Aventis Pharma SA.; Merrell Pharmaceuticals Inc. v. Lana Carter

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana

Carter

Case No. D2004-1041

1. The Parties

The Complainants are Merrell Pharmaceuticals Inc., of Greenville, Delaware, United States of America and Aventis Pharma S.A. of Antony, France, represented by Carole Asenci, France.

The Respondent is Lana Carter, of Sharpsburg, West Virginia, United States

of America.

2. The Domain Name and Registrar

The disputed domain name <allegra-top-pharmacy.net> is registered with

Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in electronic format, on December 10, 2004, and in hard copy, on December 14, 2004. On December 10, 2004, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 16, 2004, the registrar transmitted by email to the Center its verification response confirming that it was the registrar of the disputed domain name, that the Respondent is listed as the registrant, and that the Policy is in effect in respect of the domain name, and providing contact details for the administrative, billing, and technical contacts.

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 December 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2005. No response was received by the Center from the Respondent. Accordingly, the Center notified the Respondent’s default on January 11, 2005, and appointed Seth M. Reiss as the sole panelist in this matter on January 12, 2005.

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.

The Panel has examined the communications of the Center and the Complainant, and the Complaint. The Panel confirms that each complies with the formal requirements of the Policy, the Rules and the Center’s Supplemental Rules, and specifically, that the Center complied with paragraph 2(a) of the Rules in communicating the Complaint and applicable response deadline to the Respondent, and with paragraph 2(b) of the Rules in notifying the Respondent of her default and appointment of the panel. The Panel further confirms that the Administrative Panel was properly constituted.

The language of the proceeding is English.

4. Factual Background

Complainants Merrell Pharmaceuticals Inc. and Aventis Pharma S.A. are U.S. and French affiliates, respectively, of the Aventis group of companies (“group Aventis”). Group Aventis is a global leader in the field of pharmaceuticals, offering a wide range of prescription drugs designed to address a variety of medical conditions. Complainant Aventis Pharma S.A. is group Aventis’ affiliate designated to manage all group Aventis’ domain names.

Among the patented prescription drugs marketed by Complainants is a drug branded ALLEGRA used to respond to the medical condition known as allergic rhinitis. The mark ALLEGRA is widely registered and used by Complainants in relation to pharmaceuticals. Complainant Merrell Pharmaceuticals Inc. (“Complainant Merrell”) is the record owner of registration no. 2,067,728 for the mark ALLEGRA in international class 005 issued June 3, 1997, by the United States Patent and Trademark Office. The mark ALLEGRA is also registered to Complainant Merrell on the trademark registers of a variety of other countries with issue dates as early as 1995.

Complainants also use their ALLEGRA mark in the context of the domain name <allegra.com>, and on a website residing at this domain name. The <allegra.com> domain name was registered by Complainant Merrell on June 4, 1998. Complainants use the “www.allegra.com” website to present information concerning their ALLEGRA branded drug, as for example, information pertaining to treatments, indications and side effects.

Data available from registrar Moniker Online Services, LLC indicates that Respondent Lana Carter is an individual doing business from an address in Sharpsburg, West Virginia. As Respondent chose not to participate in this proceeding, there is no independent confirmation regarding Respondent’s identity or the manner in which Respondent does business, apart from what is revealed by the contents of the website residing at the disputed domain name.

The domain name <allegra-top-pharmacy.net> (“disputed domain name”) was registered on September 19, 2004. Respondent is using the disputed domain name as the web address of a site that advertises a wide range of brand name prescription medications, including ALLEGRA. The trademark registration symbol ® appears adjacent to the brand ALLEGRA as well as adjacent to other brand names advertised on Respondent’s website.

