WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Chris
Case No. D2007-0047
1. The Parties
The Complainant is Sanofi-aventis, Gentilly, France, represented by Armfelt & Associ�s Selarl, France.
The Respondent is Chris, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names are registered with Direct Information Pvt Ltd d/b/a PublicDomainR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January�12,�2007. On January�15,�2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainR a request for registrar verification in connection with the domain names at issue. On January�16,�2007, Direct Information Pvt Ltd d/b/a PublicDomainR 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 January�22,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February�11,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February�13,�2007.
The Center appointed David Perkins as the sole panelist in this matter on February�22,�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, paragraph 7.
4. Factual Background
4.A The Complainant
4.A.1 The Complainant is Sanofi-aventis, a French pharmaceutical company. This company was formed in the Summer of 2004 when Sanofi-Synthelabo acquired Aventis. Aventis comprised the businesses formerly conducted by Hoechst Marrion Roussel [HMR] and Rh�ne Poulenc.
4.A.2 Sanofi-aventis is the largest pharmaceutical company in Europe and the third largest in the world. In the calendar year 2005 it achieved consolidated net sales of Euros 27,311 billion and spent Euros 4 billion on research and development.
4.A.3 Sanofi-aventis has a presence in over 100 countries worldwide. It employs some 100,000 people worldwide, including a sales force of 35,030 and a research staff of 17,600. It currently has 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development.
4.A.4 Sanofi-aventis has established positions in 7 therapeutic fields, namely cardiovascular: thrombosis; metabolism; oncology; central nervous system; internal medicine and human vaccines. It has 8 blockbuster pharmaceuticals, namely Lovenox; Plavix; Taxotere; Eloxatin; Ambien; Allegra; Lantus and Tritace. This Complaint is concerned with a new treatment in the metabolism and cardiovascular fields.
4.B. The Complainant’s ACOMPLIA product
4.B.1 In February 2004, the Complainant announced early results of two Phase III studies of an obesity treatment, Rimonabant. Rimonabant is a CB1 receptor antagonist (CB1A). The CB1 receptor – present in the brain and in other parts of the body – has been found to be associated with an over-stimulated Endocannabinoid System (EC System). The EC System plays a role in both maintaining energy balance through the regulation of food intake and energy expenditure, and also in tobacco dependence. Rimonabant works by selectively blocking CB1 receptors, thereby helping to normalize the disrupted EC System. The studies indicated that this treatment both produces weight loss in overweight/obese people and also assists people to stop smoking without suffering post-cessation weight gain.
4.B.2 The brand name for Rimonabant is Acomplia. On June�19,�2006, a Marketing Authorisation was granted by EMEA for Rimonabant/Acomplia for the treatment of obese and overweight patients with associated risk factors, such as type 2 diabetes or dyslipidaemia. Acomplia has since been sold commercially in Germany and the United Kingdom but has yet to be launched worldwide. Notwithstanding, this has already apparently spawned a number of unlicensed domain name registrations making unauthorised use of the ACOMPLIA trademark and offering unauthorised or counterfeit Acomplia products, with the attendant risk to public health through Internet users buying such products through the websites to which such domain names resolve.
4.C The Complainant’s ACOMPLIA trademarks
4.C.1 The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries. The earliest of those applications appears to have been filed in France in December 2003, the remainder being filed on dates generally spanning the period January to May 2004.
4.C.2 A number of those applications have produced registered trademarks, of which the following selection is exhibited to the Complaint.
Country
Mark No.
