WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Asif Iqbal, 5iCreations, Inc. Case No. D2008-1415 1. The Parties
The Complainant is Sanofi-aventis of Gentilly Cedex, France, of France, represented internally.
The Respondent is Asif Iqbal, 5iCreations, Inc. of Karachi, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with SRSplus. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2008. On September 18, 2008, the Center transmitted by email to SRSplus a request for registrar verification in connection with the domain name at issue. On September 18, 2008, SRSplus 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 September 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2008.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on October 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 summarized from the Complaint:
- The Complainant is a French pharmaceutical company that has been known as Sanofi-aventis since 2004 following successive mergers of different companies, including Sanofi, Synthelabo and Hoechst Marrion Roussel.
- Sanofi-aventis has preserved the brand heritage of each of the companies referred to above, and it is the largest pharmaceutical group in Europe and it is the fourth largest pharmaceutical company in the world.
- The Complainant is a multinational company with a presence in more than 100 countries.
- The Complainant supplies a pharmaceutical product for which it has created the trademark name ACOMPLIA. Said product contains the active substance (drug) known as Rimonabant.
- The product 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.
- The product has been commercialized in only a few countries including the United Kingdom of Great Britain and Northern Ireland and Germany, but not worldwide.
- The Complainant has applied for the trademark ACOMPLIA in more than 100 countries, including Pakistan and has registered numerous domain names incorporating the word “acomplia”.
- The Complainant has filed several complaints under the Policy before the WIPO regarding the trademark ACOMPLIA.
Nothing is known of the Respondent other than the registration details of the disputed domain name.
The domain name in reference was created on March 28, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that the Respondent's registration consists of the use of its trademark ACOMPLIA in addition with the generic or descriptive word “medication” and the gTLD “.com”.
In line with the abovementioned, the Complainant states that the word “medication” used in the domain name indicates the nature of the product and therefore it is not a distinguish feature, and that the addition of this term may increase the likelihood of confusion between the trademark ACOMPLIA and the domain name in conflict. Consequently, the mere addition of such descriptive word to a registered trademark has been deemed insufficient to avoid confusing similarity under previous panel decisions pronounced under the Policy in similar situations.
The Complainant also contends that the addition of the gTLD “.com” which is required for registration of a domain name, has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name, and as a consequence thereof the disputed domain name , generates confusion with the Complainant's trademark ACOMPLIA.
The Complainant claims it has prior rights in the ACOMPLIA trademark, which precede the Respondent's registration of the disputed domain name and that the Complainant's trademark is present in several countries, including Pakistan, where the Respondent is located, and most of all, Complainant's trademarks are well-known throughout the world.
Additionally, there is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name with the Complainant's trademark ACOMPLIA and the generic word “medication”, and that there is no doubt that the Respondent is aware that ACOMPLIA corresponds to a medical product and therefore to a trademark in respect of the content of its website. Therefore, the Respondent's use does not satisfy the test for bona fide use established in prior decisions under the Policy.
Furthermore, the Complainant contends that the disputed domain name used by the Respondent, leads to an active website where information about the Acomplia product is provided and leads to several on-line pharmacies where Acomplia products or counterfeit products or placebo products and /or other competing products are offered for sale and consequently the Respondent's website does not actually offer any “bona fide genuine goods or services”.
The Complainant also contends that the Respondent's website did nothing to disclaim any relationship with the trademark owner, and in such fashion it is clear that the Respondent, who has no rights or legitimate interest in respect of the domain name , has registered this domain name with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name.
Finally, the Complainant contends that bad faith is evidenced since:
- the Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA trademark;
- the Respondent's awareness that Acomplia is a revolutionary drug against obesity;
- the Respondent uses the domain name to attract for commercial gain Internet users
And, 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 dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel also has reviewed different sources and documentation to confirm the Complainant's arguments and allegations. 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, acompliamedication, comprises two parts: “acomplia”, and “medication”.
The key component is the word “acomplia”, which clearly is identical to the Complainant's trademark. The word “medication” is 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; and Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700 and Sanofi-Aventis v. MC EU,WIPO Case No. D2006-0403).
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 rights or legitimate interests in the disputed domain name. The Complainant claims that it has had no dealings with the Respondent and has not in any way granted the Respondent any right to use the trademark ACOMPLIA.
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 any bona fide use of the disputed domain name, or has been known by that name, or is making any legitimate noncommercial or fair use of the domain name.
Consequently, in the absence of license or permission from the Complainant to use its trademark ACOMPLIA, it is clear that the Respondent has no right or legitimate interest to use the trademark ACOMPLIA in a domain name. See Guerlain, S.A. v. Peikang,WIPO Case No. D2000-0055, and Bayer Akiengesellschaft v. K Dango,WIPO Case No. D2002-0138.
The Panel finds that the Respondent does not have any rights or legitimate interests 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 leads to several on-line pharmacies where Acomplia products and other competitors' products are offered for sale. 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 authorization.
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 and it may reasonably be concluded that the Respondent has not set up this redirection system without the expectation of some financial return.
Consequently, 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. This is, the Respondent is taking advantage of the Acomplia products for commercial gain Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043 and Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600.
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. 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.
Enrique Ochoa de González Argüelles
Sole Panelist
Dated: November 13, 2008
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