A disclaimer at the bottom of the “www.allegra-top-pharmacy.net” homepage explains that “[t]he ordering, re-ordering, processing of orders and customer care are all provided exclusively by partner pharmacies of this site, and based on their regulations. It is up to the sole discretion of our partners` pharmacists to decide whether to actually sell a desidred (sic) medication to a requesting customer. This site neither sells medications, nor fills prescriptions, nor fulfills orders. It merely markets to its visitors its partner pharmacies . . . .” The disclaimer also states that “[a]ll trademarks, brand names and related brand images used on this site are the property of the respective trademark holders. This site is not and never has been affiliated with any of these holders in any sense.”1

Hyperlinks that underlie the drug brand names on Respondent’s “www.allegra-top-pharmacy.net” website take the Internet user to other websites that offer to sell the brand name drug. For example, by clicking on the word ALLEGRA that appears at the top of the “www.allegra-top-pharmacy.net” website, the Internet user is taken to the websites “www.pharmacy-24x7.net” and “www.top-pharmacy.us”, each of which offer to sell the user ALLEGRA and other brand name drugs.

The “www.pharmacy-24x7.net” and “www.top-pharmacy.us”

websites also advertise an “Affiliates Program”. As explained by

text linked to the “www.pharmacy-24x7.net” website: “The online

pharmacy market is booming. More and more people are realizing that it's faster,

less expensive and more convenient to order their prescription drugs online.

Now you can profit from the success of this market by opening your own online

pharmacy.” The webpage goes on to state that “[w]e offer two different

methods for earning money: 1. Link to our site - This is the preferred method

if you want to get started quickly and easily. There's no investment required.

After you sign up, we'll send you links and banners that you can add to your

site. You'll earn a flat $20 commission on each purchase from customers that

you refer to us.” The second method for earning money is to open one’s

own online pharmacy.

5. Parties’ Contentions

A. Complainants

Complainants contend that they hold rights in the trademark ALLEGRA (“Trademark”) by virtue of their U.S. and other national trademark registrations, and by virtue of the widespread and continuous use of the Trademark in conjunction with their marketing and sale of pharmaceuticals.

Complainants next contend that the domain name <allegra-top-pharmacy.net> is identical or confusingly similar to Complainants’ ALLEGRA trademark. Complainants submit that the domain name <allegra-top-pharmacy.net> and Complainants’ Trademark are visually and phonetically similar. Complainants reason that the disputed domain name is comprised of Complainants’ Trademark, together with a suffix which Complainants’ characterize as composed of generic terms. Complainants assert that it is the word ALLEGRA in the disputed domain name that forms the dominant, or focal, aspect of the domain name. Considering the relative strengths of the terms that comprise the <allegra-top-pharmacy.net> domain name, Complainants maintain that the similarity between their Trademark and Respondent’s domain name gives rise to public misconception and confusion.

Complainants further contend that Respondent has no rights or legitimate interests in respect of the <allegra-top-pharmacy.net> domain name. Complainants never gave Respondent permission to use Complainants’ ALLEGRA mark. As Respondent’s use of the ALLEGRA mark in the disputed domain name and on the website residing thereat is without Complainant’s permission or authority, Respondent has not derived any right or legitimate interest in the <allegra-top-pharmacy.net> domain name by virtue of such use.

Finally, Complainants contend that Respondent registered and is using the <allegra-top-pharmacy.net> domain name in bad faith. Complainants point out that Respondent was undoubtedly aware of Complainants’ ALLEGRA trademark and the rights Complainants claim therein on September 19, 2004, when Respondent registered the disputed domain name. That Respondent was aware of Complainants’ ALLEGRA trademark is further confirmed by the fact that Respondent uses the Trademark to market Complainants’ ALLEGRA branded pharmaceuticals. Complainants submit that Respondent registered and is using the domain name to attract Internet users who seek information about Complainants’ ALLEGRA products, and that the disputed domain name and manner of its use confuse Internet users by causing them to believe that some affiliation exists between Complainants and Respondent, that Complainants authorized Respondent to use Complainants’ ALLEGRA trademark, that Complainants endorse and/or sponsor Respondent or Respondents’ “www.allegra-top-pharmacy.net” website, and/or that the drugs advertised by Respondent on its “www.allegra-top-pharmacy.net” website are sourced from Complainants.

