WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Keyword Marketing, Inc.

Case No. D2007-0075

 

1. The Parties

The Complainant is Sanofi-Aventis, Gentilly, France, represented by Armfelt & Associés Selarl, France.

The Respondent is Keyword Marketing, Inc., Charlestown, Saint Kitts and Nevis, West Indies.

 

2. The Domain Name and Registrar

The disputed domain name <acomplia-rezeptfrei.org> (“the Domain Name”) is registered with BelgiumDomains, LLC.

 

3. Procedural History

The Complaint in its original form was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2007. At that stage, a total of five domain names were the subject of the Complaint – in addition to the Domain Name, the original Complaint sought the transfer to the Complainant of the domain names <accomplia-kaufen.org>, <acomplia-bestellen.org>, <acomplia-bestellen.net>, and <acomplia-ohne-rezept.org>.

On February 19, 2007, the Complainant’s representative requested the suspension of the proceeding, and by notice dated February 21, 2007, the Center formally suspended the proceeding until March 23, 2007. Three of the disputed domain names were then transferred to the Complainant. Those domain names were <acomplia-kaufen.org>, <acomplia-bestellen.net>, and <acomplia-bestellen.org>.

An Amended Complaint relating solely to the Domain Name, was submitted on May 7, 2007. The proceeding in respect of the other four domain names was formally terminated by notice from the Center dated May 23, 2007.

On May 11, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the Domain Name. On May 15, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Amended 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 the Respondent of the Amended Complaint, and the proceeding on the Amended Complaint commenced on May 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2007.

The Center appointed Warwick Smith as the sole panelist in this matter on June 29, 2007. 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.

In the absence of any response, the Panel has checked that the Center has discharged its responsibility to notify the Amended Complaint in accordance with the Rules, paragraph 2(a). The Panel is satisfied that the Center has properly notified the Complaint as required by that paragraph of the Rules.

 

4. Factual Background

The following uncontested evidence appears from the Amended Complaint:

The Complainant

The Complainant is a large pharmaceutical company. It has its headquarters in France, but it is represented in more than one hundred countries across five continents. One of the Complainant’s newer products is “Acomplia”, a drug used in the treatment of obesity.

The Acomplia product was first introduced to the public in February 2004, when the Complainant announced the results of certain studies, and those results were reported on the Internet. The results were also presented to the American College of Cardiology annual meeting in March 2004. There have since been articles in several scientific publications concerning Acomplia. European Market authorization for Acomplia was granted in June 2006, and the product is now commercially available in a few countries (including the United Kingdom of Great Britain and Northern Ireland, where Acomplia was launched in October 2006, and Germany).

Obesity has become a major health problem in many parts of the world. The Amended Complaint asserts that the Acomplia product can be considered a “revolutionary medicine” in the treatment of that disease, and that it has had a “huge impact” in medical circles.

In the countries where it is available, Acomplia is only available on medical prescription.

The Complainant’s Trademark Claims

The Complainant has filed applications to register the mark ACOMPLIA in more than one hundred countries. Some applications have proceeded to registration. For example, the Complainant is the registered proprietor of the word mark ACOMPLIA in Japan, with the effect from February 25, 2004, and there is a Community Trade Mark registration which appears to have effect from December 2003.

The mark ACOMPLIA, in stylized form, is also the subject of a United States Federal trademark registration in International Class 5, with a filing date of June 3, 2005.

The Complainant’s Domain Name Registrations

The Complainant has registered numerous domain names containing its ACOMPLIA trademark. Examples are <www.acomplia.com>, <www.acomplia.fr> and <www.acomplia.us>.

The Respondent and the Domain Name

The Domain Name was registered on May 7, 2007. According to the Amended Complaint, the Domain Name, translated into English from the Dutch language, means: “Acomplia – without-prescription.org”.

The Amended Complaint asserts that the Domain Name resolves to an active website containing a list of sponsored links to third party websites, including websites where competitive products for the treatment of obesity are on sale. In support, the Complainant has produced screenshots from the website to which the Domain Name resolved on May 7, 2007.

The May 7, 2007 screenshots showed links to websites operated by what appear to have been a number of online pharmacies, at sites such as “www.urantiapharma.com”, “www.pharmacinet.com”, “www.EUnutrition.com”, “www.buymaxodem.com”, and “www.amygdalin.co.uk”.

As the Domain Name was only created on May 7, 2007 (the same as the dates on the screenshots produced by the Complainant), the Panel has, in accordance with normal practice adopted by panels deciding cases under the Policy, itself visited the website to which the Domain Name currently resolves (referred to hereafter as “the Respondent’s website”). As at July 13, 2007, the home page on the Respondent’s website (English language version) contains ten “sponsored links” to third party websites, most of which are pharmacy or drug-related. One such link is:

“Save on Phentirmine

Max Strength Appetite Suppressor. Act now,

Up to 75% off Diet Pills,

www.LabQ2.com

Another link is headed “Generic Cialis Cheap”. On the right hand side of the home page, there are a number of click-through links grouped under the heading “Related Categories”. Again, the links are predominantly pharmacy or drug-related.

