WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Cash Advance Networking, david schomberg
Case No. D2008-1246
1. The Parties
The Complainant is Sanofi-Aventis, Gentilly Cedex, France, represented internally.
The Respondent is Cash Advance Networking, david schomberg, Jerusalem, Israel.
2. The Domain Name and Registrar
The disputed domain name is registered with Spot Domain LLC dba D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to Spot Domain LLC dba D (the “Registrar”) a request for registrar verification in connection with the domain name at issue. On August 15, 2008, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and the contact information provided in the Complaint. The Center sent an email communication to the Complainant on August 18, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 19, 2008.
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 August 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2008.
The Center appointed Marilena Oprea (the “Panel”) as the sole panelist in this matter on September 22, 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.
The language of the proceedings is English.
4. Factual Background
The Complainant is a widely known multinational pharmaceutical company, present in more than 100 countries across 5 continents. After the merger of 2004, the Complainant became the number 1 pharmaceutical group in Europe and number 4 in the world. The Complainant's trademark portfolio for ACOMPLIA and ZIMULTI is extensive, the Complainant being the holder of many national and international trademark registrations and applications, filed starting in 2003. A list comprising the Complainant's trademarks has been provided as Annex 7 of the Complaint.
Having regard to the Respondent's contact details in Israel, the Panel will hereby mention only the Israeli registrations, as follows:
- ACOMPLIA trademark No. 171879 registered on December 6, 2005 for goods in the international class 5; and
- ZIMULTI trademark No. 167233 registered on October 3, 2003 for goods in the international class 5.
With respect to domain names, Sanofi-Aventis is the holder of many registrations incorporating the two trademarks, such as:
- for ACOMPLIA: , , , , ; and
- for ZIMULTI: , , , , .
The product Acomplia is related to treatment of obese and overweight patients. Accordingly, it is considered a revolutionary medicine, thus its potential market impact is very significant.
Launch of both Acomplia and Zimulti products was made starting February 2004. The European Market Authorization concerning Acomplia and Zimulti products was granted in June 2006. Both products can be obtained by medical prescription only.
Rimonabant is the active substance contained in both products, Acomplia and Zimulti. It is in fact an International Nonproprietary Name (“INN”) for pharmaceutical substances.
The Complainant has been involved as the Complainant in numerous previous WIPO UDRP cases for one of these trademarks and/or denomination of substance with or without another word added, including a combination thereof (see for example, Sanofi-Aventis v. Hodinar,WIPO Case No. D2008-0467 regarding the domain name ; Sanofi-Aventis v. Daichi Hoang,WIPO Case No. D2006-0363 regarding the domain names and ; or Sanofi-Aventis v. V. Link,WIPO Case No. D2004-0810 regarding the domain names , ).
The Respondent is an Israeli entity which is the current registrant of the disputed domain name. At the time of the filing of the Complaint, the disputed domain name was being used in connection with offering a variety of goods for sale including the Complainant's and its competitors' products.
The disputed domain name was registered on December 21, 2007.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The domain name is confusingly similar to the ACOMPLIA and ZIMULTI trademarks;
The domain name consists of the ACOMPLIA and ZIMULTI trademarks in addition to the descriptive term of the chemical compound of the Acomplia and Zimulti product, i.e. “Rimonabant”, and the gTLD “.com”. None of these elements is sufficient to avoid confusing similarity as “Rimonabant” is generic word with regard to the Complainant's product, and the addition of the gTLD “.com” has no distinguishing capacity in a domain name.
(ii) The Respondent should be considered as having no right or legitimate interest in respect of the disputed domain name;
The Complainant holds prior rights in the ACOMPLIA and ZIMULTI trademarks, which predate the Respondent's registration of the disputed domain name. There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant's trademark with the adjunction of the descriptive term of the chemical compound, “Rimonabant”. The Respondent did nothing to disclaim any relationship with the trademark owner on this site. Further, the Respondent's use does not satisfy the test for bona fide use as the Respondent's website does not only provide information about the Acomplia and Zimulti products but contains links leading to several on-line pharmacies where the Complainant's products or counterfeit products or placebo products and/or other competitors' products are offered for sale. Also, the Respondent has registered this domain name with the intention to divert consumers and to prevent the Complainant from reflecting its trademarks in a corresponding domain name.
(iii) The domain name was registered and is being used in bad faith.
The Respondent has no prior rights and no authorization has been given by the Complainant concerning the use of the ACOMPLIA or ZIMULTI trademarks. The Respondent has registered the domain name with full knowledge of the fact that the Complainant's Acomplia and Zimulti products are new drugs with important market impact, which have not been launched worldwide and thus uses the domain name to attract Internet users for commercial gain. Moreover, such use is potentially harmful to the health of the Internet users that 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 requests that the disputed domain name be cancelled.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable”.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. Nonetheless, before entering in the said analysis, the Panel deems necessary to clarify the issue regarding the appropriate identity of the Respondent.