By way of remedy Complainants request, pursuant to paragraph 4(i) of the Policy, that the domain name <allegra-top-pharmacy.net> be transferred to Complainant Merrell.

B. Respondent

As noted above, the Respondent did not reply to the

Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainants have the burden of establishing the existence of the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar: Policy 4(a)(i)

Complainants have established that they hold rights

in the mark ALLEGRA within the United States and in many other territories throughout

the world. Complainants hold rights in the Trademark by virtue of Complainant

Merrell’s U.S. and other national trademark registrations. Uniroyal

Engineered Products, Inc. v. Nauga Network Services, WIPO

Case No. D2000-0503 (July 18, 2000). Complainants also hold rights in the

Trademark through adoption and continuous use. Savino Del Bene Inc. v. Graziano

Innocenti Gennari, WIPO Case No. D2000-1133

(December 12, 2000).

Complainants contend that their ALLEGRA trademark

is well-known and famous within the United States and throughout the world.

While Complainants provide only modest evidence to establish such fame, this

Panel is satisfied that Complainants’ ALLEGRA mark would probably qualify

as a well-known and famous mark under U.S. trademark law. Pfizer Inc. v.

Alex Schreiner/Schreiner & Co., WIPO Case

No. D2004-0731 (October 24, 2004).

The disputed domain name begins with the term “allegra”, which

is identical to the Mark in which Complainant holds rights. Incorporation of

a trademark in its entirety is often sufficient to establish that a domain name

is identical or confusingly similar to a complainant’s mark. Britannia

Building Society v. Britannia Fraud Prevention, WIPO

Case No. D2001-0505 (July 6, 2001).

Though not argued by Complainants, this Panel notes

that ALLEGRA qualifies as an arbitrary, or perhaps fanciful, mark.2

Arbitrary and fanciful marks are among the strongest varieties of marks and,

consequently, are generally accorded strong protection against infringement.

See, e.g., 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, chapter

11 (4th 2004). A corollary is that domain names incorporating such marks belonging

to others may be evidence of a deliberate attempt to misappropriate the mark

and accompanying goodwill. Empresa Brasileira de Telecomunicações S.A. –

Embratel v. Kevin McCarthy, WIPO Case

No. D2000-0164 (May 15, 2000); Panavision Int’l, L.P. v. Toeppen,

945 F. Supp. 1296 (C.D. Cal. 1996).

Combining the Complainants’ Trademark with a generic term such as ‘pharmacy’

fails to distinguish the disputed domain name from the Trademark and, according

to some WIPO panels, can serve to aggravate the likely confusion. See, e.g.,

Volvo Trademark Holding AB v. e-motodealer, Ltd., WIPO

Case No. D2002-0036 (March 22, 2002). Similarly, adding into the domain

name the self-laudatory term ‘top’ does little if anything to mitigate

the confusion and deception that is likely to result from the use of a recognized

trademark in a domain name. 2 J. McCarthy, McCarthy on Trademarks and Unfair

Competition §11.17 (4th 2004); Goldline International, Inc.

v. Gold Line, WIPO Case No. D2000-1151

(January 4, 2001)(observing that laudatory terms can legitimately be adopted

to describe a wide range of businesses that do not overlap with current registered

users); and High-Class Distributions S.r.l. v. Onpne Entertainment Services,

WIPO Case No. D2000-0100 (May 4, 2000)(concluding

that the mark HIGH CLASS is inherently descriptive particularly where high quality

luxury goods are concerned). As the only non-generic, non-descriptive term in

the <allegra-top-pharmacy.net> domain name, this Panel agrees with Complainants

that ALLEGRA forms the dominant aspect or consumer focus of the disputed domain

name.

