A. Nattermann & Cie Gmbh.; Aventis Pharma SA v. Romero Numeriano

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Romero Numeriano

Case No. D2003-0778

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 Romero Numeriano, Recife, Brazil.

2. The Domain Name and Registrar

The disputed domain name <lipostabil.info> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2003. On October 6, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. A Copy of the printout of WHOIS information, printed before the Notification of Complaint, confirms that the Respondent is listed as the registrant and provides the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on October 8, 2003, that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on October 9, 2003, by email, hardcopy of which was received on October 14, 2003. The Center verified that the Complaint together with the amendment to 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 October 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 4, 2003. The Notification of Complaint and Commencement of Administrative Proceeding, a copy of the Complaint (with attachments) and a copy of amendment to Complaint were dispatched by DHL courier and email to the Respondent. The tracking record of DHL shows that delivery of these documents was unsuccessful like, apparently, notification via email. The Complainants stated in their Complaint that a copy thereof had been sent by registered letter to the Respondent on October 3, 2003 (Complaint, para. 17 p. 19).

The Panel is satisfied that the Center has complied with its obligations under

paragraph 2(a) of the Rules "to employ reasonably available means calculated

to achieve actual notice to Respondent" (see e.g. Charles Schwab & Co,

Inc. v Polanski, WIPO Case No. D2001-0959).

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2003.

The Center appointed Christophe Imhoos as the sole panelist in this matter on November 11, 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, and rendered his decision within the time-limit granted.

4. Factual Background

Aventis Holding and its affiliate companies A.Nattermann & Cie Gmbh and Aventis Pharma SA, the Complainants in this administrative proceeding, are leaders among the pharmaceutical companies in the world.

Aventis offers a wide range of patented prescription drug to treat patients whilst, in the field of dermatology, A. Nattermann, wholly owned by the Aventis Group, has notably developed and sells throughout the world drugs under the trademark "LIPOSTABIL" which is an intravenous drug product containing phosphatidylcholine (commonly called lecithin) which is a lipid lowering agent which has been approved in a number of countries for the prophylaxis and therapy of fat embolisms (Annex 3 to the Complaint); LIPOSTABIL has been sold in many countries around the world such as, for example, the European Countries, South Africa, South America and, especially, Brazil.

The Complainant submits that and Aventis Pharma SA has been designated by Aventis SA to manage all the domain names belonging to the Aventis Group.

A. Nattermann & Cie Gmbh has rights in the mark "LIPOSTABIL".

These rights are evidenced by the numerous registered trademarks, all over the

world, containing the word "LIPOSTABIL" (Annex 4 to the Complaint)

:

- The German trademark "LIPOSTABIL" n° 675 648 registered

on January 23, 1954, in class 5 and duly renewed;

- The Brazilian trademark "LIPOSTABIL" n° 006053963 registered

on February 25, 1995, in class 5;

- The International trademark "LIPOSTABIL" n° 2R 186 130

designating Benelux, Croatia, Estonia, Italy, Slovenia, Spain, Switzerland and

San Marino renewed twice, the last one being in July 11, 1995, in classes 1

and 5;

- The International trademark "LIPOSTABIL" n° R 435 495

designating Armenia, Belarus, Czech Republic, Georgia, Kazakhstan, Latvia, Lithuania,

Russian Federation, Slovak Republic and Ukraine renewed once in January 7, 1998,

in classes 1 and 5;

- The Nigerian trademark "LIPOSTABIL" n° 41765 registered

on May 5, 1982, in class 5 (renewal in progress);

- The Russian Federation trademark "LIPOSTABIL" n° 168 131 registered

on June 19, 1997, in class 5;

- The South African trademark "LIPOSTABIL" n° 2524/58 registered

on July 31, 1972, duly renewed in 1982 and 1992, in class 5 (last

renewal in progress);

- The Turkmenistan trademark "LIPOSTABIL" n° 6950 registered on September 16,

1998, in classes 1 and 5;

- The Ukrainian trademark "LIPOSTABIL" filed on October 1, 2002,

in class 5 (registration in progress);

- The United Arab Emirates trademark "LIPOSTABIL" n° 4431 registered

on August 5, 1992 (renewal in progress);

- The US trademark application for "LIPOSTABIL" on July 23, 2003,

in classes 5 and 42;

- The Zambian trademark "LIPOSTABIL" n° 11/75 registered on January

8, 1975, in class 5 and duly renewed.

All of these trademarks are registered and are being used by their owner in

connection with classes 1 and 5 of the international classification, i.e.

pharmaceutical products.

