WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Krunal Chauhan Case No. D2009-0326 1. The Parties
The Complainant is Sanofi-aventis of Paris, France, represented by Carole Tricore, France.
The Respondent is Krunal Chauhan, of Gujarat, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2009. On March 13, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 13, 2009, GoD, 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 March 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2009.
The Center appointed Ira S. Sacks as the sole panelist in this matter on April 28, 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 in this administrative proceeding is a multinational pharmaceutical company doing business in more than 100 countries, with its principal place of business in Paris, France.
During the summer of 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. AVENTIS was also a well-known pharmaceutical company resulting from the merger of HMR (Hoechst Marrion Roussel) and Rhône Poulenc. The name of the parent company resulting from this merger, adopted on August 20, 2004, is sanofi-aventis. Completion of the merger created the largest pharmaceutical group in Europe and the fourth largest in the world, with consolidated net sales of EURO 28 billion in 2007 in the core business, a strong direct presence on all major world markets, and EURO 4.537 billion in annual research and development expenditures.
The new group benefits from a large portfolio of high-growth drugs, with 8 major pharmaceuticals in 2007: Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It also enjoys firmly established positions in 7 key fast-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines. Employing approximately 100,000 people worldwide, Sanofi-aventis has a sales force of 35,030 persons, as well as more than 19,310 research staff with 113 projects under development, 47 of which are at advanced stages and 66 in pre-clinical development. The stock market capitalization of Sanofi-aventis is over EURO 100 billion.
On February 16, 2004, the Complainant announced and published on the Internet early results of two Phase III studies for a new product, ACOMPLIA. The active ingredient in ACOMPLIA is Rimonabant. The studies indicated 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 also were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004.
During 2005 and 2006, several scientific publications were published in relation to ACOMPLIA, such as the RIO-Lipids study published in The New England Journal of Medicine, and substantial disclosure was made relating to ACOMPLIA on the Internet. As obesity is a major health concern, ACOMPLIA can be considered a revolutionary medicine.
The European Market Authorization concerning ACOMPLIA was granted in June 2006 and the product has been commercialized in Europe.
The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries including India. The Complainant has also registered numerous domain names worldwide containing the ACOMPLIA trademark, including , and .
According to the concerned registrar's WhoIs database, the Respondent in this administrative proceeding is Krunal Chauhan with an address in Gujarat, India.
The domain name at issue was registered on October 25, 2007.
In the absence of any Response, there is little information available about the Respondent except that it has used the domain name in issue as the address of a website that at one time led to an active website which was an online pharmacy where ACOMPLIA products, counterfeit products, placebo products and/or other products in direct competition with the Complainant's business were offered for sale. 5. Parties' Contentions A Complainant
The Complainant submits that the domain name is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights. In that regard, the Complainant asserts as follows:
To date, a number of UDRP decisions in respect of the trademark ACOMPLIA, have ordered the transfer of the disputed domain names to the Complainant. For example, in Sanofi-aventis v. Daichi Hoang,WIPO Case No. D2005-0363, the panel ordered that domain names and be transferred to the complainant, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules. Similarly, in Sanofi-aventis v. Link,WIPO Case No. D2004-0810, the panel ordered the transfer of the domain names and to the Complainant.
The domain name consists of a combination of the Complainant's ACOMPLIA trademark in its entirety and a slight misspelling of the Complainant's same trademark, namely the doubling of the letter “c” of the trademark ACOMPLIA, and the gTLD “.info.” The Complainant asserts that confusion predominantly results from the fact that the word “accomplia” used in the disputed domain name and the trademark ACOMPLIA have the same pronunciation and the domain name is indistinguishable from the pronunciation of the Complainant's trademark ACOMPLIA. This type of modification of a trademark is commonly known as “typosquatting” and is not considered sufficient to escape a finding of similarity.
The Complainant refers to a number of panels who have considered that “typosquatting” consists in the use of a domain name misspell or with the predictable mistyping of a distinctive mark. See Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames - For Sale,WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd.,WIPO Case No. D2000-1293.