The Panel therefore finds that the domain name <allegra-top-pharmacy.net > is confusingly similar to the ALLEGRA trademark in which Complainants hold rights and that Complainants have established element (i) of the Policy’s paragraph 4(a).

B. Rights or Legitimate Interests: Policy 4(a)(ii)

Once a complainant establishes that a respondent’s domain name is identical

or confusingly similar to complainant’s mark, and that complainant has

not authorized respondent to use the mark, the burden shifts to respondent to

establish some right or legitimate interest in respect of the domain name. Sony

Kabushiki Kaisha v. sony.net, WIPO Case

No. D2000-1074 (November 28, 2000). By not submitting a response, Respondent

has failed to invoke some circumstance that might demonstrate, pursuant to paragraph

4(c) of the Policy, that Respondent holds some right or legitimate interest

in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO

Case No. D2004-0323 (June 29, 2004).

This Panel agrees with Complainants that, insofar as the use by Respondent of Complainants’ Trademark in the <allegra-top-pharmacy.net> domain name is unauthorized, this use does not in itself create a right or legitimate interest in Respondent in respect of the disputed domain name.

Moreover, the content on the Respondent’s website demonstrates that Respondent

knew, at the time Respondent registered the disputed domain name, that ALLEGRA

was a trademark registered to and owned by a third party. Such awareness on

the part of a respondent is inconsistent with the possibility of some right

or legitimate interest in the respondent in respect of the domain name. Pfizer

Inc. v. Websites, WIPO Case No. D2004-0730

(October 17, 2004).

Paragraph 4(c) sets forth three non-exclusive circumstances any one of which, if present, is sufficient to demonstrate in a respondent some right or legitimate interest in respect of a disputed domain name. One such circumstances is that “before any notice to you 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.” Policy, paragraph 4(c)(i).

Complainants contend that Respondent’s use of their ALLEGRA trademark in Respondents’ domain name is unauthorized and done by Respondent without Complainants’ permission. Although there is no evidence that Respondent is an authorized agent or licensee of the Complainants or of Complainants’ products or services, the online pharmacies that Respondent’s website links to may sell genuine ALLEGRA, that is, pharmaceuticals manufactured or licensed by group Aventis. If this is the case, this raises the question of whether Respondent’s use of a domain name that incorporates Complainants’ Trademark to promote and sell genuine ALLEGRA branded product creates some right or legitimate interest in Respondent within the meaning of paragraph 4(a)(ii) of the Policy.

There is substantial discussion in the UDRP precedent regarding whether, and

under what circumstances, the registration, maintenance and use of a domain

name that incorporates the trademark of a third party for purposes of marketing

the trademark owner’s goods qualifies as a bone fide offering of

goods within the meaning of this paragraph 4(c)(i). In DaimlerChrysler A.G.

v. Donald Drummonds, WIPO Case No. D2001-0160

(June 18, 2001), the majority held that respondent, who offered for sale genuine

Mercedes parts obtained through authorized distribution channels, was entitled

to register and use the <mercedesshop.com> domain name without running

afoul of the Policy, while the dissenting panelist would have ruled that such

registration and use was abusive and that the domain name should have been transferred.

The majority reasoned that the Policy was designed for the limited purpose of

addressing cybersquatting, and not to aid the holders of strong trademarks in

obstructing the entry of online competitors. The dissenting panelist reasoned

that use by respondent of the <mercedesshops.com> domain name in conjunction

with the offer of genuine Mercedes parts caused initial interest confusion as

well as confusion as to source, sponsorship and affiliation.

In Oki Data Americas, Inc. v. ASD, Inc., WIPO

Case No. D2001-0903 (November 6, 2001), the question before the panel was

whether an authorized Oki Data repair facility offering genuine Oki Data goods

and services through its “www.okidataparts.com” website constituted

a bona fide offering within the meaning of paragraph 4(c)(i) of the Policy.

