WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. MidPhase Services Inc.
Case No. D2007-0539
1. The Parties
The Complainant is Sanofi-aventis, Paris, France, represented by Armfelt & Associés Selarl, France.
The Respondent is MidPhase Services Inc., Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <acomplia-side-effects.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2007. On April 11, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 11, 2007, eNom 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”), 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 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2007.
The Center appointed Simon Minahan as the sole panelist in this matter on May 25, 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 Panel finds the following background facts.
In 2004, Sanofi-Synthelabo, a French pharmaceutical company, resulting from the merger between Sanofi and Synthelabo, acquired another well-known pharmaceutical company, Aventis, itself the result of a merger of HMR (Hoechst Marrion Roussel) and Rhône Poulenc.
The name of the parent company resulting from this operation adopted in August 20, 2004, is Sanofi-aventis, the Complainant herein.
The Complainant Sanofi-aventis is a multinational company present in more than 100 countries across 5 continents. It is part of a multinational pharmecutical group with significant market capitalization 103,697 million of Euros.
The Complainant has developed and continues to research and develop a pharmaceutical product, known as “Accomplia”, with applications in weight reduction in overweight and obese people and in assisting in quitting smoking without associated weight increase. On February 16, 2004, during an information meeting, which content was dispersed on Internet, the Complainant announced results of two Phase III studies indicating the product’s efficacy in these areas. These results were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004.
During 2005-2006, (i) several scientific publications were published concerning Acomplia, (the RIO-Lipids study published in The New England Journal of Medicine) and (ii) a large drug information communication concerning the product was released on the Internet.
While not yet released world wide, the Accomplia product has, since June 2006, been authorized for the European Market and is now commercialized in a few countries such as the United Kingdom, and Germany.
In anticipation of its worldwide release, the Complainant has ACCOMPLIA trademark registrations or applications for registration current in over 100 countries and, additionally has registered various domain names containing the ACOMPLIA trademark, for example <acomplia.com>, <acomplia.fr>, and <acomplia.us>.
The ACOMPLIA mark has been the subject of numerous opportunistic and illegitimate domain name registrations and in turn, numerous UDRP determinations.
The disputed domain name is or at the time of the filing of the Complaint was being used in connection with offering a variety of goods for sale including the Complainant’s and its competitors products.
5. Parties’ Contentions
The Complainant contends that it has trademark rights in the term ACOMPLIA.
It further contends that the disputed domain name is confusingly similar to that mark by reason of it wholly comprising the Complainant’s trade mark and the generic introduced terms “side effects”, which it contends is a reference directly relating to the Complainant’s product as a pharmecutical and which, it is said, does nothing to distinguish the domain name or rescue it from confusing similarity to the trademark. The Complainant refers to numerous UDRP decisions confirming that contention generally, e.g.:
- 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;
- Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446;
- Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628;
- America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713;
- Wal-Mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838;
- AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927.
Additionally the Panel’s attention was directed to cases specificially concerning the addition of “side effects” to a domain name bearing a complainant’s trademark:
- F.Hoffmann-La Roche AG v. MedCenter Canada, WIPO Case No. D2005-1291;
- sanofi-aventis v. Darko, WIPO Case No. D2005-1357.
The Complainant also contends that the introduction of the gTLD identifier “.com” does not diminish or reduce confusion – and refers to the UDRP decisions in support:
- Telecom Personal v. namezero.com, WIPO Case No. D2001-0015;
- Nokia Corporation v. Private Case, WIPO Case No. D2000-1271.
The Complainant further contends that the Respondent has no legitimate right or interest in the domain names or the subject mark and further that its choice of the name indicates an awareness of the Complainant’s mark. As such the Complainant contends the use being made of the mark is not bona fide nor legitimate:
- Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Finally the Complainant contends that in the foregoing circumstances the Respondent’s registration and use of the disputed domain names is directed to diverting Internet traffic to commercial activities of the Respondent by making use of the confusion inherent in the domain name and taking advantage of the Complainant’s good will in the mark and that, as such, such use and registration is in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds the Complaint to be properly constituted and further finds it has jurisdiction under the UDRP.
Notwithstanding that the Respondent has not replied to the claims of the Complainant, the Complainant nonetheless has the onus of making out the grounds for transfer or cancellation under the UDRP.
A. Identical or Confusingly Similar
The Panel accepts the Complainant’s contentions set out at Part 5 above and notes the authorities referred to. Accordingly it finds that the Complainant has trademark rights in the mark ACOMPLIA and further finds that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
In the absence of any response or positive evidence of any rights in the Respondent and in the face of evidence of the Complainant of its prior rights and the want of any licence or consent by it to the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the ACOMPLIA mark or, as a consequence, the disputed domain name.
The Panel is of the view that under paragraph 4(a)(ii) this set of circumstances shifts the burden to establish those rights to the Respondent (see e.g.: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
In the absence of a response the Respondent has not discharged the burden and accordingly the Panel finds this element to be satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists as one of the typical situation as 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.”
The Panel accepts that in the present instance, the domain names is designed to be used and is, has or will be used for such commercial purposes. It is further prepared to accept the proposition that the registration of the domain name after the Complainant undertook a product launch of the ACOMPLIA product in early 2006, taken together with the commercial flavor of the domain name and corresponding website and its apparently intended use to attract customers, lends to an inference that the registration and use is in bad faith.
In this regard the Panel refers to and respectfully adopts the reasoning in the following UDRP decisions:
- Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011;
- America online Inc v. Chan Chunkwong, WIPO Case No. D2001-1043;
- Guardant Inc v. youngcho kim, WIPO Case No. D2001-0043.
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-side-effects.com> be transferred to the Complainant.
Date: June 13, 2007