WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SANOFI-AVENTIS v. Doctorsolve Healthcare Solutions Inc.
Case No. D2007-0922
1. The Parties
The Complainant is SANOFI-AVENTIS, Gentilly Cedex, France, represented by Armfelt & Associés Selarl, France.
The Respondent is Doctorsolve Healthcare Solutions Inc., Surrey, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <weightlossacomplia.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2007. On June 25, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 25, 2007, Go Daddy Software 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 July 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2007.
The Center appointed Francine Tan as the sole panelist in this matter on September 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 is one of the world’s largest pharmaceutical groups, present in more than 100 countries. It had consolidated net sales of €27,311 billion in 2005 and its spending on research and development is in the region of €4 billion. The Complainant has firmly established positions in seven key fast-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines. The group employs approximately 100,000 people worldwide, with a sales force of 35,030 persons and research staff of more than 17,600.
On February 16, 2004, the Complainant announced the early results of two Phase III studies with a new product called Acomplia targeting obesity. The results were presented to the scientific community at the American College of Cardiology Annual Meeting on March 9, 2004. During the next two years, several scientific publications were published concerning the product, Acomplia, and much discussion over this revolutionary product took place over the Internet. In June 2006, the European Market Authorization for ACOMPLIA was granted and the product has since been commercialized, title used in countries such as the United Kingdom and Germany.
The Complainant has filed trade mark applications for ACOMPLIA in more than 100 countries including the United States of America and Canada, and registered numerous domain names containing the trade mark ACOMPLIA in many countries worldwide.
The domain name <weightlossacomplia.com> revolves to a website in which what is offered for sale is allegedly the Complainant’s Acomplia weight loss drug.
5. Parties’ Contentions
The Complainant contends that given the huge impact of the new product, Acomplia, in the medical field, and since Acomplia has not to-date been launched worldwide, the result has been that cybersquatters have been registering domain names incorporating the trade mark ACOMPLIA in order to sell, without the Complainant’s consent, Acomplia and/or fake Acomplia products. The public health implications presented by this state of affairs are severe as Internet users purchasing these products from such websites as those of the Respondent, would be under the mistaken impression that they are dealing with the Complainant.
The Complainant has filed many complaints with the Center involving the registration of domain names by third parties in which the trade mark ACOMPLIA is incorporated. The decisions rendered by the panels have so far been in favour of the Complainant.
The Complainant asserts that:
1. The domain name is confusingly similar to the trade mark ACOMPLIA in which the Complainant has rights.
Numerous panels have considered the addition of generic or descriptive words to trade marks not to be sufficient to escape the finding of similarity and overall impression that the domain name is connected to the complainant. In the present case, the words “weight loss” used as a suffix in the domain name describes the sought effect of the Acomplia product. Hence, these words are descriptive or generic words. In
F. Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717, the words “weight loss with” in the domain name <weightlosswithxenicalinfo.info> were considered as generic. Further, the Panel found the addition of the suffix “weightlosswith” and “info” did not diminish the similarity between the disputed domain name and the Complainant’s trade mark.
The addition of the generic top level domain “.com” which is required for registration of a domain name has no distinguishing capacity in the context of a domain name and does not alter the value of the trade mark represented in the domain name. (See Telecom Personal, S.A. v. Namezero.com, Inc., WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271.)
2. The Respondent has no rights or legitimate interests in the domain name.
The Complainant’s prior rights in the ACOMPLIA trade mark precede the registration of the disputed domain name. The Complainant’s trade mark has been applied for in more than 100 countries including Canada where the Respondent is located. The results of a study on Acomplia were published and made available worldwide, particularly over the Internet, in 2005. The Complainant has not given the Respondent any licence, consent or other right to register or use the domain name with the Complainant’s ACOMPLIA trade mark. There is no doubt that the Respondent is aware that Acomplia relates to a medical product and is a trade mark.
The disputed domain name leads to an active website where Acomplia products, or possibly counterfeit Acomplia products, are offered for sale. Even if the Respondent were directly selling genuine Acomplia products, it has been established in many previous panel decisions that that is not sufficient a basis to give the Respondent a right or legitimate interest to use the Complainant’s trade mark in a domain name. (See e.g. The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Motorola v. NewGate Internet, WIPO Case No. D2000-0079; General Electric Company v. Japan, Inc., WIPO Case No. D2001-0410; Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101.)
