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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventis Pharmaceuticals Holdings Inc., Aventis
(Ireland) Ltd. v. DFX
Case No. D2007-0178
1. The Parties
The Complainant is Sanofi-Aventis, Paris, France; Aventis Pharmaceuticals Holdings Inc., Greenville, United States of America; and Aventis (Ireland) Ltd., Dublin, Ireland, together represented by Selarl Marchais De Candй, Paris, France.
The Respondent is DFX, Sunset Beach, California, United States of America,
represented by Lawrence J. Hilton, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sculptracosmetic.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2007. On February 12, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 12, 2007, 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 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 February 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2007. The Response was filed with the Center on March 8, 2007.
The Center appointed James A. Barker as the sole panelist
in this matter on March 26, 2007. 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,
4. Factual Background
The Complainant, Sanofi-Aventis, was formed in 2004, as a result of the merger of two French companies: Aventis SA and Sanofi-Synthelabo. The Complainant claims that this merger established it as the No.1 pharmaceutical group in Europe, and No. 3 in the world, with sales in 2005 of €27.3 billion.
The other joint Complainants in this matter, Aventis (Ireland) Ltd and Aventis Pharmaceutical Holdings Inc., are affiliate companies of the Complainant, Sanofi-Aventis (for convenience, all joint Complainants are referred to in this decision as ‘the Complainant’). The Complainant has a direct presence in more than 100 countries in 5 continents.
In the field of dermatology, the Complainant has developed and sold throughout the world, under the trademark SCULPTRA, a drug which restores/corrects facial fat loss (lipoatrophy) in people with human immunodeficiency virus or cancer. The Complainant maintains a website relating to this drug at “www.sculptra.com”. The Complainant has also registered similar domain names in the .net, .org, .biz, and .us domains.
The Complainant has registered rights in the trademark SCULPTRA, in a large number of countries. The Complainant attaches evidence of those rights to the Complaint. Among other countries, its mark is registered in the United States of America, where the Complainant resides.
The Respondent registered the disputed domain name
on September 20, 2004. The disputed domain name reverts to the Respondent’s
website at “www.dermfx.com”. The website markets skin-related products,
and includes the statement “Dermfx is no No.1 in Orange County for Radiance/Radiesse
and Sculptra! Platinum in Restylane and Platinum Plus in Botox®”.
5. Parties’ Contentions
The Complainant claims that the Respondent has appropriated its SCULPTRA mark, and merely added the word “cosmetic”, which relates to the Complainant’s field of activity. The disputed domain name reproduces the Complainant’s mark entirely. The mark has no particular meaning and is therefore highly distinctive. The incorporation of such a mark in a domain name renders the disputed domain name confusingly similar to the Complainant’s mark. The addition of the word “cosmetic” may even reinforce the impression of an affiliation between the disputed domain name and the Complainant.
The Complainant further claims that it is obvious that the Respondent does not have a right or legitimate interest in the disputed domain name. The Respondent does not need to use the disputed domain name. The Complainant has neither licensed nor permitted the Respondent to use its mark in a domain name.
Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith. The Respondent was undoubtedly well aware at the time it registered the disputed domain name, of the notoriety of the Complainant’s trademarks. So much is obvious by the content of the Respondent’s website, which refers to the Complainant’s mark. The Respondent is using the Complainant’s mark to promote its own business and to sell other products.
The Respondent does not dispute that the domain name entirely incorporates the Complainant’s mark. The Respondent states that the addition of the term “cosmetic” describes the purpose for which the product SCULPTRA is used in the course of the Respondent’s business.
The Respondent claims that it does have rights and legitimate interests in the disputed domain name. Rebutting the Complainant’s argument, the Respondent notes that, while it may not need to use the disputed domain name, a lack of necessity is not the equivalent of a lack of a right or legitimate interest. The fact that the Complainant has not licensed or authorized the Respondent to use its mark, also does not establish that the Respondent has no relevant right or legitimate interest.
The Respondent claims it has a right or legitimate
interest in the disputed domain name in connection with a bona fide offering
of goods or services. The Respondent offers services using the product SCULPTRA
as a cosmetic treatment. The Respondent’s website describes the service
the Respondent provides using the product. The Respondent has provided this
service using the product since September 2004. The Respondent claims that it
meets the requirements for demonstrating a bona fide use, as a reseller
of a Complainant’s products, as set out in Oki Data Americas, Inc.
v. ASD, Inc., WIPO Case No. D2001-0903.
That is, the Respondent argues that:
- It actually offers the goods or services at issue;
- It uses the website to sell only the trademarked goods of the Complainant (otherwise, it could be using the disputed domain name to bait Internet users and then switch them to other goods);
- The website accurately discloses the Respondent’s relationship with the Complainant;
- The Respondent has not tried to corner the market
in all domain names, thus depriving the trademark owner the capacity to reflect
its own mark in a domain name.