5. Parties’ Contentions

A. Complainants

The Complainants submit the following :

(i) The domain name <lipostabil.info> is strictly identical to the trademark

"LIPOSTABIL" registered by the Complainants; the mere addition of the ".info"

is far from being sufficient to suppress the likelihood of confusion; on the

contrary, it emphasizes this likelihood of confusion since ".info"

is only a generic top level domain name.

The domain name <lipostabil.info> entirely reproduces the term "LIPOSTABIL"

which is a neologism invented by A. Nattermann & Cie Gmbh and is therefore

highly distinctive. The word LIPOSTABIL is a contraction of the words "LIPOSUCTION"

and "STABILISATION.

The domain name <lipostabil.info> generates a likelihood of confusion

for the consumers by letting them think that Aventis and A. Nattermann Gmbh

agreed to the registration of this domain name by the Respondent.

Consequently, this domain name is strictly identical or confusingly similar

to the trademark LIPOSTABIL owned and widely used by the Complainants all over

the world, and especially in Brazil, as an active Trademark.

(ii) The Respondent should be considered as having no rights or legitimate

interests in respect of the domain name that is the subject of the Complaint.

The Respondent, Romero Numeriano, does not have any legitimate interest to

use the domain name <lipostabil.info> since neither the term "Romero"

nor the term "Numeriano" have any resemblance with the word "LIPOSTABIL".

The domain name <lipostabil.info> leads to a home page where it

can be seen that the activity of the Respondent is in the field of the on line

sale of cosmetics and nutritional supplements; within all this website dedicated

to the sale of hundreds of cosmetic and nutritional supplements, there are two

references to the term "LIPOSTABIL" (Annex 5 to the Complaint).

These references are not made in relation to the Respondent’s domain of activity

but to the Complainants’ LIPOSTABIL drug.

In addition, the Respondent presents himself as Brazil Nutrition which is specialized

in virtual selling of products including natural products, like vitamins, minerals,

and nutritional supplements ("Uma loja virtual especializada na disponibilização

de produtos naturais avançados, como vitaminas, minerais e outros suplementos

alimentares"); all these services are presented as services offered

by Brazil Nutrition which has a website "www.braszilnutrition.com.br", linked

to "www.rumo.com.br" (Annex 6 to the Complaint).

Thus, the Respondent has absolutely no reason to use the Complainants’ trademarks

"LIPOSTABIL" and there is no doubt that, by using the litigious domain

name, Romero Numeriano intentionally attempted to attract consumers for financial

gain.

Indeed, the Respondent knows, that the public, which is familiar to the Complainants’

trademarks, will expect to find under the domain name <lipostabil.info>

information on the LIPOSTABIL product.

Therefore, the Respondent has no prior rights and/or legitimate interest to

justify the use of the already famous and worldwide known trademarks "LIPOSTABIL".

The Complainant has never licensed or otherwise permitted the Respondent to

use its trademarks or to register any domain name incorporating the above-mentioned

trademarks.

As a result, the circumstances described under Paragraph 4(b)(iv) of the Policy

are met.

(iii) The domain name should be considered as having been registered and used

in bad faith.

The Respondent was aware at the time of the registration of the litigious domain

name of the existence of the drug named "LIPOSTABIL" developed and

sold by A.Nattermann & Cie Gmbh and Aventis, and the trademark "LIPOSTABIL"

owned by A. Nattermann & Cie Gmbh and Aventis.

The Respondent registered its domain name in order to abusively benefit from

the Complainants’ notoriety. The LIPOSTABIL trademark has been created in the

50’s and since then has become a world-famous trademark, especially in Brazil

which is the world biggest market for the sale of this drug.

Moreover, there is no doubt that by registering this name, the Respondent seeks

to attract Internet users who are seeking to find information about the LIPOSTABIL

product and intends to benefit from the Complainant’s fame in Brazil.

The Respondent intentionally registered this domain name because he knew that

his business could take advantage of LIPOSTABIL trademark since it could generate

traffic.

Consequently, the domain name <lipostabil.info> have been registered

in bad faith by the Respondent who knew that considering the reputation of the

Complainants he will create a likelihood of confusion by using this domain name.

The use made by the Respondent of the litigious domain name leads to a risk

of confusion within the meaning of Paragraph 4(b)(iv) of the Policy.

The website in dispute is just used as an entrance to the Respondent’s website

(see Annexe 5 to the Complaint); by using the domain name <lipostabil.info>

the Respondent tries to use the reputation of the Complainants to generate more

traffic to his websites.

This use of the litigious domain name is prejudicial to the Complainants because

of the consumer or the Internet user disappointment coming across this website

when he is looking for information on LIPOSTABIL, especially since each time

the Respondent is mentioning LIPOSTABIL, it is only to discredit this product,

implying that it is less efficient than the other one offered.