Hence, even if the Respondent used the domain name to sell genuine products, this was done without the Complainant’s consent and thus the Respondent had no right to incorporate the Complainant’s trade mark into the domain name. By doing so, the Respondent is intentionally and unfairly attracting Internet users to its website by giving the impression that it is affiliated with, or sponsored or endorsed by the Complainant. The Respondent did nothing on the website to disclaim any relationship with the trade mark owner. It did nothing to dispel any possible suggestion that it might be the trade mark owner or that the website might be that of the Complainant’s.
It is unlikely that the Respondent would have registered the domain name if it were not aware that Acomplia is a revolutionary drug used to address problems of obesity and was about to be put on the market.
3. The domain name has been registered and used in bad faith.
The following elements show the Respondent’s bad faith:
(a) The Respondent had no prior right or authorization by the Complainant to use the trade mark ACOMPLIA.
(b) The Respondent’s awareness that Acomplia is a revolutionary drug used to combat obesity.
(c) The addition of descriptive or generic words to the ACOMPLIA trade mark misleads Internet users.
(d) The Respondent’s use of the domain name to attract for commercial gain Internet users.
Various panels have taken the view that the registration of a domain name after the launch of the Complainant’s product leads to an inference of bad faith. (See 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.)
In this case, there is no doubt that the Respondent, knowing of the launch by the Complainant of a new product under the trade mark ACOMPLIA, registered the domain name in order to prevent the Complainant from reflecting the trade mark in a corresponding domain name, thereby disrupting the Complainant’s business. The mere holding of a domain name that is identical or confusingly similar to a trade mark belonging to a third party, in itself, can be considered disruptive to the business of the rights’ owner.
The registration of the domain name comprising the words “weight” and “loss” and the Complainant’s trade mark is clearly made in bad faith. The intention is clear that the Respondent seeks to mislead Internet users and unfairly attract Internet users searching for the Complainant’s product. Likelihood of confusion is created with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of its website or of the product on its website.
There is a further danger that Internet users would be led to believe that the Acomplia product is available in all countries without any medical control, whereas in fact it has not yet been launched in all countries. In the case of Canada, the product has not been launched there as the relevant authorization for commercial sales has not been granted. Further, the product can in fact only be obtained with a medical prescription. Hence, the use of the domain name for an online pharmacy selling pharmaceutical products such as Acomplia without prescription by a medical doctor is potentially harmful to the health of Internet users who purchase Acomplia products under the mistaken impression that they are dealing with the Complainant. Previous panel decisions have established that selling prescription medication without requiring any doctor’s prescription is a violation of public health regulations and constitutes evidence of bad faith by the Respondent. (See Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.)
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In regard to this first limb of paragraph 4(a) of the Policy, it is well established that the gTLD should be disregarded in the assessment of whether the domain name is identical or confusingly similar to the Complainant’s trade mark.
The Panel is in agreement with the Complainant’s contention that the domain name is confusingly similar to its trade mark, ACOMPLIA. The case of F. Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717 is similar to the instant case as the disputed domain name in that case comprised the complainant’s trade mark and the words “weightlosswith”. The panel in the F. Hoffmann-La Roche case held as follows: “In previous decisions, Panelists have found that the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas Inc v. the ASD Inc, WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273). The Panel finds that the term XENICAL is the distinctive part of the disputed domain name, and the generic terms “weightlosswith” and “info” adds little to the overall impression of the disputed domain name. Internet users are likely to assume that the addition of the words “weightlosswith” and “info” to the trade mark XENICAL signify a website associated with the Complainant, especially bearing in mind that the Complainant market weight loss medication under the trade mark XENICAL. The Panel finds that the addition of the suffix “weightlosswith” and “info” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.”
The Panel agrees with the comments and finding made in that case and, for similar reasons is of the view that the domain name <weightlossacomplia.com> is confusingly similar to the Complainant’s trade mark.
The Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of paragraph 4 (a)(ii), inter alia, by providing evidence of any of the following circumstances:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
As has been well established in numerous panel decisions, for the purposes of paragraph 4(c) of the Policy, all that the Complainant is required to show is a prima facie case, after which the burden lies on the Respondent to show that it has rights or legitimate interests in the domain name. In not filing a Response, the Panel has only the Complaint and documents lodged in support to consider. In this case, the Panel finds that a prima face case has been established that the Respondent has no rights or legitimate interests: The Complainant did not authorize or license the Respondent to sell Acomplia products or to use the trade mark ACOMPLIA on its website. No evidence has been proffered in this case as to whether the products sold on the Respondent’s website are indeed counterfeit products. Nevertheless, even if the goods sold were genuine products, the Panel is inclined to adopt the position that this in itself does not mean that third parties are thereby entitled to claim a legitimate interest in, or right to use, the ACOMPLIA trade mark in the domain name. On this point, the Panel finds it useful to refer to what was stated by the panel in the case of Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 as it reflects the principle which should also apply in this case: “The domain name <worldnokia.com> has been used by Respondent to offer logos, ringtones, software and other products and services to owners of mobile phones. Respondent has stated that the products offered by Respondent are only compatible with the Nokia mobile phone and that it was for this reason that the name “worldnokia” was used. As was held by the Panel in, inter alia, (Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079; Stanley Works and Stanley Logistics Inc. v. Camp Creek Co. WIPO Case No. D2000-0113; Mikimoto (America) Co. v. Asanti Jewellers Ltd , No. AF-0126; R.T. Quaife Engineering Ltd v. Luton, WIPO Case No. D2000-1201) a licensee or a dealer, agent or distributor of products of the trade mark owner or of compatible products does not per se have a right to a domain name which includes that trade mark. It follows that Respondent in this case would only have a right to the domain name <worldnokia.com> if Complainant had specifically granted that right. Respondent has not contested that Complainant has not licensed or otherwise permitted Respondent to use the trade mark NOKIA. The mere fact that Respondent sells logos and ringtones compatible with NOKIA mobile phones is not sufficient for Respondent to claim a legitimate interest.”
Hence, in the absence of any consent or licence by the Complainant to the Respondent for the latter to use the trade mark ACOMPLIA as part of its domain name, the Panel is unable to find, on the available evidence, that the Respondent has a right or legitimate interest in the domain name, even if the Respondent may be selling genuine Acomplia products.
The Panel accordingly finds that the second element of paragraph 4(a) of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Respondent undoubtedly knew of and was well acquainted with the Complainant’s reputation and revolutionary product, as evidenced on its website. The text on the website reads, inter alia, as follows: “Tired of struggling with weight gain? Ready for a new way to safely lose weight? Acomplia Rimonabant is fast becoming the most effective and safe drug for quick weight loss in people with obesity. Discovered and developed by French pharmaceutical company, Sanofi-Aventis, Acomplia Rimonabant is a drug for weight loss that has shown promise in the treatment of obesity and related metabolic risk factors. Rimonabant is already on the market in Europe, being sold under the trade name Acomplia, and is fast becoming one of the most seeked out [sic.] drugs in the fight against obesity. In clinical trials about one third of people taking this highly effective weight loss drug lost 10% of their body weight and managed to safely maintain that weight for at least two years…”.
There is reflected in the Respondent’s website an acknowledgment that ACOMPLIA is a trade mark that the Complainant has rights in. It also suggests that the Respondent is aware that this is a product that would potentially sell very well. Having taken into account the facts and circumstances of this case, the Panel accepts the prima facie case put forth by the Complainant, that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website. Internet users are understandably likely to perceive that this website is that of a licensed distributor of the Complainant’s products. In addition to this, the Respondent’s conduct is potentially disruptive to the Complainant’s business.
The Panel has also taken into consideration the argument made by the Complainant of the potential dangers posed by the online sales of the Acomplia drug without prescription, and agrees that this is indicative of bad faith use by the Respondent.
In the circumstances, the Panel finds that the third element of paragraph 4(a) of the Policy has been established.
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 <weightlossacomplia.com> be transferred to the Complainant.
Dated: September 18, 2007