Class
Application Date
Registration Date
Community Trademark
003565678
ACOMPLIA 5
November 2004
April�26,�2005
Madrid*
825,821
ACOMPLIA 5
May�7,�2004
France
3,260,481
ACOMPLIA 5
December�3,�2003
December�3,�2003
Mexico
837,787
ACOMPLIA 5
February�20,�2004
June�17,�2004
Japan
4,811,294
ACOMPLIA 5
February�25,�2004
October�22,�2004
O.A.P.I
49,523
ACOMPLIA 5
March�10,�2004
July�14,�2004
USA
2,941,824
ACOMPLIA 5
January�5,�2004
April�19,�2005
* The Madrid Agreement (Marks) countries comprise: Albania; Algeria; Armenia; Austria; Azerbaijan; Belarus; Belgium; Bhutan; Bosnia and Herzegovina; Bulgaria; China; Croatia; Cuba; Cyprus; Czech Republic; Democratic People’s Republic of Korea; Egypt; France; Germany; Hungary; Iran (Islamic Republic of); Italy; Kazakhstan; Kenya; Kyrgyzstan; Latvia; Lesotho; Liberia; Liechtenstein; Luxembourg; Moldova; Monaco; Mongolia; Montenegro; Morocco; Mozambique; Namibia; Netherlands; Poland; Portugal; Romania; Russian Federation; San Marino; Serbia; Sierra Leone; Slovakia; Slovenia; Spain; Sudan; Swaziland; Switzerland; Syrian Arab Republic; Tajikistan; The former Yugoslav Republic of Macedonia; Ukraine; Uzbekistan; Viet Nam.
4.D The Complainant’s ACOMPLIA domain names
Annexed to the Complaint is a schedule of domain names registered by the Complainant which contain the ACOMPLIA trademark. There are some 77 such domain names listed. Those domain names include , and all registered December�18,�2003: registered July�30,�2004 and registered February�16,�2004.
4.E UDRP Decisions relating to the ACOMPLIA trademark
The Complaint schedules 19 decisions under the Policy ordering transfer to the Complainant of some 90 domain names incorporating the ACOMPLIA trademark. By way of example, 3 of those Decision are exhibited.
Sanofi-aventis .v. Elizabeth and Andrew Riegel, WIPO Case No. D2005-1045
This involved the transfer of 15 domain names, including ; and .
Sanotfi-aventis .v. US-M, WIPO Case No. D2004-0809
This involved the transfer of 16 domain names, including : and ,
Sanofi-aventis .v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661
This involved transfer of the domain names and .
No Response was submitted in any of these cases.
4.F The Respondent
In the absence of a Response, all that is known of the Respondent appears from the Complainant’s investigations referred to in paragraph 5 below.
5. Parties’ Contentions
A. Complainant
5.A.1 The Complaint asserts that the two domain names in issue are confusingly similar to the ACOMPLIA trademark in which the Complainant has rights. The first, comprises the International Non-Proprietary Name [INN] “Rimonabant”, the trademark ACOMPLIA and the generic word “buy”. The second combines the generic word “treatment” with the INN and the trademark.
5.A.2 The Complaint cites a number of cases decided under the Policy where the addition of a generic / descriptive word to the Complainant’s trademark has been found not to avoid a finding of confusing similarity. Those Decisions include Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661 and Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No.�D2005-1045 referred to above and also another Decision under the Policy involving the ACOMPLIA trademark. This is case Sanofi-Aventis v. John Adams, WIPO Case No. D2006-0688 where 6 domain names were ordered to be transferred to the Complainant, including and . Also cited is a Decision involving another Sanofi-aventis trademark, AMBIEN a short term treatment of insomnia, where the domain names ordered to be transferred were and : Sanofi-aventis .v. Ju Dehua, WIPO Case No. D2005-1043.
5.A.3 As to combining the INN “Rimonabant” with the trademark ACOMPLIA, in addition to Case D2006-0688 (referred to above), the Complaint also cites Sanofi-aventis .v. Link, WIPO Case No. D2004-0810. That case, where all 8 domain names in issue were ordered to be transferred included and . The same decision was also reached by the Panelist in Sanofi-aventis v. Daichi Huang, WIPO Case No. D2006-0363, which involved 6 domain names incorporating the ACOMPLIA trademark, including one which combined that trademark with the INN, namely .
5.A.4 As to rights or legitimate interest, the Complainant points to its worldwide trademark applications and registrations for ACOMPLIA and to the items relating to the ACOMPLIA product which have been disseminated on the Internet, examples of which in March and April�2005 are exhibited to the Complaint. From this the Complainant says there can be no doubt that the Respondent would have been fully aware of the ACOMPLIA product when registering the two domain names in issue in July and August�2006.
5.A.5 The Complainant confirms that the Respondent has not been licensed or otherwise authorised to use the ACOMPLIA trademark.
