WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. John Adams

Case No. D2006-0688

 

1. The Parties

Complainant is Sanofi-Aventis, Gentilly, France, represented by Bird & Bird Rechtsanwńlte, France.

Respondent is John Adams, Texas, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <acomplia-pill.net> <acomplia-rimonabant.net> <acomplia-treatment.com> <online-acomplia.com> <order-acomplia.com> <order-acomplia-online.net> are all registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2006. On June 2, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On June 8, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on June 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2006.

The Center appointed Leon Trakman as the sole panelist in this matter on Augustá24,á2006. 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

This dispute concerns the domain names identified below:

<order-acomplia-online.net>;

<order-acomplia.com>;

<acomplia-pill.net>á;

<acomplia-rimonabant.net>á;

<acomplia-treatment.com>;

<online-acomplia.com>.

The registrar with which the domain names are registered is: Go Daddy located in Scottsdale, Arizona, the United States of America.

Complainant in this administrative proceeding is Sanofi-Aventis, a company governed by French law, having its principal place of business in Paris, France.

Complainant, is one of the largest pharmaceutical company in the world. As of December 31, 2004, Aventis merged with Sanofi into Sanofi-Aventis. With the proáforma 2004 consolidated sales of €25 billion and €4 billion Research and Development expenditure, it is a multinational company that is present in more than 100 countries. Complainant’s stock market capitalization of Complainant is 103,697ámillion euros.

Complainant has a portfolio of high-growth drugs, with 7 major therapeutic areas such as cardiovascular, thrombosis, oncology, metabolic disorders, central nervous system, internal medicine. Complainant has 9 leading products: Lantus, Plavix, Lovenox, Aprovel, Taxotere, Eloxatin, Ambien, Allegra, Actonel; plus 1 new drug pending, namely, Copaxone.

Complainant has a significant pharmaceutical market in the United States, with a strong position in these therapeutic areas: cardiovascular, thrombosis, cancer, diabetes, central nervous system, internal medicine, metabolic disorders and vaccines. The main contributors to its growth in 2004 were: Plavix, the Group’s best-selling product in the United States, Ambien and Lovenox.

Complainant’s products are marketed in the United States through a subsidiary, alliances and license agreements.

Complainant maintains a website that is specifically dedicated to the United States, at the following domain name <sanofi-aventis.us>

In February 2004, Complainant publicly announced the early results of two Phase III studies with a new Acomplia product, indicating that overweight and obese patients with untreated dyslipidemia lost weight in one year while improving their lipid and glucose profiles, and further, that smokers who had previously unsuccessfully tried to quit smoking, were able to quit in 10 weeks without post cessation weight gain.

Complainant presented these results to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004.

Complainant indicates that Acomplia is expected to be launched in 2006.

According to the Whois database, Respondent is John Adams from Ft. Worth, Texas.

The domain names in dispute that are registered in the name of Respondent are <acomplia-pill.net>, <acomplia-rimonabant.net>, <acomplia-treatment.com>, <line-acomplia.com>, <order-acomplia.com>, <order-acomplia-online.net>.

Respondent registered all these with Go Daddy Software in November 2004.

Respondent uses the disputed domain names to promote medical products manufactured by competitors of Complainant.

The disputed domain names registered by Respondent all direct internet users to web sites containing links that connect the internet user to online pharmacies. For example, by clicking on the hyperlink “Try our online Viagra pharmacy”, internet users are connected to an online pharmacy that offers to sell pharmaceutical products. That web site also advertises products, such as Meridia which is a weight loss aid and which directly competes with Complainant’s Acomplia product.

In February 2006, Complainant sent a cease and desist letter to Respondent, demanding the transfer to it of the contentious domain names.

Respondent did not respond to this letter.

 

5. Parties’ Contentions

A. Complainant

Complainant makes three allegations.

Firstly, the domain names in dispute are either identical to or confusingly similar with Complainant’s trademark and domain names.

Secondly, Respondent has no rights to or legitimate interests in these disputed domain names.

Thirdly, Respondent has registered and used the disputed domain names in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

As preliminary matters, this dispute is properly within the scope of the Policy. The Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain names that are the subject of this Complaint are registered, incorporates the Policy. Complainant states that it has also not commenced any other legal proceedings in connection with or relating to any of the disputed domain names.

A. Identical or Confusingly Similar

The disputed domain names are all confusingly similar to Complainants trademarks and consumers are reasonably likely to be misled into believing that these names are associated with Complainant’s names, products, services and ultimately, achievements.

Respondent’s registration consists of nothing more than Complainant’s trademarks with the adjunction of such generic words such as the “treatment”, “pill”, “online”, “order” or “rimonabant”; and the gTLDs “.com” and “.net”.

A significant number of panels have held that the addition of generic words to trademarks is not sufficient to escape the finding of confusingly similarity and do not remedy the reasonable impression of internet users that the designations are somehow connected to Complainant. (See e.g. Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No.áD2005-0661; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No.áD2005-1045; Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No.áD2000-1511; PepsiCo Inc v. Pepsi SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No.áD2003-0696; PepsiCo Inc v. Diabetes Home care and DHC services, WIPO Case No.áD2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No.á D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No.áD2001-1184).

There are a number of prior panel decisions that relate specifically to Complainant’s trademark. For example, a prior panel held that Respondent in that case did not add anything of distinction to Complainant’s trademark in the domain names <acomplia-rimonabant-online.com> and <rimonabant-acomplia-online.com>. Indeed, the use of either generates significant confusion. (See Sanofi-Aventis v. V.Link, WIPO Case No.áD2004-0810).

