WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Tim Kirschner
Case No. D2007-0427
1. The Parties
The Complainant is Sanofi-Aventis, Gentilly, France, represented by Armfelt & Associés Selarl, France.
The Respondent is Shenzen Tim Kirschner, Palma de Mallorca, Spain.
2. The Domain Name and Registrar
The disputed domain name <acomplia-kaufen.info> is registered with DomainPeople, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2007. On March 21, 2007, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name(s) at issue. On March 21, 2007, DomainPeople 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 administrative 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 the Respondent of the Complaint, and the proceedings commenced on April 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2007.
The Center appointed Richard Hill as the sole panelist in this matter on May 4, 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.
4. Factual Background
The Complainant owns various registered and common law trademarks for the string ACOMPLIA.
The Complainant uses those marks to market a pharmaceutical product.
The Respondent is using the contested domain name to point to a website that contains sponsored links, including to web sites that offer various prescription pharmaceutical products, including the products marketed by the Complainant.
The Respondent does not have any licenses or other authorization from the Complainant to use the Complainant’s marks.
5. Parties’ Contentions
The Complainant made the following allegations:
The Complainant is a very large and well-known multinational pharmaceutical company present in more than 100 countries across 5 continents.
The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries and has obtained registered trademark rights in many countries. The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example <acomplia.com>, <acomplia.fr>, <acomplia.us>.
The Respondent’s registration consists of the Complainant’s trademark in addition with the descriptive word “kaufen” (which means “to buy” in German) and the gTLDs “info”.
A wide variety of panelists have considered that the addition of generic and/or descriptive words to trademarks is not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant (see Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO, Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).
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 with the adjunction of the generic and descriptive words.
There is no doubt that the Respondent is aware that ACOMPLIA corresponds to a medical product and therefore to a trademark in respect of the wording of the disputed domain name.
Therefore, the Respondent’s use does not satisfy the test for bona fide use established in prior WIPO decisions.
The disputed domain name used by the Respondent, leads to active websites which provide list of sponsored links leading to third parties websites, where counterfeit and placebo and competing products for the treatment of the obesity are offered for sale.
By using its website under the disputed domain name to lead to third-party online pharmacies, the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent’s website, and creates a likelihood of confusion with the Complainant’s trademark. This is in violation of the Policy.
Indeed, Paragraph 4(b)(iv) of the Policy lists as one of the typical situation of evidence of bad faith the fact of “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”.
Moreover, any Internet user who will try to connect to this website will believe that the Respondent’s pharmaceutical product medicine is available in all countries without any medical control, whereas, (i) it has not been yet launched in all countries as this medicine has not been granted with all the administrative market authorization required, (ii) and can only be obtained by medical prescription.
Therefore, the use of the disputed domain name, by selling pharmaceuticals (including products other than the Complainant’s product) without requiring proof of a physical examination by an authorized doctor, is potentially harmful to the health of Internet users. And this also constitutes bad faith in the sense of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name is obviously confusingly similar to the Complainant’s mark ACOMPLIA. The Panel notes the cases cited by the Complainant to support this point and agrees that those citations are appropriate.
B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant’s mark. The Respondent is using the disputed domain name to operate a website containing paid referral links to websites offering the sale of various products, including the pharmaceutical products and the Complainant’s products.
The Panel finds that Respondent is redirecting Internet users interested in Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scot. Group v. Demand Domains, FA 714952 (Nat. Arb. Forum August 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum February 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is clear that the Respondent was aware of the Complainant’s marks when it registered and started using the disputed domain name, because inter alia the domain name contains the Complainant’s mark and the website refers to sales of pharmaceutical products.
The Respondent (who did not reply) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a good faith use in mind when it registered the disputed domain name.
Indeed the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fida, because the Respondent operates a website that contains paid referral links to web sites that sell the Complainant’s product (and other prescription medicine and other products). This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum January 4, 2007) (holding that the respondent’s use of the disputed domain names to maintain pay-per-click sites displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy paragraph 4(b)(iv)).
For the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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-kaufen.info> be transferred to the Complainant.
Dated: May 18, 2007