5.A.6 As to use of the domain names in connection with the bona fide offering of goods and services, the Complainant sets out why the Respondent’s use cannot meet the requirements of paragraph 4(c)(i) of the Policy as those requirements have been proposed in Oki Data Americas, Inc .v. ASD, Inc, WIPO Case No.�D2001-0903. Both domain names resolve to websites providing information about Sanofi-aventis’ ACOMPLIA product but also offer competitive products, for example
“Slimming Pills UK
Transforme – the ultimate weight loss formula. Buy trial size online.”
and
“Lose 20 Pounds in 3 weeks
Amazing Chinese fat-loss secret. As seen on Oprah and 60 Minutes.”
5.A.7 It cannot, the Complainant says, be a legitimate or fair use of the domain names in issue to misleading divert consumers to these websites.
5.A.8 As to registration in bad faith, the Complainant asserts that having regard to the worldwide publicity in relation to ACOMPLIA which predated registration of the two domain names in issue in July and August 2006, the Respondent must have registered those domain names in bad faith. In addition, the ACOMPLIA trademark had been filed, published and in many cases granted – including in the United States where the Respondent is located – before the domain names were registered.
5.A.9 In this respect the Complaint cites three WIPO UDRP Decisions under the Policy where registration of a domain name incorporating a product trademark after product launch was held to be evidence of registration in bad faith. These are Medestea Internationale S.rl. .v. Chris Gaunt, WIPO Case No. D2003-0011 which involved a cellulite reduction product, Cellasene Gold, launched in 2001 with the domain name in issue being registered shortly thereafter in April 2002. In Guardant, Inc .v. Youngcho Kim, WIPO Case No. D2001-0043, the trademark was SKYTEAM for the global airline alliance which included Delta: AirFrance: AeroMexico and Korean Airlines. Within a month from the announcement of the Skyteam ALLIANCE in June 2000, the Respondent registered and in July 2000. The Panelist held that this led to an inference of bad faith. In America Online, Inc .v. Chan Chaunkwong, WIPO Case No. D2001-1043, the “aol” trademark was registered in 1996 and the Respondent’s domain name was registered on November�1,�1999 some two�(2) months after America Online’s media release in September 1999 promoting the launch of its Hong Kong services. This was also held to point to an indication of a bad faith registration.
5.A.10 As to use in bad faith, the Complainant relies on paragraph 4(b)(iv) of the Policy. Both the domain names in issue link to the following websites:
- / healthslim.html”;
- ”;
- ”; and
- ”
The domain name links to the additional websites:
- ”; and
- ”
The domain name links to the additional websites:
- ”;
- ”;
- ”;
- ”; and
- ”
Extracts from these websites are scheduled to the Complaint.
5.A.11 The Complaint says that these websites offer not only Acomplia but also counterfeit products, placebo products and competitor products for the treatment of obesity. The MicroNutra Health website offers a weight loss product “Healthslim” and contains testimonials from satisfied users of the Healthslim Plan. The DoctorSolve website also offers the “Healthslim” product. The HungerAway website also offers its own diet products, which appear to emanate from a South African company, Hoodia Pharma.
The Okinawa web page offers “Ancient Okinawa Tea” to reduce weight. The Wu-Long website offers their “Original Wu-Long Slimming Tea”. The DietPill 1 website reviews and offers several weight loss products, including Xenical and Kintopill. Finally, the onlineclinic reviews Acomplia but also offers two slimming pills, Xenical and Reductil.
5.A.12 This use of the domain names in issue to link to these various websites is clearly, the Complainant says, use for commercial gain to attract Internet users to the websites which offer obesity products including not only Acomplia but also quite unconnected third party products. This creates both a likelihood of confusion for Internet users and, in many cases, also serious misinformation to consumers. That is because Acomplia is not yet authorized worldwide and can only be obtained by medical prescription.
B. Respondent
In the absence of a Response, nothing is known of the Respondent except for the examples of the websites to which the two domain names resolve and those other websites to which link (as detailed above).