The Complainant urges that, as in the typical case of “typosquatting,” the Respondent has registered and is using the domain name in order to take advantage of typographical errors made by internet users seeking the Complainant's commercial website and by diverting them to the Respondent's website. See Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035. Therefore, such misspelling of the trademark ACOMPLIA has been considered insufficient to avoid confusing similarity under previous panel decisions in similar situations.
For example, the Complainant refers to Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel,WIPO Case No. D2005-1045, in which the Panel ordered the transfer of similar domain names composed with the trademark ACOMPLIA, including , , , , and , to the Complainant, considering “that the domain names are confusingly similar to a service mark in which the Complainant has rights.”
Based on the aforementioned UDRP cases, the Complainant submits that there is no doubt that the association in a domain name of the trademark ACOMPLIA, in its entirety, and a slight misspelling of the Complainant's same distinctive trademark, generates confusion.
The Complainant also submits that the addition of the gTLD “.info” has no distinguishing capacity in the context of the domain name and does not alter the trademark represented in the domain name. See Telecom Personal v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; Nokia Corporation v. Private Case,WIPO Case No. D2000-1271.
The Complainant states that it has prior rights in the ACOMPLIA trademark, which precede the Respondent's registration of the disputed domain name. Moreover, the Complainant's trademark ACOMPLIA is present in more than 100 countries, including India, where the Respondent is located. The Complainant's trademarks are well-known throughout the world and a worldwide communication by way of the Internet has been made about the results of this medical product.
The Complainant also states that 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 along with the addition of a slight misspelling of the same.
The Complainant refers to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which sets forth the minimum requirements for Respondent to establish a bona fide offering of goods or services in one particular context, i.e., resellers, pursuant to paragraph 4(c)(i) of the Policy. Those minimum requirements include: (i) the Respondent must actually be offering the goods or services at issue; (ii) the Respondent must use the site to sell only the trademarked goods, to avoid site using the trademark to bait Internet users to the site and then switch them to other goods; (iii) the site must accurately disclose the registrant's relationship with the trademark owner and may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and (iv) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own trademark in a domain name.
Here, the Complainant asserts, the Respondent's use of the domain name fails to qualify as a bona fide offering of goods or services. The disputed domain name used by the Respondent leads to an active website which is an online pharmacy where ACOMPLIA products, counterfeit products, placebo products and/or competitor products are offered for sale.
Thus, the Complainant suggests, the Respondent's website is merely a portal for the website of a third party from which the Respondent receives a commission. In such cases, the Respondent does not actually offer “bona fide genuine goods or services.” Rather, many previous panel decisions have stated that, in such circumstances, the respondent does not have any rights or legitimate interests with respect to the Complainant's trademark. See Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington,WIPO Case No. D2005-1287; Société des Hôtels Méridien. Modern Limited-Cayman Web Development,WIPO Case No. D2004-0321. See also Lilly ICOS LLC v. Self,WIPO Case No. D2005-1099; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif,WIPO Case No. D2006-1123.
The Complainant also points out that even if the Respondent was directly selling the genuine ACOMPLIA product (which is contested by the Complainant and prohibited in many countries), the online pharmacy related to the Respondent website is selling other competitive “weight loss treatment” as well. Many previous panels have stated that such activity precludes Respondent from having a right or a legitimate interest to use the Complainant's trademark in a domain name.
In Stanley Works and Stanley Logistics Inc. v. Camp Creek Co, Inc.,WIPO Case No. D2000-0113, for example, the Panel stated: “Moreover, even if the Respondent is a retail seller of Complainant's products, the collateral trademark use necessary to allow resell of Complainant's products is not enough to give Respondent proprietary rights in Complainant's trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designated goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer's trademarks.” See also Motorola Inc. v. NewGate Internet Inc.,WIPO Case No. D2000-0079; Amphenol .v. Applied Interconnect, Inc.,WIPO Case No. D2001-0296; Sanofi-aventis v. Chris,WIPO Case No. D2007-0047.