A. Identification of Respondent
An initial search of the Whois database by the Complainant showed the apparent registrant to be “Protected Domain Services”, which is a service that allows registrants to protect their identity. The Registrar subsequently provided the Center with a different identity, physical and email address of the registrant, being that of “Cash Advance Networking david schomberg”, and these details were forwarded to the Complainant with an invitation to amend the Complaint. The amended Complaint named Cash Advance Networking david schomberg as the Respondent.
Paragraph 1 of the Rules defines “Respondent” as the holder of a domain-name registration against which a complaint is initiated. Accordingly the Center addressed the Complaint to the registrant, Cash Advance Networking david schomberg, via the contact details provided, namely an email copy addressed to the generic address postmaster@ and other gmail/email addresses, and a hard copy of the Complaint sent on August 22, 2008 at its physical address.
The Panel is satisfied that the Complaint was properly notified to the Respondent, that Cash Advance Networking david schomberg is the registrant of the disputed domain name and therefore the Respondent.
B. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph, namely: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
The Complainant holds numerous trademark registrations worldwide for both trademarks ACOMPLIA and ZIMULTI filed since 2003.
The disputed domain name was registered on December 21, 2007.
Accordingly, the Complainant has trademark rights and the trademarks predate the domain name.
As found in the previous cases, specifically Sanofi-Aventis v. V. Link,WIPO Case No. D2004-0810 “[t]he use of the above noted generic and descriptive terms [including rimonabant] in conjunction with the Complainant's trademark ACOMPLIA does not remove the domain names in dispute from being confusingly similar, the generic terms lacking in distinctiveness”. Further, in this particular case, the Respondent associated two registered trademarks owned by the Complainant.
Moreover, the present case is similar to previous recent case Sanofi-aventis v. Hodinar,WIPO Case No. D2008-0467, as the disputed domain name incorporated exactly the same denominations but in a different order.
The Panel agrees with the previous UDRP panels that the fact that a generic term was added to the domain name, does not confer distinctiveness and does not change the overall impression as being connected to the Complainant's trademarks, therefore the domain name, after disregarding the “.com”, is confusingly similar to Complainant's trademarks, being in fact a combination of the trademarks ACOMPLIA and ZIMULTI together with their active substance, the generic term “Rimonabant”.
In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has provided a prima facie showing that it has had no relationship with the Respondent and has not granted the Respondent any right to use the trademarks. Thus, the burden of proof on this element shifts to the Respondent; either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or providing other relevant acceptable grounds.
The Respondent failed to submit any response. As prior WIPO UDRP panels have found (see for example, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001), the silence of the Respondent might support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name.
Further more, there is no evidence to suggest that the Respondent has made a bona fide use of the disputed domain name, or been known by this name, or is making any legitimate non-commercial or fair use of the domain name. In fact, Respondent uses the domain name as a portal for online pharmacies, to be further analyzed under the heading of bad faith below.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the domain name, and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists one of the typical situation which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel finds that this is a classic case of cybersquatting, very similar to numerous previous cases involving the trademarks ACOMPLIA and/or ZIMULTI, where the respondent was aware of the trademarks and corresponding products and thus registered the domain name and uses the same in bad faith, for commercial gain. The Respondent here uses the disputed domain name in connection with offering a variety of treatments of obesity and other affections, either genuine or counterfeit Acomplia products, Complainant's competitors' products, or placebo products. The overall intended function of the Respondent's website is clearly to cause Internet users to be redirected to sellers of Acomplia, or of products offered as alternatives to Acomplia, or other products. As decided by the panel in the previous case Sanofi-Aventis v. Ozolins, Valdis,WIPO Case No. D2008-0466, “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”.
Also, the Panel accepts that in the present instance, the fact that the Respondent registered the disputed domain name after the Complainant's product launch, leads to an inference of bad faith being an example of opportunistic cybersquatting (see for example, Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011; or Sanofi-Aventis v. V. Link,WIPO Case No. D2004-0810).
Further, the Respondent has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant's trademark and therefore reinforces this approach.
Due to the above mentioned, the Panel considers unnecessary to analyze the other assertions made by the Complainant, including the fact that the use of the disputed domain name is harmful to the public or is contrary to public health, and whether this is or is not relevant within the scope of the Policy.
For all these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the Complainant has made out the 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 name be cancelled.
Marilena Oprea
Sole Panelist
Dated: October 6, 2008
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