The Oki Data Americas’ panel provided the following minimum guidelines

for determining whether an offering of products and services was bona fide:

(1) registrant must actually be offering the goods or services at issue; (2)

respondent must use the site to sell only the trademarked goods and not competitor

goods; (3) the site must accurately disclose the registrant’s relationship

with the trademark owner and may not falsely suggest an affiliation or relationship

with the trademark owner that does not exist; and (4) the registrant must not

try to corner the market in all domain names, thus depriving the trademark owner

of reflecting its own mark in a domain name. After finding that respondent met

all the above factors, the Panel denied the complainant’s request that

the domain name <okidatapart.com> be transferred.

In Freni Brembo S.p.A. v. Webs We Weave, WIPO

Case No. D2000-1717 (March 19, 2001), respondent, who was an authorized

distributor of complainant’s trademark brake products, and who used the

website associated with its <brembobrakes.com> domain name primarily to

market genuine Brembo brakes, and only occasionally to market products manufactured

by complainant’s competitors, was allowed to retain the <brembobrakes.com>

domain name. See, also, Bang & Olufsen America, Inc. v. BeoWorld.com,

WIPO Case No. D2001-0159 (March 29, 2001)(non-authorized

reseller of genuine B&O product allowed to retain the <beoworld.com>

domain name). Compare Philip Morris Incorporated v. Alex Tsypkin, WIPO

Case No. D2002-0946 (February 13, 2003)(<discount-marlboro-cigarettes.com>

domain name transferred where it was being used by respondent to sell the complainant’s

competitors’ products as well as those of complainant) and R.T. Quaife

Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America

v. Bill Luton; WIPO Case No. D2000-1201

(November 14, 2000) (domain name registered by an authorized reseller of complainant’s

products transferred where registrant was on notice of dispute prior to registration

of the domain name and where the domain name <quaifeusa.com> falsely implied

an affiliation that was not accurate).

In determining what constitutes a bona fide offering

of goods or services, a number of panels have rejected out of hand any right

on the part of a distributor or reseller to register a domain name consisting

of or containing the manufacturer’s trademark, at least in the absence

of the trademark owner’s consent. See, e.g., Motorola, Inc. v. NewGate

Internet, Inc., WIPO Case No. D2000-0079

(April 20, 2000) (“[T]he right to resell products does not create the

right to use a mark more extensively than required to advertise and sell the

product”); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek

Co., Inc., WIPO Case No. D2000-0113

(April 13, 2000) (retail seller of complainant’s goods does not have enough

legitimate interest in complainant’s trademark “to confer the right

to use these trademarks as domain names”). Even panels concluding that

distributors may have a legitimate interest in the nominative use of a trademark

in a domain name have done so only under carefully circumscribed conditions,

including a requirement that the domain name registrant’s relationship

to the trademark owner be accurately disclosed. See Philip Morris Incorporated

v. Alex Tsypkin, WIPO Case No. D2002-0946;

Oki Data Americas, Inc. v. ASD, Inc., WIPO

Case No. D2001-0903. See also Milwaukee Electric Tool Corporation v.

Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO

Case No. D2002-0774 (October 26, 2002) and Pfizer Inc. v. Alex Schreiner/Schreiner

& Co., WIPO Case No. D2004-0731 (October 24, 2004).

Here, Respondent appears to have registered and be using the disputed domain name to promote third party online websites that purport to sell genuine ALLEGRA branded pharmaceuticals, and Respondent appears to have done so prior to having notice of the Complaint filed in this case. However, Respondent’s “www.allegra-top-pharmacy.net” website, as well as the online pharmacy websites that Respondent’s website links to, promote and sell other pharmaceuticals many of which are produced or licensed by companies unrelated to Complainants, and some of which compete directly with Complainants’ ALLEGRA branded drug. These circumstances do not constitute, in this Panel’s judgment, the bone fide offering contemplated by paragraph 4(c)(i) of the Policy.

