WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-Aventis v. New Health Care Inc., Kevin Josh Case No. D2008-1881 1. The Parties
The Complainant is Sanofi-Aventis of Gentilly Cedex, France, represented by Armfelt & Associés Selarl, France.
The Respondent is New Health Care Inc., Kevin Josh of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Active Registrar, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2008. On December 5, 2008, the Center transmitted by email to Active Registrar, Inc. a request for registrar verification in connection with the disputed domain name. On December 8, 2008, Active Registrar, Inc. 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” or “UDRP”), 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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2009. On December 15, 2008 the Respondent sent an informal email communication to the Center as follows:
“Hello Sir,
Sorry for the late response but actually i was busy in my papers that's why i didn't checked my emails. So i am sorry for this kind of complain, i had seriously no idea about it otherwise i will never violate your any rules or policy.
Now just let me know what should i have to do now? i have these domains related to Acomplia
1. www.
2.
3.
4.
I am agree to give all details and domains to you but let me know the procedure that what should i have to do now and sorry again sir!
Thanks”
On December 16, 2008, the Center forwarded the Respondent's email communication to the Complainant and further advised the Complainant that it may wish to consider suspending the proceedings to explore a settlement between the parties. On December 31, 2008 the Complainant requested for Suspension of the Proceeding for 15 days in order to try to reach a settlement concerning the disputed domain name with the Respondent. On December 31, 2008 the Center notified the parties that the requested Suspension had been granted until January 15, 2009.
On January 16, 2009, the Center received a request to re-institute proceedings from the Complainant and the Center by its email communication of January 19, 2009 informed the Parties that proceedings had been re-instituted as of January 19, 2009 and that the Respondent had until January 24, 2009 to file a Response.
The Respondent did not submit any response by the stated deadline. Accordingly, the Center notified the Respondent's default on January 26, 2009.
The Center appointed Joseph Dalby as the sole panelist in this matter on February 3, 2009. 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 Complainant submits that it is a French, multinational pharmaceutical company with a presence in more that 100 countries and with very substantial sales, Research and Development expenditure, staff and market capitalization. It avers that it is the leading pharmaceutical group in Europe and fourth largest globally.
The Complainant submits it has developed and marketed its product, Acomplia, as a treatment for obesity and dyslipidemia. It avers that it has been conferred with a European Marketing Authorization, but adds that this is presently suspended.
The Complainant submits that trade mark registrations and or applications in respect of ACOMPLIA have been made in more than 100 countries including the United States of America. A list of same was exhibited. In addition numerous domain names worldwide have been registered reflecting the trademarks obtained. Likewise a list of registered domain names has been exhibited.
Finally, the Complainant refers to some 55 WIPO UDRP decisions in which it has successfully complained against other respondents about an infringement of its ACOMPLIA trademarks.
The Respondent is either Kevin Josh/New Health Care Inc of Los Angeles or Jahangeer Saghani of address unknown. Examples are provided by the Complainant of web pages that resolve directly or indirectly to the disputed domain name. Otherwise, no information has been given. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its ACOMPLIA trademark in which the Complainant has rights. It avers that the word “acomplia” reproduces its trademark and that the addition of the word “online” is a generic or descriptive word that it not sufficient to defeat a finding of similarity. It cites a number of decisions as precedent for its submission.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It avers that no license, consent or other right has been granted by the Complainant to the Respondent. It adds that the website that resolves to the disputed domain name indicates an awareness of the Acomplia product and trademarks, but avers that its use thereof does not constitute a bona fide offering of goods and services done under license. In fact, it avers, the website leads to an active website where “Acomplia products or counterfeit products or placebo products ... are offered for sale.”
Finally, the Complainant submits that the disputed domain name should be considered as having been registered and used in bad faith because the Respondent has neither prior rights nor authorization to reproduce the trademark and because it uses the disputed domain name for commercial gain. It avers that the Respondent must have been aware of the product when the disputed domain name was registered because of its construction and the nature of the website in place. Furthermore, it avers that bad faith may be inferred because market authorization has not been granted in all countries, and because the product offered as “Acomplia” by the Respondent (or presumably its agents) is held out to be a pharmaceutical or medical product that is available without prior physical examination and therefore is potentially harmful. B. Respondent
The Respondent, or a person with access to the email address to which, on registration, the disputed domain name relates purportedly admitted to registration of the disputed domain name but did not reply to the Complainant's contentions. 6. Discussion and Findings
The domain name in question is governed by the Policy, by virtue of the contract between the Registrar and Registrant/Respondent.
The Respondent has been given an adequate opportunity to deal with the allegations against him and it is thus noted that the Respondent has not offered any contentions in rebuttal of the claims and contentions made by the Complainant.
In this matter the Panel finds as follows: A. Identical or Confusingly Similar
Although the trademark certificates supplied are not certified as identical to the original, and in the context of these expedited UDRP proceedings and noting also the absence of any challenge from the Respondent, they are deemed to be authentic copies.
The Complainant has proven that it has rights to an established and valid trademark. Other than the addition of a neutral term the domain name in question is identical to the trademarks relied upon. The additional text does not substantially alter the character and integrity of the domain name to render it any less confusingly similar. B. Rights or Legitimate Interests
Taking the Complaint in its entirety, the Complainant has satisfactorily demonstrated a prima facie case that the Respondent has no rights to or legitimate interests in the domain name. Among other things, the Panel accepts on the present record that the Complainant has not authorized the Respondent to make use of the ACOMPLIA trademark in the disputed domain name or otherwise. In default of the Respondent adducing any evidence to rebut this contention, the Complainant has adequately proved this element. C. Registered and Used in Bad Faith
It is noted that none of the scenarios in paragraph 4(b) of the Policy are made out or relied upon.
Given that the Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain name is suggestive of bad faith. The Panel finds that the trademarks relied upon are sufficiently distinctive and well known and that the registration of a similar name as a domain name was probably done in bad faith. Even had the Respondent demonstratively prepared to use the domain name in connection with an on-line offering, he could not but have been aware of the Complainant's established reputation and the notoriety of the trademarks relied upon and that he would be participating in intra-brand competition (that is pharmaceutical products under the Complainant's trademarks). Accordingly, it is reasonable to infer that he must have been aware both at the initial point of registering the disputed domain name, and subsequently, that this was both with knowledge of the Complainant's existence and of their lack of authorization. Furthermore, the Respondent appears to have agreed that it has no claim to the disputed domain name and that it is amenable to its transfer to the Complainant. Accordingly, having regard to all of the circumstances, the Panel has little hesitation in finding the domain name to be registered and used in bad faith within the meaning 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 transferred to the Complainant
Joseph Dalby
Sole Panelist
Dated: February 5, 2009
Full & Egal Universal Law Academy