trademark signification of LANTUS as an indication of origin as consumers will understand the disputed domain name to offer for sale the Complainants’ insulin medicine; (iv) the prefix ‘buy’ does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion (see Aventis, Aventis Pharma SA. v. John Smith (WIPO Cases No. D2004-0565 and D2004-0624 (September 22, 2004)).

Therefore, for these reasons, there is a confusing similarity between the Complainants’ LANTUS trademarks and the disputed domain name, and so the first element required by the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.

Paragraphs 4(c)(ii) and (iii) of the Policy are clearly not applicable in this case because there is no evidence that the Respondent is commonly known by the disputed domain name, and the evidence establishes the Respondent’s intent to use the domain name for commercial gain. Further, the Complainants have not authorised the Respondent to use the disputed domain name in any way.

The Respondent was using the disputed domain name in connection with the offering for sale of medicines, but this was not a ‘bona fide offering of goods or services’ within the meaning paragraph 4(c)(i) of the Policy. This is not a case where the Respondent was a parallel importer using the Complainants’ trademark to sell the Complainants’ own medicine, either singularly or together with other medicines (as, for example, in Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003)). The Respondent was using the Complainants’ trademark in its disputed domain name to direct users to a website that did not offer for sale the Complainants’ LANTUS medicines, and such use of a domain name is misleading and deceptive. The Respondent was seeking to attract potential buyers of medicines to its website by practising a deception on those seeking LANTUS medicine, and its offer of medicines in this way is therefore not bona fide.

Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Administrative Panel concludes that the Respondent has no legitimate rights or interests in respect of the domain name.

C. Whether the Respondent has Registered and is Using the Disputed Domain Name in Bad Faith:

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, internet users to the website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the website or location.

The Respondent chose a domain name incorporating the trademark of a well known medicine, added the prefix ‘buy’, and used the domain to direct internet users to a website selling discount medicines. In these circumstances, the Panel finds that the Respondent’s choice of domain name was deliberate, with prior knowledge of the Complainants’ trademark, and with the intention to profit from reputation and goodwill of the Complainants’ trademark and medicine. The Respondent registered and has used the disputed domain name with the intention to attract, for commercial gain through increased sales to consumers of discount medicines, internet users to the websites “www.buylantus.com” and “www.canadadrugsdiscount.com> by creating a likelihood of confusion with the Complainants’ trademark as to the source of products on the website (by wrongly suggesting that consumers would be able to buy the Complainants’ insulin medicine) and as to sponsorship, affiliation or endorsement of the Respondent’s website (by wrongly suggesting some connection between the <buylantus.com> domain name and the Complainants).

Article 4(a)(iii) requires that the dispute domain name was not only registered in bad faith, but also ‘is being used’ in bad faith. This language requires that the bad faith must be continuing at the date of the decision. The Respondent in the present case is no longer using the disputed domain name to direct users to a site selling discount medicines, but has desisted from this use and has ‘parked’ the disputed domain name. However, the Respondent has not for this reason ceased to use the disputed domain name in bad faith, because the evidence satisfies the Panel that the Respondent continues to hold and use this domain name with the intention of deceiving internet users and being in a position to take advantage of the commercial reputation of the Complainants’ trademark. Further, current bad faith use might be inferred from passive holding of a domain name in circumstances where (as in the present case) there is no evidence of any possible legitimate use of the domain name by the Respondent (see Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003 (February 18, 2000); Aventis, Aventis Pharma SA. v. John Smith (WIPO Cases No. D2004-0565 and D2004-0624 (September 22, 2004)).

For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name 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 name <buylantus.com> be transferred to the Complainant Aventis Pharma S.A.

David J.A. Cairns
Sole Panelist

Dated: March 9, 2005