This Panel’s conclusion that Respondent’s use of the ALLEGRA mark

in the disputed domain name to promote, albeit indirectly, the sale of genuine

ALLEGRA product does not establish a right or legitimate interest in Respondent

in respect of the domain name is reinforced by the circumstance that Respondent’s

“www.allegra-top-pharmacy.net” website appears to be functioning

to funnel Internet users to a variety of third party online pharmacies in exchange

for a commission. Websites that appear, at first impression, to be offering

a product or service but which, in reality, are simply earning revenue by acting

as a conduit to direct Internet users to third party websites which offer the

product or service advertised, while disclaiming any and all responsibility

for the product or service, should not, in this Panels’ judgment, qualify

as a “bona fide offering of goods or services” within the meaning

of paragraph 4(c)(i) of the Policy.3

Compare The Paragon Gifts, Inc. v. Govs, WIPO

Case No. D2003-0892 (December 27, 2003)(the registration of a confusingly

similar domain name to redirect traffic to the complainant’s website in

order to receive a commission under complainant’s affiliate program is

neither a bona fide offering of goods or services nor a legitimate noncommercial

or fair use) and Ticketmaster Corporation v. Amjad Kausar, WIPO

Case No. D2002-1018 (December 18, 2002) (use of a confusingly similar domain

name to redirect traffic to complainant’s competitor’s website in

order to earn a commission under the competitor’s affiliate program are

acts constituting bad faith). Respondent’s website does not offer any

genuine goods or services, only the third party sites that Respondent’s

site acts as a conduit for do.

Several UDRP panels have concluded that where the use of a disputed domain

name in connection with an offering of goods or services would constitute bad

faith under paragraph 4(a)(iii) of the policy, then the offering cannot also

qualify as a bona fide offering within the meaning of paragraph 4(c)(i)

of the Policy. Pfizer Inc. v. Websites, WIPO

Case No. D2004-0730 (October 17, 2004) (concluding that the mark VIAGRA

was so obviously connected with the complainant and its products, that its use

by respondent to market the generic equivalent constituted “opportunistic

bad faith”), citing First American Funds, Inc. v. UltSearch, Inc.

WIPO Case No. D2000-1840 (April 20, 2001).

Such reasoning applies to this case as well.

As the record fails to establish a right or legitimate interest of the Respondent in respect of the disputed domain name, the Panel finds that element (ii) of the Policy’s paragraph 4(a) has also been established.

C. Registered and Used in Bad Faith: Policy 4(a)(iii)

Paragraph 4(a)(iii) of the Policy requires that the Complainants demonstrate that Respondent both registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy iterates four non-exclusive circumstances giving rise to an evidentiary presumption of bad faith registration and use on the part of a respondent. A complainant need only demonstrate the existence of one of these circumstances in order to meet its burden under the third element of the Policy. Complainants here claim to have demonstrated the following paragraph 4(b) circumstance:

(iv) That by using the disputed domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of a product or service on Respondent’s website.

This Panel agrees that Respondent’s website creates a likelihood that Internet users, initially when viewing Respondent’s “www.allegra-top-pharmacy.net” website, will believe that Complainants sponsor, endorse or are somehow affiliated with Respondent and its website. While the website includes a statement disclaiming any affiliation between Respondent and the owners of the drug brands advertised on the site, a great many users are unlikely to review the disclaimer and will continue to harbor the misconception.

“Initial source confusion” or “initial

interest confusion” may bolster a finding of bad faith under the Policy

where respondent’s purpose in incorporating a mark in a domain name is

to disrupt or misappropriate the trademark owner’s business. See, e.g.,

W. & G. Foyle Ltd. v. Foyle’s Books Limited, WIPO

Case No. D2000-1544 (January 13, 2001). Where the initial confusion is merely

a natural consequence of the registration of a domain name that innocently incorporates

another’s company name or mark, the resulting initial confusion may not

constitute evidence that respondent registered or is using the domain name in

bad faith. See, e.g., Pfizer Inc v. Van Robichaux, WIPO

Case No. D2003-0399 (July 16, 2003) (where respondent made nominative fair

use of the mark, evidence of initial interest confusion did not support a finding

of bad faith registration or use). Respondent’s registration and use of

the domain name <allegra-top-pharmacy.net> is neither innocent nor fair.