6. Discussion and Findings
For the Complainant to succeed and have the disputed domain name transferred to it, paragraph 4(a) of the Policy provides that Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove all of these elements. These elements are discussed in turn as follows.
A. Identical or Confusingly Similar
It is not disputed that the Complainant has rights in its registered mark SCULPTRA in many jurisdictions including the United States of America, where the Respondent resides. The Complainant attached evidence of its registered rights in that mark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The mark SCULPTRA is the dominant and distinctive element of the disputed domain name.
The addition of the word “cosmetic” increases the likelihood of confusion. A word attached to a mark will naturally increase confusion if the word creates or emphasizes an association with the Complainant’s business or its mark. By the Respondent’s own account, this is the entire purpose of it adding the word “cosmetic”. The Respondent indicates that the addition of that word is meant to be descriptive of the service that it offers in relation to the Complainant’s product.
B. Rights or Legitimate Interests
The Respondent essentially bases its legitimate interest on the fact that it legitimately offers services connected with the Complainant’s product SCULPTRA. The Respondent thus claims that it is making a bona fide offering of goods or services, for the purpose of paragraph 4(c)(i) of the Policy. However, while the Respondent may legitimately conduct its business, the Panel finds that this does not, in itself, confer on it a right or legitimate interest for the purpose of that paragraph 4(c)(i).
Relevantly, the Respondent refers to requirements for demonstrating a bona
fide offering, as a reseller of a complainant’s products, set out
in Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903. The Respondent claims that it meets the requirements
as summarized in that case, including that it uses its website (to which the
disputed domain name reverts) to sell only the Complainant’s trademarked
goods. The purpose of that requirement, elaborated in the Oki Data case
(and other referred to in that one), is to avoid circumstances where a respondent
uses a complainant’s trademark to divert Internet users, for a purpose
unassociated with or detrimental to the complainant’s mark. Such a purpose
can arise, for example, where a respondent uses the trademark (as incorporated
in a domain name) to offer competing products for sale.
The Respondent in this case claims that the evidence:
“demonstrates that the Respondent uses the website to sell only the trademarked goods. Respondent’s website under the disputed domain name consists of a homepage on which is prominently displayed Respondent’s business name and the proffered service ‘SCULPTRA cosmetic…Only after being conducted to the website www.dermfx.com does the list of all services, including injections of the product SCULPTRA among others, and their respective pricing become available.”
But the Panel finds that the evidence does not, as a question of fact, sufficiently establish that the Respondent only offers the trademarked goods and services. Although it is true that the website prominently displays the terms “SCULPTRA cosmetic”, it is principally a site that advertises the Respondent’s services as a whole. The site also refers to other products and services, among others noting that “Dermfx has been certified as a platinum provider of BOTOX®”, and “We use Hylaform, Restylane, BOTOX®, Radiance and Collagen in any area of the face.” The Respondent’s own site clearly indicates that SCULPTRA is part of a suite of products and services offered by the Respondent.
Another requirement set out in the Oki Data case, to establish a bona fide offering, is that the site must accurately disclose the respondent’s relationship with the trademark owner. The Respondent claims that its website “does not falsely suggest that it is the trademark owner, or that the website is the official site of Complainant or the product SCULPTRA”. But accepting that the site does not make such a false suggestion does not establish that the site actively clarifies its relationship with the Complainant or its mark. In contrast, the website notes that “BOTOX® is a registered trademark of Allergan, Inc.” No similar statement is made on the Respondent’s site in relation to SCULPTRA.
This case, like others involving the question of whether a respondent makes
a bona fide offering of goods or services, is ultimately a question of
fact and degree. The facts of this case do not otherwise indicate that the Respondent
fully meets the criteria in the Oki Data case which, as general principles,
have been consistently applied by panels in various cases. (For example, the
Respondent refers to Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,
WIPO Case No. D2004-0481.) And those criteria
have, in any case, apparently been accepted by the Respondent as a measure of
whether it is making a bona fide offering for the purpose of paragraph 4(c)(i)
of the Policy.
For these reasons, the Panel finds that the Respondent’s use of the Complainant’s trademark extends beyond a type of use that is legitimate for the purpose of paragraph 4(c)(i) of the Policy.
Based on the foregoing the Panel finds that the Respondent does not have rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
For similar reasons, the Panel finds that the Respondent registered, and has
used, the disputed domain name in bad faith. It is fundamental to a finding
of bad faith that a respondent knows of a complainant’s mark and sought
to profit from the reputation of that mark by registering it in a domain name.
The Respondent admits (and it could not conceivably hold otherwise) that it
knew of the Complainant and its mark when it registered the disputed domain
name. As noted above, the disputed domain name is confusingly similar to the
Complainant’s mark. The preponderance of evidence supports a finding that
the disputed domain name created a likelihood of confusion for the purpose of
paragraph 4(b)(iv) of the Policy.
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, <sculptracosmetic.com> be transferred to the Complainant.
James A. Barker
Dated: April 9, 2007