WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-Aventis v. Abigail Wallace Case No. D2009-0735 1. The Parties
The Complainant is Sanofi-Aventis of Gentilly Cedex, France, represented internally, France.
The Respondent is Abigail Wallace of Santa Monica, 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. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2009. On June 4, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On June 5, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 June 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 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, Sanofi-Aventis, is one of the largest pharmaceutical groups in the world, with consolidated net sales of some 27 million Euros in 2008 and some 4.6 billion Euros research and development expenditure.
On February 16, 2004, during an information meeting, the content of which was dispersed on the Internet, the Complainant announced early results of two Phase III studies, indicating that obese patients with untreated dyslipidemia, that were treated with a drug called Acomplia, lost weight while improving their lipid and glucose profiles. The studies also showed that smokers, who had previously unsuccessfully tried to quit smoking, were able to quit in ten weeks without post cessation weight gain when using the Acomplia drug.
The Complainant owns multiple trademark applications and registrations for the mark ACOMPLIA around the world. For example: CTM registration No. 3565678 – ACOMPLIA, with the filing date of December 2, 2003; Zimbabwe trademark registration No. 336/2004 – ACOMPLIA, with the filing date of December 3, 2003; US trademark registration No. 2941824 – ACOMPLIA, with the filing date of January 5, 2004; Mexican trademark registration No. 837787 – ACOMPLIA, with the filing date of February 20, 2004; Israeli trademark registration No. 171879 – ACOMPLIA, with the filing date of May 2, 2004; Japanese trademark registration No. 4811294 – ACOMPLIA, with the filing date of February 25, 2004 and many more.
The Complainant also owns several domain names that are consisting or including of the name “Acomplia”. For example: .
The European Market Authorization regarding the Acomplia drug was granted in June 2006. The product has been commercialized in Europe since June 2006. On October 23, 2008 the European Medicine Agency (EMEA) recommended suspension of the marketing authorization for the Acomplia drug from the Complainant.
The Respondent registered the disputed domain name on October 9, 2008. The Respondent operated a website under the disputed domain name, on which information about the Acomplia product was provided and links to on-line pharmacies were offered. However, at present time the Respondent has ceased to operate the website under the disputed domain name. The disputed domain name is now directing consumers to an error page, which reads “Oops! This link appears to be broken”. Nevertheless, the domain name is still registered in the name of the Respondent. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the ACOMPLIA trademark owned by the Complainant, seeing that it incorporates the trademark as a whole. The Complainant asserts that the addition of the generic word “cheap” in the disputed domain name is irrelevant and should be ignored through the assessment of the similarity between the disputed domain name and the registered trademarks owned by the Complainant.
The Complainant further argues that it has exclusive rights to the ACOMPLIA trademark and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not license or permitted the Respondent to use the ACOMPLIA mark.
The Complainant further argues that the Respondent registered the disputed domain name in bad faith, with the intent to divert Internet users from the Complainant's products and services and create a likelihood of confusion.
The Complainant further argues that the Respondent is not using the disputed domain name in connection with the bona fide offering of goods or services.
The Complainant further argues that the Respondent was aware of its existence and of its ACOMPLIA mark and product at the time she registered the disputed domain name.
The Complainant further argues that the Respondent is trying to attracted, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant's mark.
For all of the above reasons, the Complainant requests the cancellation of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the term shown in the trademark certificate belong to its respective owner. The Complainant's trademark ACOMPLIA was filed for registration in the European Union on December 2, 2003 and has been registered in the European Union since April 26, 2005. Since then the Complainant has registered the ACOMPLIA mark in multiple countries.
The addition of the term “cheap” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's ACOMPLIA trademark. Previous UDRP panels have decided that the mere addition of the word “cheap” does not exclude confusing similarity. See, for example, F. Hoffmann-La Roche AG v. Drug Sale,WIPO Case No. D2006-0066; Sanofi-aventis v. Elyssa Manis,WIPO Case No. D2007-1309; Sanofi-aventis v. BH Marketing,WIPO Case No. D2006-0440.
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “. com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii) and 2.1 of WIPO Overview of WIPO Panel Views On Selected UDRP Questions).
In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the ACOMPLIA trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show she has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides illustrative circumstances that may prove bad faith under paragraph 4(a)(iii).
It is suggestive of the Respondent's bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. The Complainant submitted evidence, which shows that the Complainant's trademark ACOMPLIA is registered in different territories around the world and is known in the pharmaceutical business and that its trademark would be recognized publicly. The Complainant's ACOMPLIA trademark was registered as early as April 2005 in the European Union (see CTM registration No. 3565678 – ACOMPLIA, with the filing date of December 2, 2003). The Respondent registered the disputed domain name long after the Complainant registered its ACOMPLIA trademarks.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. Previous WIPO panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO Panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP (see Humana Inc., op. cit. supra; E v. Ult. Search, Inc.,WIPO Case No. D2001-1319).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name 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.
Jonathan Agmon
Sole Panelist
Dated: July 13, 2009
Full & Egal Universal Law Academy