Moreover, the Complainant also notes that Respondent's website did nothing to disclaim any relationship with the trademark owner. It did nothing to dispel the suggestion that it might be the trademark owner or that the website might be an official site of the Complainant. See Sanofi-aventis v. ClickStream Marketing LLC,WIPO Case No. D2005-0769.
Indeed, in the Complainant's view, the Respondent only registered the disputed domain name because it was aware that ACOMPLIA is a revolutionary drug against obesity.
The Complainant further submits that the domain name should be considered as having been registered and used in bad faith, based on the following elements: (i) the Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA trademark; (ii) the Respondent was and remains aware that ACOMPLIA is a revolutionary drug to treat obesity; and (iii) the Respondent uses the disputed domain name for commercial gain.
(i) The Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA trademark.
The Complainant submits that, as has been demonstrated above, the Respondent has no prior rights in the trademark ACOMPLIA, and no authorization in any form to use the trademark was granted to the Respondent.
(ii) The Respondent was and remains aware that ACOMPLIA is a revolutionary drug against obesity.
The Complainant further submits that the Respondent was and remains aware that ACOMPLIA is a revolutionary drug against obesity. On February 16, 2004, the Complainant announced publicly the early results of two Phase III studies of ACOMPLIA through an information meeting, the contents of which were dispersed, the same day, on the Internet. On March 9, 2004, these results were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans. During 2005 and 2006, several scientific publications were published concerning ACOMPLIA, such as the RIO-Lipids study published in The New England Journal of Medicine, and substantial disclosure was made relating to ACOMPLIA on the Internet. The Respondent, knowing the Complainant was marketing a revolutionary drug in several countries under the name of ACOMPLIA, registered the disputed domain name on October 25, 2007.
The Complainant points out that various Panels have considered the fact that registering a domain name took place after the Complainant's product launch leads to an inference of bad faith. See Medestea Internazionale S.r.l. v. Chris Gaunt,WIPO Case No. D2003-0011; America Online Inc v. Chan Chunkwong,WIPO Case No. D2001-1043; Guardant Inc v. youngcho Kim,WIPO Case No. D2001-0043.
According to the Complainant, there can be no doubt that the Respondent knew of the product sold under the Complainant's trademark ACOMPLIA when it registered the domain name. This can be deduced from the construction of the domain name, consisting of the trademark ACOMPLIA of the Complainant with the addition of a slight misspelling of the Complainant's same trademark, from the date of the domain name registration and from the content of the website.
(iii) The Respondent uses the domain name for commercial gain.
The Complainant notes that paragraph 4(b)(iv) of the Policy lists, as one of the typical situations evidencing bad faith, the fact that “using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.”
In fact, asserts the Complainant, the Respondent's website provides information and offers for sale ACOMPLIA products, counterfeit products, placebo products and other competitive products related to the treatment of obesity. By using its website under the domain name to sell ACOMPLIA medicine without any authorization, the Respondent is intentionally attempting, for a commercial purpose, to attract Internet users to the Respondent's website.
Respondent uses its website under the domain name to lead Internet users to a third party online pharmacy. The Complainant asserts that one can reasonably assume that the Respondent does not provide this service of setting up links which are redirecting the Internet user to a website where competitors' products for the treatment of obesity are offered for sale for free. The Respondent provided these links with the clear intention of commercial gain.
Furthermore, the Complainant asserts that any Internet user who will try to connect to the above mentioned website will likely believe that the ACOMPLIA medicine is available in all countries without prescription, whereas ACOMPLIA medicine (i) is not authorized in all countries, (ii) and can only be obtained by medical prescription.
Therefore, according to the Complainant, the use of the domain name to redirect Internet users to online pharmacies selling pharmaceuticals such as ACOMPLIA without requiring proof of a physical examination by an authorized doctor and/or a prescription is potentially harmful to the health of Internet users who purchase ACOMPLIA products.
