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Arbitration and Mediation Center
A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner
Case No. D2003-0844
1. The Parties
The Complainants are A. Nattermann & Cie Gmbh, Köln, Germany, and Aventis Pharma SA, Antony, France, represented by Selarl Marchais De Candé, France.
The Respondent is Derrick Horner, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lipostabildirect.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2003. On October 28, 2003, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On October 28, 2003, Dotster, Inc. transmitted by email to the Center its verification response confirming in particular that the Respondent was listed as the registrant and providing the contact details for the administrative 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 November 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2003.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 4, 2003. 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
Aventis Holding and its affiliate companies A. Nattermann & Cie GmbH and Aventis Pharma SA have their activities in the pharmaceutical business. Aventis offers a wide range of drugs to treat patients throughout the world. One of these drugs is sold by A. Natterman & Cie GmbH under the trademark LIPOSTABIL.
LISPOSTABIL solution is an intravenous drug product which contains phosphatidylcholine (commonly called lecithin). LIPOSTABIL solution is a lipid lowering agent which has been approved in a number of countries for the prophylaxis and therapy of fat embolism.
A. Nattermann & Cie GmbH is the holder of several trademarks under the name LIPOSTABIL, for pharmaceutical products in particular:
- In Germany, registration n° 675648, registered on January 23, 1954, in class 5;
- In Brazil, registration n° 006053963, registered on February 25, 1995, in classes 5 and 13;
- International Registration n° 2R 186130, renewed for the last time on July 11, 1995, for Benelux, Croatia, Estonia (subsequent designation), Italy, Slovenia, Spain, Switzerland and San Marino, in classes 1 and/or 5 depending upon the countries.
- International Registration n° R 435 495, renewed for the last time on January 7, 1998, for Armenia, Belarus, Czech Republic, Georgia, Kazakhstan, Latvia, Lithuania, Russian Federation, Slovak Republic and Ukraine, in classes 1 and 5;
- In Nigeria, registration n° 41765, registered on May 5, 1982, in class 5 (currently being renewed);
- In Russia, registration n° 168131, registered on June 19, 1997, in class 5;
- In South Africa, registration n° 2524/58, registered on July 31, 1972, in class 5 (currently being renewed for the third time);
- In Turkmenistan, registration n° 6950, registered on September 16, 1998, in classes 1 and 5;
- In Zambia, registration n° 11/75, registered on January 8, 1975, in class 5.
A. Natterman & Cie GmbH also has trademark applications pending in the United Arab Emirate and in the United States of America under the name LIPOSTABIL.
On August 31, 2003, the Respondent registered the domain name <lipostabildirect.com>.
On September 11, 2003, Aventis Pharma SA transmitted the following e-mail to the Respondent:
We are the attorneys representing Nattermann & Cie GmbH, an affiliate of Aventis, with regard to trademarks and domain names matters.
We have become aware of your use of the domain name LISPOSTABILDIRECT.COM. Despite the fact that your use of this trademark is an illegal infringement on Nattermann’s trademark rights, in an effort to solve this matter amicably, we propose your return the above domain name to us without any delay.
Aventis, through its affiliate Nattermann, has invested significant sums of money, effort and time in using, advertising and promoting goods bearing the trademark LIPOSTABIL. We own trademark registrations worldwide for this trademark. Accordingly, any use by another of a mark or domain name resembling our mark has the unacceptable tendency to sever the identification and unlawfully and irreparably damages our company’s trademark assets.
Your registration of the domain name LIPOSTABILDIRECT.COM therefore violates our trademark rights and will cause confusion among our customers.
If we do not receive your confirmation that you are returning the domain name to us within 8 days, we will initiate appropriate measures to stop the illegal use of our trademark.
We look forward to your prompt response.
Aventis Pharma SA"
On September 18, 2003, the Respondent replied in the following way:
"To Whom it may concern
I understand that you have recently applied for trademark in the United States and I would not hesitate to cease use of your trademark. However, I have purchased this domain name and made significant investments in my business.
At this, I to, welcome an amicable resolution. How will I be compensated for my loss and sale of this domain name. I look forward to your prompt response. I can be reach at Respondent’s e-mail address.
5. Parties’ Contentions
1. Procedural issues
The Complainants contend that Aventis Pharma SA has been designated by Aventis SA to manage all the domain names belonging to the Aventis group, and should therefore be allowed to file a claim under the UDRP.
2. Identical or Confusingly Similar
The Complainants affirm that the domain name is quite identical to the trademark LIPOSTABIL, as the mere addition of the word "direct" has no influence upon the overall impression produced by the domain name and does not exclude the likelihood of confusion.
3. Rights or Legitimate Interests
The Complainants assert that the Respondent has no rights or legitimate interests in the domain name, as:
- Neither the word "Derrick" nor the word "Horner" has any resemblance with the domain name "LIPOSTABIL";
- The domain name <lipostabildirect.com> automatically redirects the user to the following web site: "www.dotdnr.com/park.htm". This website states that "this domain has been parked for free at Domain Name Registration", which clearly demonstrates according to the Complainants that the Respondent has no rights or legitimate interests in the domain name;
- There has never been any relationship between the parties.