A visitor to the Respondent’s website as at July 13, 2007 can select his or her preferred language. Using the German language option, the first of the “Related Categories” is “Rezeptfrei”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is confusingly similar to the mark ACOMPLIA in which the Complainant has rights.

The addition of the generic Dutch expression “rezeptfrei”, is insufficient to avoid a finding of confusing similarity to the Complainant’s mark – it does not alter the overall impression that the Domain Name gives, of being connected to the Complainant. The addition of the descriptive word “prescription” to the trademarked name of a drug, has been held to be insufficient to avoid a finding of confusing similarity – see Lilly ICOS LLC v. Kevin Adelman, WIPO Case No. D2006-0305, dealing with the domain name <generic–cialis-prescription.com>. Because the trademark CIALIS was included in the domain name in its entirety, and the words “generic” and “prescription” were both descriptive, the domain name was held to be confusingly similar to the complainant’s CIALIS mark. See also Sanofi-aventis v. One Star Global, WIPO Case No. D2006-0583.

The addition of the gTLD “.org” has no distinguishing capacity.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name, for the following reasons:

(i) The Complainant acquired its rights in the mark ACOMPLIA before the Respondent registered the Domain Name.

(ii) The Complainant’s Acomplia drug and its ACOMPLIA mark are well known throughout the world.

(iii) The Respondent has not been given any licence or consent to register or use the Domain Name.

(iv) The Respondent is and was aware that the expression ACOMPLIA corresponds to a medical product and therefore to a trademark.

(v) The Respondent cannot be regarded as a genuine reseller of Acomplia. Following Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903, for an offering of goods to be bona fide under paragraph 4(c)(i) of the Policy, the offering must meet the minimum requirements listed in that case. Those requirements include that the respondent must sell only the trademarked goods, and that the site must accurately disclose the registrant’s relationship with the trademark owner. In this case, the Respondent’s website provides sponsored links to third parties’ websites, where products having no connection with the Complainant (including competitive products) are offered for sale. Secondly, there is nothing on the Respondent’s website by way of disclaimer of any relationship with the Complainant.

(vi) In summary, the Respondent has not made a bona fide use of the Domain Name, because of the Respondent’s lack of authorization to use the ACOMPLIA mark, and its bad faith use of the Domain Name to divert consumers to websites selling other (and competing) products. That cannot be a fair use of the Domain Name.

3. The Domain Name has been registered and is being used in bad faith, for the following reasons:

(i) The Respondent has no prior right and no authorization from the Complainant to use the Complainant’s ACOMPLIA mark.

(ii) The Respondent is aware that Acomplia is a revolutionary drug against obesity.

(iii) The Respondent has been using the Domain Name to attract, for commercial gain, Internet users.

(iv) The addition of descriptive words to the ACOMPLIA mark misleads Internet users, as it makes them believe that the Respondent’s website is the official website of the Complainant.

(v) The Respondent has registered the Domain Name in order to prevent the Complainant from reflecting its ACOMPLIA mark in a corresponding domain name. That was an opportunistic act, designed to disrupt the Complainant’s business. (The mere holding of a domain name that is confusingly similar to a trademark owned by a third party can, in itself, be considered as disrupting the business of the trademark owner.)

(vi) If the sponsored links on the Respondent’s website have been placed on the Respondent’s website by others, through the use of the “Adsense” program operated by Google Inc., the use of the Domain Name for a website promoting suppliers of other products is in itself an objectionable exploitation of the Complainant’s reputation in its mark, and the operation of the Adsense program does not provide an answer to the bad faith allegations (citing Lilly ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729).

(vii) Any Internet user visiting the sites linked to the Respondent’s website would believe that the Acomplia medicine is available in all countries without any medical control. In fact, Acomplia has not been granted administrative market authorization in all countries, and therefore is not available in all countries. Furthermore, in the countries where it is available, Acomplia can only be obtained by medical prescription. A reference to Acomplia coupled with the expression “rezeptfrei” (meaning “without prescription”), is therefore misleading and potentially harmful.

(viii) By adding the descriptive expression “rezeptfrei” to the Complainant’s ACOMPLIA mark, the Respondent is trying to disrupt the supply of genuine Acomplia product, with a view to marketing other weight loss products to Internet users.

(ix) Selling prescription medication without any doctor’s examination or prescription, in violation of public health regulations, is evidence of the Respondent’s bad faith (citing Lilly ICOS LLC v. Tudor Burden, WIPO Case No. D2004-0794).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

General Principles under the Policy

Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the Panel to: “… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.