The reproduction of the Complainants’ trademark, without being authorized,

creates a confusion for consumers who want information about the drug sold by

Aventis and A.Nattermann & Cie Gmbh.

Therefore, having undoubtedly the knowledge of the Complainants’ trademark

LIPOSTABIL, the Respondent can be assumed to have been aware of the risk of

deception and confusion that would inevitably follow when using this domain

name.

Moreover, the domain name <lipostabil.info> was registered and is being

used for a commercial purpose: by using on this website the trademark of the

drug sold by the Complainants, Romero Numeriano intentionally uses the fame

of the trademarks of the Complainants for financial gain; the Respondent just

wants to attract consumers with the domain name <lipostabil.info> in order

to sell cosmetic products promoted as alternate to LIPOSTABIL along with nutritional

supplements.

There is no doubt that the disputed domain name is registered

and being used in bad faith with the only purpose to benefit from the reputation

of the Trademark of the Complainants.

As a result, the circumstances described under Paragraph 4(b)(iv) of the Policy

are met.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be

met for the Panel to order the transfer of the disputed domain name to the Complainant.

Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

The Complainant must prove in the administrative proceeding that each of the

aforesaid three elements is present so as to warrant relief, according to Paragraph

4(a) of the Policy.

The Panel has 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 applicable, pursuant to Paragraph 15(a) of said Rules.

In accordance with Paragraph 14(b) of the Rules, if the Respondent does not

submit a Response, in the absence of exceptional circumstances, the Panel shall

decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainants have established their rights in the trademark "LIPOSTABIL"

with various registrations for such a name (see Annex 4 to the Complaint), especially

in the country where the Respondent is registered, i.e. Brazil.

The Complainants have submitted conclusive evidence that their trademark "LIPOSTABIL"

is confusingly similar to the domain name <lipostabil.info>.

The TLD as well as the use of small or capitalised letters should not be taken

into account when appreciating the question whether there is identity within

the meaning of the Rules (Telstra Corp. Ltd. v. Nuclear Marshmallows,

para. 7.1, WIPO Case No. D2000-0003; Robert

Ellenbogen v. Mike Pearson, Discussion and Findings, A, WIPO

Case No. D2000-0001).

For the above reasons, the Panel finds that the disputed domain is confusingly

similar to Complainants' trademark "LIPOSTABIL".

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances,

if found by the Panel to be proved based on its evaluation of all evidence submitted,

shall demonstrate rights to or legitimate interests in the domain name in dispute.

Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or 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.

The Respondent, in not responding to the Complaint, has failed to invoke any

of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of

the Policy, any rights to and/or legitimate interests in the domain name in

dispute. This entitles the Panel to draw any such inferences from such default

as it considers appropriate pursuant to Paragraph 14(b) of the Rules already

cited above.

Absent evidence to the contrary, the Complainants, as underlined in their Complaint,

have not granted any license or otherwise permitted the Respondent to use the

trademark in question or to apply for any domain name incorporating the said

trademark. In addition, the Respondent is not commonly known by the domain name

in question as rightly submitted by the Complainants.

Furthermore, it is worth mentioning that the Respondent is doing nothing but

using the domain name <lipostabil.info> for commercial purpose.

Under these particular circumstances, the Panel is unable to find any evidence

that would tend to establish that the Respondent has rights or legitimate interests

in respect of the domain name at stake.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances

that evidence registration and use of a domain name in bad faith. Any one of

the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your website or other on-line location,

by creating a likelihood of confusion with the complainant’s mark as to the

source, sponsorship, affiliation, or endorsement of your website or location

or of a product or service on your website or location.

As already mentioned, the Respondent did not file any response to the Complaint,

failing thereby to invoke any circumstance, which could demonstrate his good

faith in the registration or use of the domain name in issue.

Much to the contrary based on the contentions restated above, it is the Panel's

finding that the Complainant has established, with conclusive evidence, (see

Annexes 5 and 6 to the Complaint) a case that the Respondent has behaved according

to the circumstances described under Paragraph 4(b)(iv) of the Policy.

The Respondent clearly using the domain name to attract Internet users by creating

a likelihood of confusion with Complainants’ trademark.

As regards bad faith registration, the Panel follows the Complainants' contentions

that the Respondent was undoubtedly aware, at the time of the registration of

the domain name in question, of the existence of the "LIPOSTABIL"

product developed and sold by the Complainants.

Therefore, the panel finds that the domain name <lipostabil.info> should

be considered as having been registered and used 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 <lipostabil.info>

be transferred to Aventis Pharma SA.

Christophe Imhoos

Sole Panelist

Dated: November 25, 2003