WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. John Smith
Case No. D2008-0462
1. The Parties
The Complainant is Sanofi-aventis, France, represented by Armfelt & Associ�s Selarl, France.
The Respondent is John Smith, Houston, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2008. On March 27, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On March 31, 2008, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 April 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 30, 2008. 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
The following information is summarised from the Complaint. The Complainant is a French pharmaceuticals company that has been known as Sanofi-aventis since 2004 following successive amalgamations of other companies. It is Europe’s largest and the world’s third largest pharmaceuticals company and is the proprietor of a number of internationally renowned drugs.
The Complainant supplies a pharmaceutical product for which it has created the trademark name ACOMPLIA, containing a substance for which the international non-proprietory name is Rimonabant. The drug is promoted for purposes including the treatment of certain forms of obesity and to help people to avoid putting on weight whilst endeavoring to stop smoking. Since the product is indicated for the treatment of problems sometimes described as being of epidemic proportions, its potential market is large. The results of clinical trials were made public from 2004 onwards. The product has been commercialised in only a few countries including the United Kingdom and Germany, but not world-wide.
The Complainant has applied for the trademark ACOMPLIA in more than 100 countries and has registered numerous domain names incorporating the word “acomplia”.
Nothing is known of the Respondent other than the registration details of the disputed domain name. The domain name was created on October 8, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it is the owner of the registered trademark ACOMPLIA in many countries world-wide and provides in evidence copies of a selection of registration documents.
The Complainant also provides a list of domain names it owns incorporating the word “acomplia”.
The Complainant contends that the domain name is confusingly similar to the trademark ACOMPLIA in which it has rights. The domain name also contains the expressions “generic” and “20mg”, as well as “.com”. The Complainant contends that none of these should avoid a finding of confusing similarity because “.com” or similar is inevitable in a domain name, and “generic” and “20mg” are merely descriptive words, particularly in the medical context. The Complainant cites numerous previous WIPO UDRP cases, some of them relating to Acomplia or other drugs, in support of its contention that the addition of a descriptive word or words to a trademark does not distinguish it and does not avoid confusing similarity.
The Complainant contends that the Respondent should be considered as having no right or legitimate interest in respect of the disputed domain name.
The Complainant has prior rights in the ACOMPLIA trademark because it is registered in 100 countries and has been promulgated world-wide via the Internet.
The Complainant has not in any way authorised the Respondent to use its trademark. The Respondent has not made any bona fide use of the disputed domain name. In particular the Respondent has not offered exclusively the trademarked product for sale through the corresponding website with disclosure of its relationship to the Complainant.
The Complainant further contends that the disputed domain name has been registered and is being used in bad faith. The Respondent has no prior right and no authorisation has been given by the Complainant concerning the ACOMPLIA trademark. The Respondent must have been aware that ACOMPLIA is a revolutionary drug against obesity, because it had been announced publicly on February 16, 2004, and on other occasions. The Respondent uses the disputed domain name to attract Internet users for commercial gain.
The Complainant further contends that the Respondent’s website corresponding to the disputed domain name has links to other websites that may trade in Acomplia or other products for the treatment of the same or related conditions. It may be inferred that these links are provided for commercial gain on the part of the Respondent through commissions. Internet users may be misled into believing that the drug is available in countries where it is not, or that it is available without a doctor’s prescription.
The Complainant says the mere holding of a domain name that is identical or confusingly similar to a trademark can be considered as disrupting to the business of the trademark owner. The Complainant cites previous WIPO UDRP decisions as precedent to the effect that dealing in prescription medication without a doctor’s examination or prescription, contrary to public health regulations, can constitute evidence of bad faith.
The Complainant requests by way of remedy that the disputed domain name be cancelled.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has submitted ample documentary evidence to the effect that it has registered and has rights in the trademark ACOMPLIA.
The disputed domain name is . It is well established that the gTLD discriminator “.com” or similar, being an integral and necessary part of an Internet domain name, may be disregarded in the determination of confusing similarity. What remains, genericacomplia20mg, comprises three parts: “generic”, “acomplia”, and “20mg”.
The key component is “acomplia”, which clearly is identical to the Complainant’s trademark.
