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Microsoft Corporation v. DOMAeN.com [2005] GENDND 620 (22 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merrell Pharmaceuticals Inc. and Aventis Pharma SA v. Russel Allegra

Case No. D2005-0464

1. The Parties

The Complainants are Merrell Pharmaceuticals Inc., United States of America, and Aventis Pharma SA, France, represented by Mrs. Carole Tricoire, France.

The Respondent is Russel Allegra, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <allegralaw.info> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2005. On April 29, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On April 29, 2005, Dotster, Inc. 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 May 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2005.

The Center appointed Alfred Meijboom as the Sole Panelist in this matter on June 6, 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

Complainants are the French and United States wholly owned subsidiary of Sanofi-Aventis, which is a multinational pharmaceutical company. The first Complainant registered the word marks ALLEGRA and ALLEGRA-D in the United States, Canada, Mexico, Argentina, Brazil, South Africa, Taiwan and China in the period of 1997 until 2003 for pharmaceutical preparations in international class 5. Complainants widely use the trademarks for pharmaceutical products.

Complainant’s official website is “www.allegra.com”, which they registered in 1998. In 2000, they registered the domain names <allegra-d.com> and <allegrad.com>.

Respondent registered the domain name <allegralaw.info> (the “Domain Name”) on December 25, 2004.

Apparently in April 2005, the homepage of the website under the Domain Name displayed what seems to be a general site of the registrar with a search engine. The homepage contained links, including a link to Allegra, which redirected the user to a site which promotes and sells ALLEGRA and ALLEGRA-D drugs.

Around April 25, 2005, Complainants sent an e-mail to the administrative contact of the Domain Name asserting that Respondent’s use of the Domain Name infringes its trademarks and requiring transfer of the Domain Name. On April 26, 2005, the administrative contact responded as follows:

“You have reached the administrator of the website. Please contact the owner of the website, Cathy Allegra (copied on this email) to discuss this issue further.

Given that the last name of the owner is Allegra and they are a law firm, I do not see any infringement on your trademark or any possible confusion that could arise from the use of this domain.”

Complainants did not contact Cathy Allegra, nor did Cathy Allegra or the Respondent contact Complainants.

When the Panelist checked the website under the Domain Name, the following text was displayed:

“Allegra Law

Our site is current under construction but you may contact us via the information below.

Russel M. Allegra

Barrister and Sollicitor

[followed by telehone, fax and address details]”.

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 Name, the Complainants are required to prove that the following three elements are met:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

The Complainants made the following assertions with respect to these elements:

(i) The Domain Name is identical or confusingly similar to the trademarks in which the Complainants have rights.

The first Complainant is owner of a number of registered word marks ALLEGRA and ALLEGRA-D, which Complainants use in a number of jurisdictions for pharmaceutical products. The Domain Name includes the entire trademark ALLEGRA, and only adds the generic word “law”. According to a great many panel decisions adding a generic word to a trademark is insufficient to escape finding similarity between the trademark and the Domain Name. The mentioned trademarks of Complainants are famous, and Internet users could think there is a link between the Domain Name and Complainants’ trademarks, for which reason a likelihood of confusion exists.

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

According to the Whois register, the Domain Name has been registered by an ID name c9508621-LRMS of an unidentified registrant, which was only changed in the Name of Respondent after the exchange of emails around April 26, 2005. At that time, the website under the Domain Name offered users a link to a website that offered ALLEGRA and ALLEGRA-D products for sale. Respondent was not authorized by Complainants to present or sell ALLEGRA or ALLEGRA-D products nor to use these trademarks or to register a domain name which includes these trademarks. The absence of permission and the lack of connection between the choice of the Domain Name and Respondent’s website proves that Respondent has no right or legitimate interests in respect of the Domain Name.

(iii) the Domain Name was registered and is being used in bad faith.

Respondent was undoubtedly aware of Complainants’ aforementioned trademarks and domain names at the time he registered the Domain Name and used the Domain Name in order to take advantage of the well-known trademarks of Complainants. As the Respondent was aware of the illegitimate use of the Domain Name and had no need or reason to use the Domain Name he registered, he used the Domain Name in bad faith.

B. Respondent

Apart from the Domain Name administrator’s email of April 26, 2005, Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Complainants requested the Panelist to order the Domain Name to be transferred to them. Pursuant to paragraph 4(a) of the Policy, such order shall be granted if Complainants successfully prove the three elements as discussed below.

A. Identical or Confusingly Similar

The Domain Name includes the trademarks ALLEGRA and almost the entire trademark ALLEGRA-D of the first Complainant, and only adds “law” to it. The word “law” is merely descriptive, and as such does not take away the similarity between the trademark and the Domain Name.

It is, however, not sufficient that the Domain Name is similar to the trademarks of Complainants, it should be confusingly similar. The Panelist is satisfied with Complainants’ pima facie evidence of the existence of a likelihood of confusion because of the fact that the ALLEGRA and ALLEGRA-D trademark are well known – also in Canada where Respondent lives – and the website under the Domain Name offered the possibility to easily link to a website which offers ALLEGRA and ALLEGRA-D drugs for sale.

Therefore, Complainants successfully proved the existence of the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, Respondent can prove that he has a right or legitimate interest in the Domain Name if:

“(i) before any notice to you (i.e. the Respondent) of the dispute, your use of, or demonstrable 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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As the Respondent chooses not to reply to the Complaint, the Panelist can only marginally verify the assertions of Complainants in the light of all the facts presented to him. Complainants contend that Respondent has no rights or legitimate interests in the Domain Name because the website under the Domain Name allowed the visitor to directly link to a website offering Complainants’ products for sale, without Complainants’ authorization.

On April 26, 2005, the administrator of the Domain Name wrote to Complainants stating that the Registrant was named Allegra and operated a law firm. As Complainants apparently did not investigate this defense and possibly did not believe it, the Panelist understands that Complainants thereby implied that Registrant did not use a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, or that Registrant (as an individual, business, or other organization) had not been commonly known by the Domain Name (or Allegra Law).

In absence of the Respondent’s reply, the Panelist tested this implicit assertion by checking public directories on the Internet. The Panelist used the details of the Respondent as they appear in the Whois register and as published on the website under the Domain Name, and checked the Canadian telephone directory on the name and address of Respondent on “www.yellowpages.ca”, as well as the telephone number by means of a reverse search on “www.reversephonedirectory.com”. Both searches listed the Respondent on the address of Respondent’s website. The Respondent further found an entry of the Respondent on the website of the Criminal Lawyers Association (“www.criminallawyers.ca”), with the name and telephone number as on Respondent’s website.

Complainants were aware of the defense that Respondent operated a law firm under his name, but did not discuss it. The Panelist believes it improbable that different telephone directories incorrectly list Respondent’s details and that the website of the Criminal Lawyers Association incorrectly lists Respondent as a solicitor under his name and telephone number. Complainants were, however, silent on Respondent’s background. If Complainants would have been of the opinion that Respondent is not a lawyer, they should have shared such an opinion with the Panelist and provided evidence thereof.

The Panel is also aware of the possibility of identity theft for the purpose of registration of domain names, but the Panel has no indication that it is the case here.

In absence thereof, the Panelist is of the opinion that Respondent is likely to work as a criminal lawyer under his own name and is therefore using his name for bona fide offering of legal services, and is therefore commonly known under the Domain Name.

Therefore, Complainants failed to prove the existence of the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

As the Panelist established that the Respondent has a right and legitimate interest in the Domain Name this third element needs no further discussion.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alfred Meijboom
Sole Panelist

Dated: June 19, 2005