4. Registered and Used in Bad Faith
The Complainants allege that the domain name was registered and is being used in bad faith for the following reasons:
- The Respondent was undoubtedly aware at the time of the registration of the domain name of the existence of the drug named LIPOSTABIL and of the related trademarks;
- The Respondent asserted in his e-mail of September 18, 2003, that he had made significant investments, but never brought any evidence related to these costs;
- The fact that the domain name automatically redirects the user to the web site "www.dotdnr.com" where the domain name is offered for sale is another sign of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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. Procedural Issues
The Complainants contend that Aventis Pharma SA has been designated by Aventis SA to manage all the domain names belonging to the Aventis group, and should therefore be allowed to file a claim under the UDRP. However, the Complainants do not bring any evidence supporting these assertions.
Policy, paragraph 4 (a)(i) is clear and provides that the Complainant needs to have rights in a trademark or service. A. Nattermann & Cie Gmbh is the sole holder of all the relevant trademarks in the present case, at the exclusion of Aventis SA. There is no evidence in the file that Aventis SA would be entitled to exercise the trademark rights in the name of A. Nattermann & Cie GmbH. For these reasons, the Panel considers that Aventis Pharma SA does not satisfy the requirements of the Policy to file a Complaint. Thus, the decision will be ordered with regards to A. Nattermann & Cie GmbH as the sole Complainant in this case. It will be up to A. Nattermann & Cie GmbH to decide if the domain name has to be transferred to Aventis SA (see infra "7. Decision").
B. Identical or Confusingly Similar
According to Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the holder of several registered trademarks which consist of the word "LIPOSTABIL". It has therefore established its rights in these marks.
Though not identical, there is no doubt that the domain name <lipostabildirect.com>
is confusingly similar to the Complainant’s trademarks. The only difference
between the domain name and the Complainant’s trademarks is the addition of
the word "direct" to the word "lipostabil". However, "direct"
being a generic word, the dominant element remains "lipostabil". Several
decisions have correctly stated that the mere addition of a generic word does
not exclude the likelihood of confusion which exists between a trademark and
a domain name (see among others: Toyota France and Toyota Motor Corporation
v. Computer-Brain, WIPO Case No. D2002-0002;
W.L. Gore & Associates Inc. v. Bernie Bartholome, WIPO
Case No. D2001-1347 and Strålfors AB v. P D S AB, WIPO
Case No. D2000-0112). In other words, the mere addition of the word "direct"
has not such an influence upon the overall impression that it would exclude
the likelihood of confusion between the domain name and the Complainant’s trademarks.
Accordingly, the Panel finds that Policy, paragraph 4(a) (i) has been satisfied.
C. Rights or Legitimate Interests
According to Policy, paragraph 4(b) (ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.
In Do the Hustle, LLC v. Tropic Web, WIPO
Case No. D2000-0624, the Panel stated: "Where a complainant has asserted
that the respondent has no rights or legitimate interests in respect of the
domain name, it is incumbent upon the respondent to come forward with concrete
evidence rebutting this assertion."
In this case, the Respondent does not bring any evidence that would demonstrate any legitimate interest or right in the domain name as he did not proceed. More specifically, the Respondent does not demonstrate that:
(i) before any notice to him of the dispute, he 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
(ii) he is commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) he is 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.
The lack of rights and legitimate interests of the Respondent in the domain
name is supported by the fact that, in his e-mail of September 18, 2003,
the Respondent refers to the US trademark application, which had not even been
mentioned by Aventis Pharma SA in its e-mail of September 11, 2003.
Thus, one has to conclude that the Respondent had knowledge of the Complainant’s
trademarks. His choice for such a domain name cannot be explained but as a misappropriation
of the Complainant’s trademarks. As stated in Madonna Ciccone, p/k/a Madonna
v. Dan Parisi and "Madonna.com", WIPO
Case No. D2000-0847, "use which intentionally trades on the fame of
another cannot constitute a bona fide offering of goods or services […].
To conclude otherwise would mean that a Respondent could rely on intentional
infringement to demonstrate a legitimate interest, an interpretation which is
obviously contrary to the intent of the Policy."
For this reason, the Panel admits the Complainant’s contentions and considers Policy, paragraph 4(a)(ii) to be fulfilled.
D. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4 (a)(iii)).
Based upon its general power (Rules, paragraph 10(a)), the Panel checked the website associated with the domain name at issue. The Respondent’s domain name does not redirect the user to "www.dotnr.com" anymore, but points to a website which is a mere collection of links to other websites. This however does not change the Panel’s opinion.
Considering all the elements submitted to the Panel, there is no doubt that the domain was registered and is being used in bad faith:
a) As correctly pointed out by the Complainant and already mentioned, the Respondent was aware of the existence of the Complainant’s trademarks, as he mentions the existence of a US trademark application in his e-mail of September 18, 2003, despite the fact that Aventis Pharma SA does not refer to this application in its e-mail of September 11, 2003.
b) In his e-mail, the Respondent contends to have made important investments related to the domain name at issue. However, the Respondent did not bring any evidence supporting these allegations, did not construct any website to use the domain name with a bona fide offering of goods or services, and did not proceed, which surely would be the case if such important investments had been made in connection with the domain name.
c) In his e-mail, the Respondent himself admits that he infringes the Complainant’s
trademark rights and will cease use of the domain name. This sole circumstance
already demonstrates that the domain name was registered and is used in bad
faith (see: PACCAR, Inc. v. Enyart Associates and Truckalley.com, LLC,
WIPO Case No. D2000-0289).
d) Once all these elements have been taken into account, there can be no plausible explanation for Respondent’s activities in establishing the domain names other than to try and sell it to the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the domain name (Policy, paragraph 4 (b)(i)).
For all these reasons, the Panel finds that Policy, paragraph 4(a)(iii), has been satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lipostabildirect.com> be transferred to the Complainant.
Dated: December 8, 2003