As such, the initial interest confusion generated by the website residing at

the disputed domain name supports a finding of bad faith under the Policy.

Respondent is using the Complainants’ trademark to attract Internet users for the purpose of directing those users to third party online pharmacies which sell Complainants’ as well as Complainants’ competitors’ branded pharmaceuticals. Many of the Internet users so attracted will believe that the disputed domain name and associated website is somehow affiliated with Complainants, and a large percentage of such users will be shuttled off to third party online pharmacies offering the target as well as competing goods without ever having their confusion or deception dispelled. All the while, Respondent earns a commission for acting as a cyber conduit. This Panel is of the opinion that such conduct on the part of Respondent comes within the scope of the circumstances described in paragraph 4(b)(iv) of the Policy, to wit, that Respondent is using the <allegra-top-pharmacy.net> domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainants’ Trademark as to source, sponsorship, affiliation, or endorsement of Respondent’s website and a product advertised on that website. Considering that Respondent’s website purports to give information and advice regarding the use of prescription drugs, matters affecting personal health and public safety, Complainants’ concerns regarding false endorsement, sponsorship and affiliation are perhaps more significant than were this case to involve the offer of a more benign product or service.

This Panel is therefore persuaded, based upon the

record in this case, that Respondent both registered and is using the disputed

domain name in bad faith and that element (iii) of the Policy’s paragraph

4(a) has also been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that the relief requested in the Complaint should be granted and orders that the domain name <allegra-top-pharmacy.net > be transferred to Complainant Merrell Pharmaceuticals Inc.

Seth M. Reiss

Sole Panelist

Dated: January 25, 2005

1 While Complainants failed

to note or otherwise document the disclaimer in the context of the Complaint,

it appears an accepted practice among Panels in UDRP cases to review publicly-accessible

Internet webpages, if any, associated with the disputed domain name(s). Belo

Corp. v. George Latimer, WIPO Case No. D2002-0329

(May 16, 2002), citing, e.g., Pharmacia & Upjohn Company v. Brainbow, Inc.,

WIPO Case No. D2000-1763 (February 15, 2001).

Such independent review would seem particularly appropriate where, as here, Complainants

appended screenshots of only selected portions of Respondent’s webpages,

leaving the full context of the webpages, and their content, unclear.

2 The term ALLEGRA may form a fanciful mark as it has no literal meaning in English. Allegro means merry or cheerful in Italian (“alegro” in Spanish), and becomes “allegra” in Italian when used to modify a feminine noun. “Allegro” is an English word, from the Latin, meaning brisk or lively in the context of reading music. The mark would in any case qualify as an arbitrary mark when used in relation to pharmaceuticals.

3 While the Panel acknowledges

that Respondent’s “www.allegra-top-pharmacy.net” website homepage

includes a disclaimer explaining Respondent’s relationship to the third

party online pharmacies and disclaiming any affiliation with the owners of the

companies whose branded pharmaceuticals appear on the website, such disclaimer

is insufficient, in this Panel’s opinion, to entitle Respondent to characterize

its conduit website as a bona fide offering of goods. “The fact

that the users, once so diverted or attracted are confronted with numerous disclaimers

does not cure the initial and illegitimate diversion.” Estee Lauder

Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO

Case No. D2000-0869, citing, E. & J. Gallo Winery v. Hanna Law Firm,

WIPO Case No. D2000-0615 and DFO, Inc.

v. Christian Williams, WIPO Case No. D2000-0181.

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