WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. After Hours Hosting/Brett Banta
Case No. D2006-0469
1. The Parties
The Complainant is Sanofi-aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is After Hours Hosting/Brett Banta, La Quinta, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 13, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On April 18, 2006, eNom transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 30, 2006. The Center verified that the Complaint and the Amendment thereto 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”).
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 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2006.
The Center appointed Peter G. Nitter as the sole panelist in this matter on July 4, 2006. 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 is a major worldwide pharmaceutical company, and a major player on the pharmaceutical market in the United States.
In 2004, the Complainant announced the early results for a new product, ACOMPLIA, which helps patients lose weight. These findings appeared on the Internet shortly afterwards.
The Complainant has registered the trademark ACOMPLIA in several countries, for example, Spain, Japan and Mexico. The Complainant has also filed trademark applications for ACOMPLIA in more than 100 countries, including the United States.
The Complainant has also registered numerous domain names under ccTLD’s worldwide containing the ACOMPLIA trademark, for example <acomplia.fr> and <acomplia.us>.
The Respondent has registered the domain names <acomplia-diet-aid.com>, <acomplia-diet-pills.com>, <acompliaone.com>, <acomplia-overnight.com>, <acompliasearch.com>, <acomplia1.com>, <diet-pill-acomplia.com>, <find-acomplia.com>, <findacomplia.com>, <myacomplia.com> and <purchase-acomplia.com>.
5. Parties’ Contentions
The domain names <acomplia-diet-aid.com>, <acomplia-diet-pills.com>, <acompliaone.com>, <acomplia-overnight.com>, <acompliasearch.com>, <acomplia1.com>, <diet-pill-acomplia.com>, <find-acomplia.com>, <findacomplia.com>, <myacomplia.com> and <purchase-acomplia.com> are confusingly similar to the ACOMPLIA trademarks in which the Complainant has rights.
The Respondent’s registration consists of the Complainant’s trademarks with the adjunction of generic words such as the number “1” or the words “diet”, “pill”, “find” and the gTLDs “.com”.
The addition of the extra words does not change the fact that the name is confusingly similar to the Complainant’s trademark. There is no doubt that the reproduction of the trademark, as the sole distinctive element of the domain names concerned, generates confusion. Persons accessing the domain name would be bound to think that the domain names have a connection with the Complainant.
Because of this identity, there is a high risk of confusion, since a consumer may think that the domain names directly refer to the Complainant’s products.
The Complainant has prior rights in the ACOMPLIA trademarks, which precede the Respondent’s registration of the disputed domain names.
The Complainant’s trademarks are present in 100 countries for ACOMPLIA, including the United States, where the Complainant is located and are well-known around the world.
Some of the disputed domain names are used by the Respondent to promote medical products manufactured by competitors of the Complainant and not the ACOMPLIA product, since such product is not yet on the market. This can not be seen as having rights or legitimate interest in the domain names.
One of the disputed websites provides information about the ACOMPLIA product as well as the name of the Complainant. This does not permit to establish that the Respondent has right or legitimate interests in the domain name due to the commercial use of the domain name promoting, directly or indirectly, products that compete with ACOMPLIA.
The Complainant has not licensed the Respondent to use the trademarks concerned or to register or use the disputed domain names.
The Respondent has made no bona fide use of the contentious domain names because of its lack of authorization to use the ACOMPLIA trademarks. Furthermore, using domain names in order to divert costumers cannot be characterized as a fair use.
The domain name should be considered as having been registered and used in bad faith for the following reasons:
(i) the Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA trademarks;
(ii) the Respondent’s awareness that ACOMPLIA is a drug against obesity;
(ii) the addition of generic words to the ACOMPLIA trademarks is misleading Internet users since it makes them believe it is the official website of the Complainant;
(iv) The registration of multiple domain names (twelve) containing the ACOMPLIA trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain names at issue are not identical to the Complainant’s trademark, and the question is therefore whether there is confusing similarity between the domain names and the Complainant’s trademark.
The Complainant has registered trademarks for ACOMPLIA. The mere addition of a generic word 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.
As the panel stated in Sanofi-aventis v. Internet Marketing Inc./John Bragansa, WIPO Case No. D2005-0742:
“The addition of the descriptive words “discount” and “online” to the mark does nothing to dispel a connection in the public’s mind the pharmaceutical name and its owner, the Complainant”.
In Sanofi-aventis v. Conciergebrain.com, WIPO Case No. D2005-0660, the Panel stated that it:
“…follows what it regards as a consensus view that the test of confusingly similarity under the Policy is confined to a comparison of the disputed domain name and the trademark, assesses independently of extraneous of the circumstances and ways in which the mark and the domain name are put to use. Nevertheless, it is true that a great many trademarks create their own context and so it follows that other words or signs used in association with a trademark will be understood in the atmosphere of that mark. There will be words such as “buy”, “shop”, “cheap”, in which by their very nature add nothing to a trademark, 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 trademark. In this case, the disputed domain names each consist of the Complainant’s trademark, plus a word or number or conventional shorthand which does nothing to dispel a connection in the public mind between the pharmaceutical name and its owner, the Complainant”.
For the above reasons, the Panel concludes that the domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel has considered the allegation made by the Complainant that the Respondent lacks any rights or legitimate interests in the contested domain names. The Respondent is in default, and has therefore not contested these allegations.
As it is generally difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in the domain names at issue and on the other hand, it would be fairly simple for the respondent to demonstrate that he has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, previous decisions under the UDRP which have found it sufficient for the complainant to make a prima facie showing of its assertion in the event of a respondent’s default.
The Complainant has held that it has not in any way granted the Respondent rights to use its mark, and that it in no way is affiliated with the Respondent. The Complainant is a major manufacturer of pharmaceuticals, and its product and registered trademark ACOMPLIA is undoubtedly of great value. The Respondent’s websites to which the domain names at issue resolve are not related to the Complainant or the Complainant’s products, and it is in the opinion of the Panel unlikely that the Respondent would have any right or legitimate interest in the use of the trademark.
The Respondent is not known by the name ACOMPLIA and does not appear to trade under such name. There is no evidence that the owner of the trademark in question has authorized the Respondent to use the trademark. The Respondent has not asserted any rights or legitimate interests in the name.
On this background, the Panel concludes that the Complainant has made a prima facie showing that the Respondent lacks any rights or legitimate interests in the contested domain name. In the absence of a rebuttal by the Respondent, the Panel finds, based on the record, that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists as one of the situations which demonstrate bad faith that, by using the domain names, 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.
The Complainant has submitted facts and evidence showing that the elements set out in paragraph 4(b)(iv) of the Policy are present in this matter. There are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of his registration of the domain names at issue. This can be deducted from the construction of the domain names, consisting of the trademark ACOMPLIA and the generic words such as the number “1” or the words “aid”, “overnight”, “search”, “my”, “purchase”, “diet”, “pill” and “find”.
There is a clear risk that Internet users connecting to the websites to which the disputed domain names resolve, will believe that the ACOMPLIA medicine is available at the websites, whereas the Complainant is only expecting to launch such product in the next following months. As the Respondent offers other commercial products through the same websites, the Respondent will gain commercially from such mislead Internet users.
Hence, on the background of the facts and documentation presented to the Panel, the Panel is satisfied that the Respondent has registered and is using the disputed domain names intentionally to attempt 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.
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 names,
be transferred to the Complainant.
Peter G. Nitter
Dated: July 7, 2006