Another panel has held that a domain name that includes a trademark and generic terms, such as the word “online”, is confusingly similar to Complainant’s trademark. That Panel specifically stated: the “addition of the descriptive words “discount” and “online” to the mark does nothing to dispel a connection in the public’s mind between the pharmaceutical name and its owner, the Complainant” (Sanofi-Aventis v. Internet Markeing/Inc. John Bragansa, WIPO Case No.áD2005-0742).

A further panel has held that the addition of the generic word “order” to the trademark ACOMPLIA makes the domain name confusingly similar to the trademark (Sanofi-Aventis v. NetWeb.Inc, WIPO Case No.áD2005-1265.)

Respondent’s use of other adjunction words are also confusingly similar to the trademark and domain names of Complainant. The use of the trademark ACOMPLIA together with the generic terminology “rimonabant”, in the disputed domain name <acomplia-rimonabant.net>, is confusingly similar because “rimonabant” constitutes an INN (International Nonproprietary Name) for pharmaceutical substances. Such an INN is not only one of the components of Complainant’s product ACOMPLIA, but also has a chemical description and molecular/graphic formulas used by the health and pharmaceuticals industry and professionals. Consequently, this disputed domain name is both confusingly similar to a component of Complainant’s product and also replicates a chemical formula attributable to pharmaceutical products used by pharmaceutical manufacturers like Complainant.

Finally, a panel has held that the addition of the gTLDs “.com” or “.net” in a disputed domain names does not distinguish the disputed domain names sufficiently to negate a finding of sufficient similarity to Complainant’s trademark and domain names. (See, Sanofi-Aventis v. E. Riegel WIPO Case No. D2005-1045).

This Panel holds that the domain names in dispute are confusingly similar to the ACOMPLIA trademarks of Complainant.

B. Rights or Legitimate Interests

Respondent has no rights to or legitimate interests in the disputed domain names.

Complainant has a clear right to and an indisputable interest in its ACOMPLIA trademarks and products. Complainant’s rights and interests are well established internationally, including in the United States where Complainant is located.

In contrast, Respondent has no legal rights to or interests in the disputed domain names that, in effect, direct internet users to web sites containing links to online pharmacies, as well as to medical products manufactured by competitors of Complainant. Nor can Respondent in the circumstances allege that it may have acquired rights or interests on grounds that ACOMPLIA was not yet available on the market when Respondent registered the disputed domain names. The material fact is that Respondent’s registration of the disputed domain names post-dated Complainant’s use of its famous trademarks, as well as the global publicity that arose out of Complainant’s development of ACOMPLIA.

Respondent did not use the domain names in connection with the bona fide offering of goods or services. Indeed, Respondent has no license, consent or other right by which this Panel might reasonably conclude that it is entitled to register or use the domain names incorporating Complainant’s trademark ACOMPLIA.

The Panel concludes that Respondent has no rights or interests in the disputed domain names.

C. Registered and Used in Bad Faith

Respondent registered and used the disputed domain names in bad faith. The record is replete with evidence of such bad faith.

By adding the generic words to the ACOMPLIA trademark in the disputed domain name, Respondent in all probability intended to both mislead and deceive internet users into believing that they are being directed to the official web sites of Complainant. Indeed, Respondent’s registration of multiple domain names containing the ACOMPLIA trademark constitute reasonable evidence that Respondent was engaged in a deliberate practice of diverting consumers from Complainant’s legitimate, trademarks, domain names and products to Respondent’s alternative sites and products.

Nor can Respondent’s use of the disputed domain names to divert consumers to websites selling competing products to those of Complainant be reasonably characterized as a fair use. (See Trip.com v. Daniel Deamone, WIPO Case No.áD2001-1066).

Respondent must also be presumed to be acting in bad faith in registering and using the disputed domain names with reasonable awareness that Acomplia was going to be introduced into the market to treat obesity, one of the most serious health epidemic of the 21st century. In registering and using confusing similar domain names to Complainant’s trademark in respect of which Respondent has no legal right or interest, it is also reasonable to conclude that Respondent sought to secure material advantage from ACOMPLIA’s extensive and international profile. The only reasonable conclusion to draw in such circumstances is that Respondent was acting in bad faith. See Sanofi-aventis v. ClickStream Marketing LLC, WIPO Case No.áD2005-0769.

There are also no countervailing considerations by which to conclude that Respondent was acting in good faith. In particular, Respondent did nothing to distinguish its products from that of Complainant’s trademarks and domain names. Respondent also did nothing to dispel the reasonable assumption of internet users that it, rather than Complainant, was the trademark user. To the contrary, Respondent engaged in a pattern of behavior directed at reaping economic rewards at the expense of Complainant. See generally Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.áD2001-0903.

It is true that, at the time Respondent registered the disputed trade marks, Complainant’s product ACOMPLIA was still in its trial phase and was only to be released into the marketplace in 2006, some time after Respondent registered the disputed domain names. However, this does not negate a finding of bad faith by Respondent. Indeed, it is further evidence of Respondent’s opportunistic behavior in trying to take advantage of highly publicized scientific research and prospective developments at Complainant’s expense. There is also ample evidence on the record to support a finding that Respondent has intentionally attempted to attract for commercial gain internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of those websites.

 

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 names, <acomplia-pill.net> <acomplia-rimonabant.net> <acomplia-treatment.com> <online-acomplia.com> <order-acomplia.com><order-acomplia-online.net>, be transferred to Complainant.


Leon Trakman
Sole Panelist

Dated: August 28, 2006