WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Adam Sanders Case No. D2009-0171 1. The Parties
The Complainant is Sanofi-Aventis, of Paris, France.
The Respondent is Adam Sanders of Los Angeles, California, United States of America 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) was registered on October 9, 2008 with Directi Internet Solutions Pvt. Ltd d/b/a Publicdomainregistry.Com. 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009 electronically and in hardcopy on February 11, 2009. On February 6, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2009, the Registrar 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”).
3.2 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 February 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 16, 2009.
3.3 The Complaint has been submitted in English.
3.4 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on March 20, 2009. The Panel finds that it was properly constituted. It 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
4.1 The Complainant has stated that in 2004, Sanofi-Synthelabo, a French pharmaceutical company, resulting from the merger between Sanofi and Synthelabo, announced the success of its offer to acquire Aventis shares, resulting in the name of Sanofi-Aventis.
The Complainant has stated that completion of the transaction created the number 1 (one) pharmaceutical group in Europe and number 4 (four) in the world, with consolidated net sales of € 28 billion in 2007 in the core business. Sanofi-Aventis is said to be a multinational company present in more than 100 countries across 5 continents and a strong direct presence on all major world markets.
Sanofi-Aventis is said to employ 100 000 people worldwide, have a sales force of 35,030 people, as well as more than 19,310 research staff with 113 projects under development.
4.2 The Complainant has filed trademark applications for the ACOMPLIA trademark in more than 100 countries including the United States. Amongst other claims, the ACOMPLIA product is composed of the active substance called Rimonabant and has been used to treat overweight and obese patients as well as smokers who had previously unsuccessfully tried to quit smoking The Complainant has annexed to its Complaint a very long list of the trademark registrations, which it has registered worldwide.
4.3. The Complainant has had to challenge a large number of domain name registrations which included the trademark ACOMPLIA and the Complainant had to file many complaints before the Center to obtain the transfer of the disputed domain names. The Complainant has to date been successful in all the decisions rendered by other UDRP panels in respect of the trademark ACOMPLIA, all of whom have ordered the transfer of the disputed domain names to the Complainant. Examples of such previous decisions include Sanofi-aventis v. Daichi Hoang,WIPO Case No. D2006-0363 as well as Sanofi-Aventis v. V.Link, WIPO Case No. D2004-0810. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is confusingly similar to the ACOMPLIA trademark in which it holds rights for the following reasons:
(i) The Respondent's registration consists of the use of the Complainant's trademark in addition with the generic or descriptive words “buy” and “cheap”, the suffix “online”, and the gTLD “.com”. The Complainant cited a wide example of UDRP decisions wherein many other panelists have considered that the addition of generic or descriptive words to trademarks was not sufficient to escape the finding of similarity.
(ii) The Complainant also submitted that the mere addition of a generic word “buy” to a registered trademark has consistently been deemed insufficient to avoid confusing similarity under previous panel decisions under the UDRP similar to the present case. It cited Sanofi-aventis v. Ju Dehua,WIPO Case No. D2005-1043 as such an example. The Complainant also cited other cases involving the Complainant's trademark ACOMPLIA (Sanofi-aventis v. Iqbal Hans,WIPO Case No. D2007-0538 and Sanofi-aventis v. VSA-Andrew King,WIPO Case No. D2007-0061) to show that previous panels have considered that the domain names and were confusingly similar to the Complainant's trademark ACOMPLIA.
(iii) Similarly with regards to the generic word “cheap”, the Complainant submitted that the mere addition of this generic word to a registered trademark has been also deemed insufficient to avoid confusing similarity under previous Panel decisions pronounced under the UDRP in similar situations. It then cited WIPO F. Hoffmann-La Roche AG v. Drug Sale, Case No. D2006-0066 as an example to show that that panel had considered that the domain name was confusingly similar to the Complainant's trademark.
(iv) The Complainant has submitted that the usage of the suffix “online” to a registered trademark has been also deemed insufficient to avoid confusing similarity under previous panel decisions pronounced under the UDRP in similar situations. It relied upon the decision of Playboy Enterprises International, Inc. v. Tonya Flynt Foundation WIPO Case No. D2001-1002 which decided that the word “online” is
“a common way of saying certain things can be found on the [I]nternet. Thus the Respondent has added nothing of distinction to the Complainant's famous mark.”
The Complainant then referred to the Sanofi-Aventis v. SD Shep Dog,WIPO Case No. D2004-0807 in which the panel had to decide the disputed domain name of . The panel there came to the conclusion that, “[t]he use of the generic term [online] in conjunction with the Complainant's trademark ACOMPLIA does not prevent the domain name in dispute from being confusingly similar, as the generic term is lacking in distinctiveness”.
(v) Finally, the Complainant submitted 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 trademarks represented in the domain name. The Complainant concluded on its argument of confusing similarity by stating that the trademark ACOMPLIA and the disputed domain name would cause a high risk of confusion, as a consumer might think that the domain name directly refers to the Complainant product.
5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Name for the following reasons:
(i) The Complainant has prior rights in the ACOMPLIA trademark and these rights precede the Respondent's registration of the disputed domain name.