If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to "decide the dispute based on the complaint". Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (by filing a response), as the Panel considers appropriate.

A. Identical or Confusingly Similar

The Complainant has sufficiently proved that it has registered trademark rights in the mark ACOMPLIA. The question under paragraph 4(a)(i) of the Policy, is whether the Domain Name is confusingly similar to that mark.

The Panel has no doubt that it is. First, the Domain Name includes the Complainant’s ACOMPLIA mark in its entirety. As far as the evidence shows, that mark has no meaning other than as a reference to the Complainant’s Acomplia medicine.

Secondly, Acomplia is the only distinctive part of the Domain Name, and it is separated from the rest of the Domain Name by a hyphen. (For Internet users unfamiliar with the Dutch or German languages, the “rezeptfrei” part of the Domain Name would convey no meaning at all, other than that any website at the Domain Name would likely have something to do with the manufacture, marketing or availability of Acomplia, in a country or countries where a different language (probably German or Dutch) is spoken. To Internet users who would understand “rezeptfrei” as meaning “prescription-free”, “rezeptfrei” would simply be a descriptive expression which one would commonly expect to see used in conjunction with the name of a medicine or drug. The Panel accepts the Complainant’s submission based on the Lilly ICOS LLC v. Kevin Adelman case, that the addition of an expression like “prescription” or “prescription-free”, to an expression which has no meaning other than as the trademark of a medicine or drug, does nothing to mitigate the confusion caused by the use of the trademark in full within the domain name.

In summary, the Complainant’s ACOMPLIA mark is identical to the only part of the Domain Name which is distinctive. In those circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ACOMPLIA mark, and that the Complainant has proved this part of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The wording of paragraph 4 (c) of the Policy appears to envisage a respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should probably follow if the respondent does not advance any plausible “right or legitimate interest” case. (If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof.)

That approach to the burden of proof under this paragraph of the Policy is consistent with the “Consensus View” of UDRP panels, described at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:

“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.

In this case, the Complainant has established that the Domain Name is confusingly similar to the ACOMPLIA mark in which it has rights, and that it has not authorized the Respondent to use that mark, whether in a domain name or otherwise. So the evidential onus shifts to the Respondent to demonstrate that it has some right or legitimate interest in the Domain Name.

The Respondent has not filed any Response, and there is nothing in the record that might suggest that it has some right or legitimate interest in respect of the Domain Name. That would be enough for the Complainant to prove this part of the Complaint, but for completeness the Panel has checked the record to see if there is any evidence which might suggest the existence of one or more of the examples of rights or legitimate interests set out at paragraph 4(c) of the Policy. The Panel found no such evidence.

First, there is nothing in the record to suggest that the Respondent, or any business it may operate, has been “commonly known by” the Domain Name – the example of a right or legitimate interest provided at Paragraph 4(c)(ii) of the Policy therefore has no application.

The clearly commercial nature of the Respondent’s website precludes any possible argument of legitimate non-commercial use under paragraph 4(c)(iii) of the Policy.

The Panel is also satisfied that the Respondent’s use of the Domain Name has been neither fair within the meaning of paragraph 4(c)(iii) of the Policy, nor bona fide within the meaning of Paragraph 4(c)(i) of the Policy.

The starting point in addressing the question of the Respondent’s bona fide, is to ask whether the Respondent knew of the Complainant’s product and mark when it registered the Domain Name. The evidence that it did is overwhelming.

First, it appears that “Acomplia” is not an ordinary word which someone who was unaware of the Complainant’s Acomplia product would be likely to have thought of himself (or herself).

Secondly, while there is no evidence of the Complainant’s ACOMPLIA mark being registered in St. Kitts and Nevis, where the Respondent appears to have its address, there do appear to have been a significant number of Internet references to the Acomplia product since it was first “unveiled” in February 2004. Also, the domain names <acomplia.com> and <acomplia.us>, were registered by the Complainant’s predecessor as early as December 2003 and July 2004 respectively.

Thirdly, the Respondent’s name suggests that it is a commercial marketing company – the kind of registrant who would have been well familiar with the Internet, and who would certainly have been interested to find out, before registering the Domain Name, who held the <acomplia.com> domain. Indeed the Respondent’s registration agreement for the Domain Name required it to “investigate whether a domain name you select may infringe legal rights of others”. (The registration agreement also provided “Belgium Domains urges you to seek the advice of competent counsel for this purpose. You should consider seeking one or more trademark registrations in connection with your domain name.”)

Fourthly, the numerous pharmaceutical links on the Respondent’s website reinforce the conclusion that the Respondent expected and intended that the Respondent’s website would be visited by those looking for pharmaceutical products such as the Complainant’s Acomplia product.

