WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Tomas Sullivan Case No. D2009-0195 1. The Parties
Complainant is Sanofi-aventis, Paris, France, represented internally.
Respondent is Tomas Sullivan, Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainR (“PublicDomainR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2009. On February 16, 2009, the Center transmitted by email to PublicDomainR a request for registrar verification in connection with the disputed domain name. On February 19, 2009, PublicDomainR transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 17, 2009.
The Center appointed Roberto Bianchi as the sole panelist in this matter on April 1, 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 following facts and circumstances have been contended by Complainant and proved with sufficient documentary evidence without any opposition from Respondent:
- Complainant Sanofi-aventis is a multinational company employing approximately 100,000 people in more than 100 countries. This company has a market capitalization of 103,697 million Euros.
- On February 16, 2004, during an information meeting, the contents of which were dispersed on the Internet, Complainant announced early results of two Phase III studies with a new Acomplia product which is composed of the active substance called “Rimonabant”, indicating that overweight and obese patients with untreated dyslipidemia lost weight in one year while improving their lipid and glucose profiles, and that smokers who had previously unsuccessfully tried to quit smoking, were able to quit in 10 weeks without post cessation weight gain. These results were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004.
- Complainant has filed trademark applications for ACOMPLIA in more than 100 countries including the United States. Complainant owns, inter alia, the following trademark registrations for ACOMPLIA: Community Trademark, registered on April 26, 2005 under the Reg.No. 003565678; Registration with the Madrid Agreement on May 7, 2004 under the Reg. No. 825,821; France, registered on December 3, 2003 under Reg. Number 033260481, Japan, registered on October 22, 2004 under Reg. Number 4,811,294, Mexico, registered June 17, 2004 under Reg. Number 837,787, O.A.P.I., registered July 14, 2004 under Reg. Number 49,523.
- Respondent registered the disputed domain name on October 9, 2008.
- On February 9, 2009, the disputed domain name pointed to a web page containing information about the product ACOMPLIA and links to the “www.buy” and websites, where the “generic Acomplia” product as well as other products such as Viagra, Cialis, Levitra, Xenical, etc. are being is offered for sale on the Internet. 5. Parties' Contentions A. Complainant
In its Complaint, Complainant contends the following:
- The domain name is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights.
- Respondent has no right or legitimate interest in respect of the domain name . Complainant has prior rights in the ACOMPLIA trademark, preceding Respondent's registration of the disputed domain name. Complainant's trademark ACOMPLIA is present in 100 countries, including the United States, where Respondent is located. Complainant's trademarks are well-known throughout the world. There is no license, consent or other right by which Respondent would have been entitled to register or use the domain name with Complainant's trademark ACOMPLIA with the adjunction of the generic word “cheap” and the suffix “online”. There is no doubt that Respondent is aware that ACOMPLIA corresponds to a medical product and therefore to a trademark in respect of the content of its website. Therefore, Respondent's use does not satisfy the test for bona fide use established in prior WIPO UDRP decisions. The disputed domain name leads to an active website where information about Acomplia product is provided and leads to several on-line pharmacies where Acomplia products or counterfeit products or placebo products and/or other competitor products are offered for sale. Thus, Respondent's website is merely a portal for the website of a third party from which Respondent is paid a commission. In such case, Respondent does not actually offer any bona fide genuine goods or services.
- The domain name should be considered as having been registered and used in bad faith. Respondent has no prior right or authorization given by Complainant concerning the ACOMPLIA trademark; Respondent is aware that Acomplia is a revolutionary drug against obesity. Respondent uses the domain name to attract for commercial gain Internet users. By using its website under the domain name 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, Respondent is intentionally attempting for a commercial purpose to attract Internet users to Respondent's website, and creates a likelihood of confusion with Complainant's trademark. B. Respondent
Respondent did not reply to Complainant's contentions, and is in default. 6. Discussion and Findings
UDRP panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
By submitting copies of certificates of registration in various countries, Complainant evidenced that it owns the word mark ACOMPLIA, which is in force. Accordingly, the Panel finds that Complainant has rights in such mark.
In the disputed domain name, the descriptive and generic terms “cheap” and “online” are added to the ACOMPLIA mark. Neither of these additions, nor the necessary inclusion of the gTLD “.com”, is apt to avoid the impression of confusing similarity between both identifiers. See Hoffmann-La Roche Inc. v. George Thomas,WIPO Case No. D2008-1989 (“The addition of the generic terms “buy,” “cheap,” and “online,” and the “.net” top level domain does not defeat confusing similarity.”) See also Sanofi-Aventis v. C,WIPO Case No. D2005-0660 (“There will be words such as “buy”, “shop” cheap” which by their very nature add nothing to a trade mark, but there are words too which may in one context lend distinctiveness and shape a new brand, but be purely trivial when put alongside a different trade mark.”)
The Panel concludes that the first element of the Policy is met. B. Rights or Legitimate Interests
According to Complainant's evidence, Complainant has prior rights in the ACOMPLIA trademark, preceding Respondent's registration of the disputed domain name. Complainant contends that its trademark ACOMPLIA is present in 100 countries, including the United States, Respondent's country of residence. Complainant explains that it has not given any license, consent or other right allowing Respondent to register or use the domain name reflecting Complainant's trademark ACOMPLIA with the addition of “cheap” or “online”. Complainant adds that Respondent is aware that ACOMPLIA corresponds to a medical product and therefore to a trademark in respect of the content of its website.
Complainant has proved that the disputed domain name resolves to a website where information about the Acomplia product is provided and links to several on-line pharmacies appear. In each of these links the Internet user is offered the Acomplia product, as well as generic products or other competitor products for sale. Complainant infers that Respondent is being paid a commission for posting such commercial links on his website. Complainant concludes that such a use of the domain name is not a bona fide offering of products or services.
Taken together, Complainant' contentions and supporting evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. Respondent has not presented the Panel with any comments or evidence. Accordingly, the Panel considers that Complainant has satisfied Policy paragraph 4(a)(ii). See point 4.6. of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”. Available at "/amc/en/domains/search/overview/index.html". C. Registered and Used in Bad Faith
With printouts taken from Respondent's website at the disputed domain name, including a text with a description of the Acomplia products and its uses in medicine, Complainant evidenced that Respondent could not have ignored that this product is protected by Complainant's well-known mark ACOMPLIA. In other words, Respondent registered the domain name in bad faith. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (concluding that the domain name was registered in bad faith since complainant's trademark was well-known and it was very unlikely, if not nearly impossible, that respondent was not aware that it was infringing on complainant's trademark rights).
Also, these printouts show that Respondent is using Complainant's mark to attract Internet users to online pharmacies where not only Complainant's product Acomplia, but also other drugs from competing companies and other sources unrelated to Complainant are being offered for sale. Presumably, Respondent's use of the disputed domain name is aimed at extracting some income, big or small, via “click-through” or “pay-per-click” systems. This use of the domain name falls squarely within the description of Policy paragraph 4(b)(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”), which is evidence of bad faith registration and use of the domain name. See F. Hoffmann-La Roche AG v. Samir Kumar, samirnet domain names for sale,WIPO Case No. D2008-0919).
Accordingly, the Panel finds that the third requirement of the Policy is met. 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.
Roberto Bianchi
Sole Panelist
Dated: April 14, 2009
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