(ii) The Complainant's trademarks for ACOMPLIA are well-known throughout the world and is present in 100 countries, including the United States, where the Respondent is located.
(iii) The Complainant has not licensed or otherwise permitted the Respondent to use its trademark ACOMPLIA or apply for any domain names incorporating the trademark and the Respondent is not entitled to register or use the domain name with the Complainant's trademark ACOMPLIA with the adjunction of the generic words “buy”, “cheap”, and the suffix “online”.
(iv) 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. The Complainant then suggests that the Respondent's use does not satisfy the test for bona fide use established in prior UDRP decisions.
(v) That the Respondent does not use the domain name in connection with a bona fide offering of goods or services.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Respondent has no prior right in respect of the trademark ACOMPLIA, and no authorisation to use this trademark was granted to the Respondent.
(ii) At the time the disputed domain name was registered on October 9, 2008 the Respondent knew of the widely publicised launch of a new product under the trademark ACOMPLIA by the Complainant. The Respondent registered the disputed domain name in order to prevent the Complainant from adopting the trademark in a corresponding domain name.
(iii) The Respondent was not only aware of the existence of the ACOMPLIA trademark at the time the disputed domain name was registered but had also set up a website that provides information and leads to websites providing offers to buy ACOMPLIA products or counterfeit products or placebo products related to the treatment of obesity.
(iv) The Respondent's action of using its website under the domain name is to intentionally link its domain name with several on-line pharmacies providing information on and offering to buy ACOMPLIA products or counterfeit products or placebo products and other competitors' products related to the weight loss treatment. The Complainant submits that in this regard, the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent's website, and to create a likelihood of confusion with the Complainant's trademark. The Respondent links to redirecting the Internet user to a website where competitors' products for the treatment of obesity are offered for sale with the clear intention of commercial gain.
The Complainant requests a decision that the Domain Name be cancelled B. Respondent
5.4 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.4 Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Namely, the complainant must prove that:
“(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.”
6.5 Under paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
Where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., / Titan Net/ NOLDC, Inc,WIPO Case No. D2006-0808). A. Identical or Confusingly Similar
6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.7 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name's use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.8 The Complainant has appended to the Complaint a long list of registered trademarks that incorporate the word “acomplia”. It is quite clear that the Complainant is the owner of a number of trademarks in over 100 countries that simply comprise the word “acomplia”. A number of these have already been listed in this decision. The Domain Name consists of the Complainant's trademark ACOMPLIA in addition with the generic or descriptive words “buy” and “cheap”, the suffix “online”, and the gTLD “.com” causes confusing similarity and many previous panel decisions pronounced under the UDRP in similar situations such as in the above cited cases, Hoffmann-La Roche AG v. Drug Sale and Sanofi-Aventis v. SD Shep Dog, had correctly decided that such additions of generic words were not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given the above, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trademarks in which the Complainant has rights.
6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.10 The Panel is satisfied that the Complainant provided evidence showing that the trademarks for ACOMPLIA are widely known throughout the world, registered and is present in 100 countries, including the United States, where the Respondent is located. At the heart of the Complaint is the Complainant's contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website to intentionally link its Domain Name with several on-line pharmacies providing information on and offering to buy ACOMPLIA products or counterfeit products or placebo products and other competitors' products related to weight loss treatment. The Panel accepts that such activity clearly does not provide the Respondent with a right or legitimate interest in the Domain Name.
6.11 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.12 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001, citing Drexel University v. David Brouda,WIPO Case No. D2001-0067).
6.13 As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is confusingly similar to the Complainant's mark.
6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
6.16 The Panel accepts the Complainant's contention that the Respondent registered the Domain Name in the knowledge of the Complainant's business and its use of the ACOMPLIA trademark. This is inherently probable given the fact that the Complainant has demonstrated its widespread worldwide usage of the ACOMPLIA trademark in over 100 countries, including the United States where the Respondent is based.
6.17 Given this finding, the Panel also infers and accepts the Complainant's undisputed contention that the Respondent registered the Domain Name with a view to intentionally create a likelihood of confusion with the Complainant's trademark, corporate name and domain name as to the source, sponsorship, affiliation and/or endorsement on its website, in all likelihood, for its own commercial gain.
6.18 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant to the source of a website.
6.19 Given that the Respondent has failed to show (for the reasons set out under the heading 6.B. Rights and Legitimate Interests above) that it was using the Domain Name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The Panel is satisfied that the Respondent's action of using its website under the Domain Name is to intentionally link its Domain Name with several online pharmacies providing information on and offering to buy ACOMPLIA products or counterfeit products or placebo products and other competitors' products related to weight loss treatment. The Panel has no doubt that the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent's website, The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20. The Panel comes to the conclusion that the Respondent most likely registered the Domain Name in order to prevent the Complainant from adopting the trademark in a corresponding domain name. This has been done in bad faith as the Respondent knew or would have known of the widely publicised launch of the new product under the trademark ACOMPLIA.
6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith for the above stated reasons. 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. Colin Yee Cheng Ong
Sole Panelist
Dated: April 7, 2009
Full & Egal Universal Law Academy