Turning to the use actually made of the Domain Name by the Respondent, the only use has been use as an Internet address for a platform, or “landing page”, which provides sponsored links to third party websites. Goods and services, typically pharmacy or medicine-related, are sold by businesses operating online through these third party websites, and the Respondent is presumably deriving revenue from these sponsored links (why else would it provide them?).

The Respondent’s website provides access to websites selling numerous products which are not produced or marketed by the Complainant, and nothing appears on the Respondent’s website explaining that the Respondent has no connection with the Complainant. In those circumstances, the use of the Complainant’s ACOMPLIA mark in full in the Domain Name could never be a bona fide use of the Domain Name –the Panel accepts the Complainant’s submissions to that effect based on the Oki Data Americas Inc. case.

Moreover, it is apparent that the Respondent’s website indirectly offers for sale not just products which are not manufactured or marketed by the Complainant, but also products offered by parties who might reasonably be regarded as competitors of the Complainant. The screenshots which the Complainant printed out on May 7, 2007 show that at that time the Domain Name pointed to a website offering such products, and the Panel’s own visit to the Respondent’s website on July 13, 2007 showed that there was then a sponsored link to a third party website offering an “appetite suppressor”, and diet pills.

As this Panel noted in Sanofi-Aventis v. Abadaba SA, WIPO Case No. D2006-1611:

“It could never be a bona fide, legitimate, or fair use of a domain name which incorporates in full someone else’s trademark, to point that domain name to a website through which products of the trademark owner’s competitors are being sold (whether directly at that site or at other sites to which links are provided on the website). There have been numerous WIPO Panel decisions to that effect. For present purposes, one example will suffice. In Shahnaz Husain v. Saxena Dinesh O, WIPO Case No. D2006-1132, the Panel said:

‘In addition, in line with consistent WIPO UDRP decisions, the Respondent’s use of the Domain Name to divert internet users to his website and redirect them to other websites, some of which offer for sale the complainant’s direct competitor’s products, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy (See e.g. Lyonnaise de Banque v. Richard J, WIPO Case No. D2006-0142, and Motorola Inc v. Mr. Josip Broz, WIPO Case No. D2002-1063)’ followed/applied by 3-member panel in Provident Financial plc and Another v. Mode L, WIPO Case No. D2007-0149.

Having regard to that line of cases, neither Paragraph 4(c)(i) nor Paragraph 4(c)(iii) of the Policy could provide the Respondent with any right or legitimate interest.”

Those comments are equally applicable in this case.

For the foregoing reasons, and in the absence of any Response, the Panel is satisfied that the Respondent does not have any right or legitimate interest in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

The Complainant has also made out its case on this part of the Policy.

The Domain Name incorporates the Complainant’s ACOMPLIA mark in full, and the Panel has found that the Respondent was well aware of the Complainant’s Acomplia product when it registered the Domain Name. As far as the evidence shows, the word “Acomplia” has no meaning other than as a reference to the Complainant’s trademarked Acomplia product, and the Respondent could only have understood the expression as a mark designating the Complainant’s proprietary medicine. Absent any response from the Respondent, the only sensible inference is that the Respondent chose to include the expression “acomplia” as the distinctive part of the Domain Name, in order to attract to the Respondent’s website Internet users who knew of the Complainant’s Acomplia product and were looking for Internet sites concerned with that product.

Internet visitors arriving at the Respondent’s website are met not with a website predominantly concerned with the Complainant’s Acomplia product, but with a landing page containing sponsored links to numerous third party websites, at least some of which appear to be offering competing products. Under the “Rights or Legitimate Interests” heading above, the Panel has noted that such a practice could never be a bona fide use of a domain name. Indeed, it is a bad faith use falling squarely within the example of bad faith registration and use described at Paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In the Panel’s view, the Domain Name has been selected to operate as a bait, luring to the Respondent’s website those interested in acquiring the Acomplia product at less than the cost of obtaining it through a doctor’s prescription. Once at the Respondent’s website, such people are exposed to the numerous sponsored links to third party websites, with the prospect of pay-per-click revenue for the Respondent every time a site visitor is curious enough to investigate one of the links.

A further indicator of bad faith registration and use in this case, is the inclusion in the Domain Name of the expression “rezeptfrei”. The Complainant says, and the Respondent has not denied, that this expression means “prescription-free”. If that is right, Internet browsers are being lured to the Respondent’s website by an implicit promise that prescription-free Acomplia will be available through the website. In fact, the genuine Acomplia product is not available without a prescription. It is therefore misleading to select and use the Domain Name, which carries the clear but false implication that Acomplia can lawfully be obtained at the Respondent’s website without the need for a medical prescription.

The Complainant having proved each of the three matters required to be proved under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.

 

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 <acomplia-rezeptfrei.org> be transferred to the Complainant.


Warwick Smith
Sole Panelist

Date: July 13, 2007