WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. New Health Care Inc., Kevin Josh Case No. D2009-0196 1. The Parties
The Complainant is Sanofi-aventis, Gentilly, France, represented by Carole Tricoire, France.
The Respondent is New Health Care Inc., Kevin Josh, 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 February 13, 2009. On February 16, 2009, the Center transmitted by email to Active Registrar, Inc. a request for registrar verification in connection with the disputed domain name. On February 18, 2009, Active Registrar, Inc. 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 contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2009 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 February 24, 2009. 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” 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 February 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 19, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on April 2, 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
Sanofi-aventis, a French company, was formed in August 20, 2004 as the parent company of Sanofi-Synthelabo, a French pharmaceutical company which in 2004 acquired another French pharmaceutical company Aventis. The Sanofi-aventis group of companies is the largest pharmaceutical group in Europe and the fourth largest in the world. Sanofi-aventis is represented in more than 100 countries employing approximately 100,000 people worldwide.
On February 16, 2004, the Complainant announced early results of studies with a new weight control product called ACOMPLIA (the Complainant's trademark). The product was only launched in Europe. Subsequently, on October 23, 2008 the European Medicines Agency recommended the suspension of the marketing authorization for ACOMPLIA from Sanofi-aventis.
Since 2003 the Complainant (or its subsidiary companies) has filed trademark applications for ACOMPLIA in more than 100 countries including the United States of America where the Respondent is located.
Over the past three years the Complainant has had to file many complaints involving disputed domain names containing its trademark ACOMPLIA. More than 40 cases have resulted in the domain names being ordered to be transferred to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that the domain name , despite the descriptive word “generic” and the gTLD “.biz”, is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights. It is the Complainant's view that persons accessing the domain name would be bound to think that the domain name has a connection with the Complainant.
The Complainant asserts that the Respondent's use of the disputed domain name does not satisfy the test for bona fide use because the Complainant's prior rights in the trademark ACOMPLIA precede the Respondent's registration and 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 with the adjunction of the descriptive word “generic”. The Complainant has 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 notes that the disputed domain name used by the Respondent, leads to an active website where information about ACOMPLIA product is provided and leads to several online pharmacies where ACOMPLIA products or counterfeit products or placebo products and/or other competitor products are offered for sale. The Complainant asserts that the Respondent's website is merely a portal for the website of a third party from which the Respondent is paid a commission. Consequently, the Respondent is not actually offering any bona fide genuine goods or services.
The Complainant contends that the Respondent has no right or a legitimate interest to use the Complainant's trademark in a domain name even if the Respondent was directly selling the genuine ACOMPLIA product (which is contested by the Complainant and now prohibited in a lot of countries).
The Complainant contends that the bad faith of the Respondent results from; (a) the Respondent having no prior right and no authorization from the Complainant concerning the ACOMPLIA trademark, (b) the Respondent's awareness that ACOMPLIA is a revolutionary drug against obesity and (c) the Respondent uses the domain name to attract for commercial gain Internet users particularly as the Respondent's website provides information and leads to websites providing offer to buy ACOMPLIA products or counterfeit products or placebo products related to the treatment of obesity.
According to the Complainant, the Respondent's website provided links to other websites with the clear intention of commercial gain. Also, of concern to the Complainant is the fact that any Internet user who tries to connect to the Respondent's website will believe that the ACOMPLIA medicine is available in all countries without any medical control when in fact the ACOMPLIA medicine is not authorised in all countries as it has not been granted with all the administrative market authorization required and it can only be obtained by medical prescription. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided extensive evidence that it has registered rights in the trademark ACOMPLIA.
The disputed domain name consists of the Complainant's trademark in full preceded by the descriptive word “generic” and the suffix gTLD “.biz”.
It has long been held that adding a descriptive word and a gTLD to a registered trademark does not provide sufficient differentiation for a disputed domain name to be considered distinctive from the dominant element of a complainant's trademark.
More specifically, the word “generic” has been held as being descriptive by many panels considering other disputed domain names which contain the word “generic”, including a number specifically related to the Complainant's trademark ACOMPLIA. For example, , , , and were held to be confusingly similar to the Complainant's trademark ACOMPLIA (see Sanofi-aventis v. BH Marketing,WIPO Case No. D2006-0440; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel,WIPO Case No. D2005-1045; Sanofi-Aventis v. US-M, WIPO Case No. D2004-0809).
Similarly, it has been held in many previous cases that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc.,WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant's trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name . In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the Complainant's trademark in its entirety without authorisation by the Complainant by way of any license, consent or other right. The evidence provided by the Complainant indicates that the Respondent has used the disputed domain name to attract Internet users to an active website where information about the ACOMPLIA product is provided. Also, the Complainant has demonstrated that the Respondent's website has links to redirect Internet users to several on-line pharmacies websites where ACOMPLIA products and other competitor products are offered for sale.
The act of redirecting Internet users to other websites by using the reputation and goodwill of the complainant's trademark through a domain name that incorporates a well known trademark to a website unconnected to the trademark owner, does not constitute bona fide offering of goods and services (see Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt,WIPO Case No. D2007-0819 and Lance Armstrong Foundation v. Chris Angeles,WIPO Case No. D2005-0888, Baudville, Inc. v. Henry Chan,WIPO Case No. D2004-0059 and Sanofi-aventis v. Milton R. Benjamin,WIPO Case No. D2005-0544.
Based on the above the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Given the opportunity through this dispute process the Respondent has failed to rebut the Complainant's case or assert any rights in the domain name.
The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Respondent registered the disputed domain name in June 29, 2008, several years after the Complainant announced publicly the results of its studies of a new product called ACOMPLIA. That announcement was followed by scientific publications concerning ACOMPLIA and extensive communication on the Internet. There can be no doubt that the Respondent was aware of the Complainant's medicine at the time of registering the domain name. The construction of the domain name chosen by the Respondent includes the Complainant's trademark and a word often used with medicines “generic”. Also, the Respondent's website specifically refers to “the new weight loss medication breakthrough from Sanofi-Aventis”, includes a photograph of the Complainant's packaging and provides information about the medication.
The Panel notes that registering a domain name after a product launch has been held previously to lead to an inference of bad faith (see Medestea Internazionale S.r.l. v. Chris Gaunt, D2003-0011, America Online Inc v. Chan Chunkwong, WIPO Case No. D2001-1043 and Guardant, Inc. v. youngcho kim,WIPO Case No. D2001-0043).
The Complainant has provided evidence that the Respondent's website provided links to on-line pharmacies providing information and offers to buy ACOMPLIA products. In doing so the Respondent is intentionally attracting for commercial gain Internet users by creating confusion with the Complainant's trademark and as such is evidence of bad faith use.
Bad faith can also be inferred by the Respondent unethically selling pharmaceuticals (which may well be counterfeit or placebo products) including ACOMPLIA without requiring proof of a physical examination by an authorised doctor. Such activity constituted evidence of bad faith in Lilly ICOS LLC v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794.
On the basis of the above and the evidence provided by the Complainant, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain names were registered and used in bad faith. 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 as requested by Complainant.
Ross Wilson
Sole Panelist
Dated: April 16, 2009
Full & Egal Universal Law Academy