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
i that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
i that the Respondent has no rights or legitimate interests in respect of the domain name; and
i that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
6.4 The dominant component of both domain names is the Complainant’s ACOMPLIA trademark. Use in juxtaposition with the INN “Rimonabant” merely serves to emphasise dominance of the brand name. Addition of generic words, respectively “buy” and “treatment” does nothing to eliminate confusing similarity. The Panel has no hesitation in finding that the first requirement of paragraph 4(a) of the Policy is met. The Decisions under the Policy cited by the Complainant are entirely consistent with this finding. Indeed, the Panelist cannot conceive of a situation where a domain name comprising the trademark of a medicinal product, used either singly or in combination with the INN for such product, plus a generic or descriptive word, could ever be other than confusingly similar to the trademark.
B. Rights or Legitimate Interests
6.5 Here, the Complainant trademark owner has neither licensed nor authorised use of the ACOMPLIA trademark by the Respondent. Absent, such license it is for the Respondent to bring himself within any of the circumstances set out in paragraph 4(c) of the Policy or otherwise to establish rights or legitimate interest in each of the domain names in issue.
6.6 Given the widespread knowledge of the Complainant’s ACOMPLIA product and the status of its trademark applications and registrations prior to the dates in July and August 2006 when the domain names in issue were registered, plainly paragraph 4(c)(i) cannot apply. Nor is there any evidence that paragraph 4(c)(ii) could apply.
6.7 Accordingly, the issue is whether selling genuine Acomplia products through the websites to which the domain names resolve and/or to which they link can be regarded as a fair use of those domain names. Guidance as to what can be regarded as “fair use” of those domain names under paragraph 4(c)(iii) of the Policy. Guidance as to what can be regarded as “fair use” is given in Oki Data Americas, Inc .v. ASD Inc, WIPO Case No.�D2001-0903. Whilst guidelines may have their place and the so-called “Oki-Data Requirements” have been applied in many cases under the Policy since that Decision was handed down in November�2001, the Panelist in this case does not subscribe to the view that if the four (4) Oki Data requirements are met then bona�fide use has been established.
6.8 Rather, in this Panelist’s view the European case law approach following the Court of Justice Decision in BMW .v. Deenig [Case C-63/97 1999 / CMLR 1099] is to be preferred. That case established that fair use of a third party trademark will only apply where the trademark is used to describe the goods or service being offered. For example, it is not bona fide for a domain name to comprise the trademarks PORSCHE or BMW merely because it resolves to a website selling genuine Porsche or BMW cars. In the same way, even if the Rimonabant containing products offered on the websites to which the two domain names in issue resolve are genuine ACOMPLIA 20mg tablets, that fact does not give the Response any rights or legitimate interest in the ACOMPLIA trademark
6.9 This approach to use of a third party trademark in a domain name which resolves to a site offering the third party’s branded goods has been applied in a number of Decisions under the Policy. For example, from an early stage in application of the Policy, the preferred approach of panelists was to follow and apply the reasoning in Stanley Works and Stanley Logistics, Inc. .v. Camp Creek, WIPO Case No. D2000-0113. That case involved the Respondent’s use of the Complainant’s ‘Stanley’ and ‘Bostitch’ trademark in a number of StanleyBostitch domain names and other domain names including the Bostitch mark. The Respondent sought to justify these domain names on the basis that the sole purpose of the website to which the domain names in issue resolved was to promote the sale of Stanley Bostitch products. Finding that this gave the Respondent no rights or legitimate interests to use the Complainant’s trademark in a domain name, Panellist Foster said:
“Moreover, even if the Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designated goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorisation in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks.”
6.10 The rationale behind Decisions under the Policy applying the Stanley Works approach is that the right to resell or market a product does not create the right to use a trade mark more extensively than required to advertise and sell the product. As noted by the Panel in Motorola Inc.v. NewGate Internet Inc.,WIPO Case No. D2000-0079:
“Respondent argues that CFR (the Respondent’s predecessor) had the right to sell Motorola’s products. This assertion is not disputed by Motorola, but is irrelevant, since the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products.”
6.11 Of particular relevance to the circumstances of this Complaint are the facts in Amphenol .v. Applied Interconnect, WIPO Case No. D2001-0296 where the Respondent was selling both genuine Amphenol cables and also cable assemblies comprised of parts from the Complainant and parts from other companies at the website to which the domain name in issue, , resolved. Held, this did not give the Respondent rights or legitimate interests to that domain name.