The Complainant explains that previous UDRP Panels have stated that selling prescription medication without any doctor's examination or prescription, in violation of public health regulations, can constitute evidence of the respondent's bad faith. One example can be found in Lilly ICOS LLC v. Tudor Burden,Burden Marketing, WIPO Case No. D2004-0794, in which the panel stated that: “Complainant's Cialis product is available only with a physician's prescription, and is manufactured, labeled, and sold in strict compliance with FDA [“United States Food and Drug Administration”] and other health authority laws and regulations…[t]he products sold on respondent's website are…illegal and potentially dangerous.”
The Complainant argues that such behavior on the part of the Respondent makes it obvious that the domain name is used in bad faith. B. Respondent
Although the Respondent sent three emails expressing desire to forfeit the domain name in question, the Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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. A. Identical or Confusingly Similar
The Complainant has established that it has substantial rights in the trademark ACOMPLIA.
The domain name at issue, , is comprised of a combination of the word “acomplia” and the addition of a slight misspelling of the same word, namely the doubling of the letter “c” of the trademark ACOMPLIA, and the gTLD “.info.” In the view of this Panel, the mere addition of such misspelling of the Complainant's trademark does not change the character of the domain name. The domain name is confusingly similar to the trademark ACOMPLIA in which the Complainant has rights.
In reaching this conclusion this Panel is satisfied that the Complainant's trademark is the dominant element of the domain name. This Panel further notes that the pronunciation of Respondent's slight misspelling of the ACOMPLIA is the same as the trademark ACOMPLIA. Thus, the virtual repetition of the ACOMPLIA trademark in the domain name would serve to add to such confusion rather than distinguish the mark and the domain name.
The Complainant has therefore established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has established that Respondent has no rights or legitimate interests in the domain name at issue.
The Complainant has argued that the Respondent could not have any such rights given the Complainant's rights in the ACOMPLIA trademark and the extent of its reputation in India and worldwide. The Complainant has provided evidence of a substantial reputation in the use of the ACOMPLIA trademark in India and worldwide.
The Respondent's use of the domain name as the address of a website that, at one time, led to an active website for an online pharmacy where ACOMPLIA products, counterfeit products, placebo products an/or other products in direct competition with the Complainant's business were offered for sale does not constitute a bona fide use of the domain name.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name at issue. In such circumstances, under the Policy, the burden of proof shifts to the Respondent to demonstrate that it has such rights. The Respondent has not met that burden.
As a result, the Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant has established that Respondent registered and has used the domain name in bad faith.
The Complainant's use of the ACOMPLIA mark significantly pre-dates the Respondent's registration of the domain name . Given the substantial international reputation of the Complainant, and the publicly available information about ACOMPLIA products and the ACOMPLIA trademark at the time the Respondent registered the domain name, Respondent plainly is likely to have been aware of the Complainant's marks when it registered the domain name at issue. Indeed, in this Panel's view, there is no possible reason for choosing the domain name at issue other than to trade on the goodwill of Complainant.
In the view of this Panel, the fact that the Respondent chose the distinctive combination of the word “acomplia” and a slight misspelling of the word “acomplia” indicates that the Respondent was actually aware of the Complainant's rights and reputation in the use of the ACOMPLIA trademark when it registered the domain name at issue.
In the view of this Panel, the Respondent chose this particular domain name because the combination of these elements was likely to divert Internet users searching for the Complainant's product to the Respondent's website.
This Panel is satisfied that the Respondent chose and registered this particular domain name in order to take improper advantage of the Complainant's rights and reputation.
The Respondent established a website at the domain name address that led to an active website which was an online pharmacy where ACOMPLIA products, counterfeit products, placebo products and/or products in direct competition with the Complainant's product were offered for sale.
This Panel is therefore satisfied that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's ACOMPLIA trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on Respondent's website.
In these circumstances, this Panel is satisfied that that the Respondent registered and used the domain name in bad faith.
The Complainant has therefore also established the third element of paragraph 4(a) of the Policy and is entitled to succeed in its application. 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.
Ira S. Sacks
Sole Panelist
Dated: May 12, 2009
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