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Sanofi-Aventis v. Direct Response Marketing aka DRM [2005] GENDND 632 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GlaxoSmithKline Biologicals S.A. v. David Pfeffer, JeMM Productions

Case No. D2005-0441

1. The Parties

The Complainant is GlaxoSmithKline Biologicals S.A., Brentford, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Stephen Reid, United Kingdom of Great Britain and Northern Ireland.

The Respondent is David Pfeffer, JeMM Productions, Jerusalem, Israel.

2. The Domain Names and Registrar

The disputed domain names:

<cervarix.biz>
<cervarix.info>
<cervarix.net>
<cervarix.org>

<fluarix.net> are registered with Register.com and hereinafter called (the “Disputed Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2005. On April 26, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On 27 April 2005, Register.com 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 May3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2005.

The Center appointed Alistair Payne as the sole panelist in this matter on June 1, 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.

According to the WHOIS database, the registrant of <cervarix.biz>, <cervarix.info>, and <cervarix.org> is David Pfeffer and the registrant of <cervarix.net> and <fluarix.net> is JeMM Productions. The Complaint contends that David Pfeffer and JeMM Productions are one and the same entity on the basis that they share the same contact details and because they registered their respective Disputed Domain Names on the same day. For these reasons the Complainant has requested that the Disputed Domain Names be dealt with in a single Complaint.

On the basis of available information, the Panel agrees that David Pfeffer and JeMM Productions are related entities and consents to the Complainant’s request to deal with the Disputed Domains in a single Complaint.

4. Factual Background

The Complainant is a company registered under the laws of Belgium. It is a wholly owned subsidiary of GlaxoSmithKline plc, one of the world’s leading pharmaceutical companies. The Complainant has submitted evidence that it owns nearly 100 trademark registrations and applications for the CERVARIX mark throughout the world and over a 100 trademark registrations and applications for the FLUARIX mark throughout the world.

CERVARIX is a vaccine for the prevention of cervical cancer, but is not yet available to patients because of ongoing clinical trials. The Complainant has submitted a number of press clippings, including from the UK’s Daily Telegraph and the international medical journal Lancet, from November 2004, reporting on the vaccine’s potential for preventing cervical cancer. FLUARIX is a vaccine for the prevention of influenza, which had nearly £13 million of sales in 2004 alone.

The only background information disclosed in relation to the Respondent is that a panel previously ordered the transfer from it of the domain names <www.caduet.info> and <www.caduet.biz> in CP Pharmaceuticals International CV v. David Pfeffer aka JeMM Productions (NAF Claim No. FA0501000409476).

5. Parties’ Contentions

A. Complainant

Whether the Disputed Domain Names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights

The Complainant contends that it has established legal rights in the words CERVARIX and FLUARIX on the basis of its ownership of numerous trademark registrations around the world.

The Complainant further contends that the domain names <cervarix.biz>, <cervarix.info>, <cervarix.net> and <cervarix.org>are identical or confusingly similar to its CERVARIX trademark and that the < fluarix.net> is identical or confusingly to its FLUARIX trademark.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that there is no legitimate non-commercial or fair use to which the Respondent could put the Disputed Domain Names as they consist solely of the distinctive trademarks of the Complainant.

The Disputed Domain Names were registered and subsequently have been used in bad faith

The Complainant cites four grounds for finding that the Disputed Domain Names were registered and are being used in bad faith by the Respondent.

First, there is no possible legitimate, non-commercial or fair use to which the Respondents could put the Disputed Domain Names as they consist solely of the distinctive trademarks of the Complainant. Accordingly, the Complainant contends that the Disputed Domain Names have been registered so as to prevent the Complainant from reflecting its registered trademarks in domain names, contrary to paragraph 4(b)(ii) of the Policy.

Second, the Respondent is using the Disputed Domain Names to intentionally attract for commercial gain users to their websites by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant has submitted evidence that the Disputed Domain Names resolve to a website that displays a list of external commercial (and presumably fee-paying) websites, which also supports a finding of use in bad faith.

Third, the date of registration of the Disputed Domain Names – November 29, 2004 – is also suggestive of “opportunistic bad faith” as this date coincided with relatively high levels of media coverage of the Complainant’s CERVARIX and FLUARIX products.

Finally, it would have been apparent to the Respondent that the registration of the Disputed Domain Names would unfairly disrupt the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided substantial evidence that it has worldwide registered trademark rights in the CERVARIX and FLUARIX marks. The Disputed Domain Names are identical with the Complainant’s CERVARIX or FLUARIX marks as the case may be.

B. Rights or Legitimate Interests

In the Panel’s view there is no evidence to suggest that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Disputed Domain Names are not common words and comprise the distinctive registered trademarks of the Complainant. There is nothing to suggest that the Respondent is commonly known by the Domain Names or is making a bona fide offering of goods and services connection with the Domain Names. Although in some cases the Domain Names relate to websites containing search engines, there is no apparent link between the Domain Names and any business name belonging to the Respondent. In these circumstances, there is no evidence or reason to infer that the Respondent has any rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

In the Panel’s view all the evidence supports a finding that the Respondent registered and used the Disputed Domain Names in bad faith. In particular, based on the timing of these registrations and evidence of the Respondent’s previous pattern of conduct, the Panel concludes that the Respondent registered the Disputed Domain Names in order to prevent the Complainant from reflecting its registered trademarks in corresponding domain names contrary to paragraph 4(b)(ii) of the Policy. Secondly, certain of the domain names resolve to websites which link through a search engine to specified commercial sites which may well be fee-paying sites. In these circumstances, the Panel is prepared to infer that the Respondent has used the Disputed Domain Names so as to intentionally attract for commercial gain Internet users to websites controlled by it contrary to paragraph 4(b)(iv) of the Policy.

The registration of domain names that are so obviously connected to a Complainant’s trademarks (as is the case in this Complaint), and the very use of them by a Respondent who has no connection to the Complainant suggests “opportunistic bad faith” as held by a previous panel in Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. In the Panel’s view, this is entirely supportive of an inference that the Disputed Domain Names were registered and have been used in bad faith by the Respondent.

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 all the Disputed Domain Names <cervarix.biz>, <cervarix.info>, <cervarix.net>, <cervarix.org> and <fluarix.net> be transferred to the Complainant.

Alistair Payne
Sole Panelist

Dated: June 15, 2005