6.12 As to the right to make use of the proprietor’s trademark when reselling trademarked goods under US law – the US being the Respondent’s address - a three member panel in General Electric Company .v. Japan, Inc, WIPO Case No. D2001-0410] said:
“A reseller of trademarked goods that is unaffiliated with or unauthorised by a trademark holder may well have certain fair use rights regarding the mark, depending upon the specific context of the use. If resellers were unable to refer to marks they would not be able to properly identify their resale goods to the public. There is a substantial body of judicial authority in the United States and elsewhere that establishes this fair use right, and the Respondent has cited some of that authority to the Panel. … However, this fair use right is carefully bounded by the requirement that a reseller not make use of the mark in a way that is likely to confuse consumers as to an affiliation between the trademark holder and the reseller. … Courts have generally disallowed the use by an unaffiliated reseller of another party’s trade mark on a sign identifying a business, unless the signage expressly includes language sufficient to notify the consumer that the business is not affiliated with or authorised by the trademark holder …”
6.13 Considering the approach taken by the United States Federal Courts and the European Court of Justice, a three member panel in Dr. Ing. h.c. F. Porsche AGv. Limex LLC, WIPO Case No. D2003-0649 referring to the BMW case (supra), said of European case law:
“This approach seems also consistent with trademark case law of the European Union. See for instance the Decision of the European Court of Justice in BMW .v. Deenik [Case c-63/97 1999 1 CMLR 1099] of February 1999. This concerned a mechanic and trader in second-hand / used BMW automobiles, who was not a part of BMW’s authorised Dealer Network. He was also involved with the repair / servicing of BMW vehicles. Was the respondent entitled to promote his activities using the name descriptor ‘BMW Specialist?’ Held, that a party can make use of a third party trademark only where necessary to indicate the origin of the goods or services. Such was fair use. It was not fair use to advertise the business as ‘BMW Specialist’ when this was not necessary and could well be understood as indicating the respondent was an authorised BMW Distributor / Repairer, which he was not.”
6.14 Citing, inter alia, the WIPO URDP Decisions in Stanley Works and Motorola (referred to above) the Panel in Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No.�D2001-1101 held:
“… a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. It follows that Respondent in this case would only have a right to the domain name if Complainant had specifically granted that right. Respondent has not contested that Complainant has not licensed or otherwise permitted Respondent to use the trademark NOKIA. The mere fact that Respondent sells logos and ringtones compatible with NOKIA mobile phones is not sufficient for Respondent to claim a legitimate interest.”
6.15 Accordingly, applying the rationale of these Decisions under the Policy, taken together with the approach to “fair use” taken in both Europe and the United Stats, the Panel finds that the Complaint satisfies the second leg of paragraph 4(a) of the Policy.
6.16 Further, even if the Oki-Data Requirements are applied to the facts of this case, on the basis of the evidence set out in paragraphs 5.A.6 to 5.A.7 and 5.A.10 to 5.A.11 above, the Panel finds that the Respondent cannot show bona fides. This is because the sites to which the two domain names resolve and the websites to which they link do not sell only the Acomplia branded product. Accordingly, whether or not the Oki Data Requirements are applied, on the facts of this case the Respondent cannot establish rights or legitimate interests to either of the domain names in issue.
C. Registered and Used in Bad Faith
6.17 Here, on the evidence it is abundantly clear that the two domain names were registered in bad faith for the reasons set out in paragraphs 5.A.9 and 5.A.10.
6.18 As to use in bad faith, again the evidence of bad faith use is compelling – see, paragraphs 5.A.10 to 5.A.12 above. Quite apart from the Respondent’s activities falling within paragraph 4(b)(iv) of the Policy, it follows from the Panel’s decision that the Respondent cannot show rights or legitimate interests in the two domain names that use of those domain names will necessarily be in bad faith. Accordingly, the Complaint meets the twin requirements of paragraph 4(a)(iii) of the Policy.
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 names, and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: February�27,�2007
Full & Egal Universal Law Academy