The meaning of “generic” in the context of pharmaceuticals is distinct from “authentic”. Simply put, a trademarked version and formulation of a drug, manufactured, distributed and purchased through channels authorised by the trademark holder, is authentic. A preparation purporting to contain the same active ingredient, either offered in legitimate competition after patent protection has expired, or offered illegitimately as a counterfeit, would be called generic, as would the authentic product repackaged and sold illicitly. The public may well expect a version of a drug described as generic to be cheaper or more easily supplied than the authentic trademarked product.
The word “generic” is thus a descriptive word, especially in the pharmaceutical context. The addition of a descriptive prefix or suffix to a trademark to form a domain name does not normally avoid a finding of confusing similarity (Sanofi-Aventis v. C,WIPO Case No. D2005-0660; Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson,WIPO Case No. D2000-0599; InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Caf�,WIPO Case No. D2000-0068; Infos Inc. v. Infospace Technology Co. Ltd.,WIPO Case No. D2000-0074).
Similarly, the suffix “20mg” would be interpreted in the context as a reference to a dosage of 20 milligrams of active ingredient. The term “20mg” is found to be descriptive, especially in the pharmaceutical context. It does not distinguish the disputed domain name from the trademark and does not avoid a finding of confusing similarity.
The Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have any right or legitimate interest in the disputed domain name. The Complainant has approached this in the conventional way by setting out a prima facie case to the effect that it has had no dealings with the Respondent and has not in any way granted the Respondent any right to use the trademark.
Even if the Respondent were to engage in the legitimate supply of the Complainant’s product, and had legitimate reason to make collateral use of the Complainant’s trademark in the text of a website, that would not in itself create any right to incorporate the Complainant’s trademark into the name of a website or a domain name without the trademark owner’s agreement.
The Respondent has the opportunity to refute the Complainant’s prima facie case either in the terms of the model grounds set out in paragraph 4(c) of the Policy or by advancing acceptable alternative grounds. The Respondent has not done so or replied in any way. In particular there is no evidence to suggest that the Respondent has made preparations for bona fide use of the disputed domain name, or been known by that name, or is making any legitimate non-commercial or fair use of the domain name.
The Panel finds that the Respondent does not have any right or legitimate interest in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in 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.”
The Complainant has proceeded principally under paragraph 4(b)(iv) of the Policy. According to the Complainant’s evidence, information about the drug Acomplia has been publicly available since 2004. The Respondent’s website provides links to other websites where information is provided about Acomplia or through which the product or alternative products may be purchased. Taking together this evidence and the apparently unique and creative nature of the trademarked name ACOMPLIA, it is not possible to escape the conclusion that the Respondent has knowingly appropriated the Complainant’s trademark without authorisation.
The overall intended function of the Respondent’s website is clearly to cause Internet users to be redirected to sellers of Acomplia, or of generic versions containing similar ingredients to Acomplia, or products offered as alternatives to Acomplia. It may reasonably be concluded that the Respondent has not set up this redirection system without the expectation of some financial return, and is operating the well known click-through or pay-per-click device whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.
The success of the scheme depends on the Respondent’s website attracting visitors to redirect, and it may reasonably be concluded that the disputed domain name contains the word “acomplia” in order to attract users searching for that term via search engines, including users who expect to be taken to the Complainant’s authentic website or to sites endorsed by the Complainant. Thus, the Respondent is trading illegitimately on the Complainant’s trademark in order to attract visitors by initial interest confusion as to the affiliation or endorsement of the website. The Panel finds registration and use of the disputed domain name in bad faith to be proven in the terms of paragraph 4(b)(iv) of the Policy.
The scope of paragraph 4(b)(iii) of the Policy is wide, however the Respondent’s objective in diverting users from the Complainant’s authentic websites to competing websites is found to constitute disruption and bad faith within the meaning of the Policy.
The Complainant advances as a ground of bad faith that the selling or purchasing of a prescription medication without any doctor’s examination or prescription can constitute evidence of bad faith (Lilly ICOS LLC v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794, in which the panelist said: “The products sold on Respondent’s website are therefore illegal and potentially dangerous”). The present Panel interprets the Policy as being concerned with abusive registration and the infringement of a trademark in a domain name, rather than matters of the quality, efficacy, legality or safety of a product, which would require value judgements and would be argued in another forum.
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 be cancelled.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: May 14, 2008
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