WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. New Media Solutions
Case No. D2007-0984
1. The Parties
The Complainant is Sanofi-Aventis, Gentilly Cedex, France, represented by Armfelt & Associés Selarl, France.
The Respondent is New Media Solutions, Richmond, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <acomplia-diet.net> is registered with Go Daddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2007. The Complaint named DomainsByProxy.com of Scottsdale, Arizona, USA as the Respondent. On July 6, 2007, the Center transmitted by email to Go Daddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 7, 2007, Go Daddy.com, Inc. transmitted by email to the Center its verification response clarifying that the current registrant of the disputed domain name is New Media Solutions of Richmond, British Columbia, Canada. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 17, 2007. The Center verified that the Complaint together with the amendment to 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 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2007.
The Center appointed Francine Tan as the sole panelist in this matter on September 10, 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 group, present in more than 100 countries across five continents. 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. The stock market capitalization of the Complainant is €103,697 million.
On February 16, 2004, the Complainant announced early results of two Phase III studies on a new product called Acomplia. The product comprises an active substance called Rimonabant. The results indicated that overweight and obese patients with untreated dyslipidemia lost weight in one year while improving their lipid and glucose profiles, and that smokers who had previously unsuccessfully tried to quit smoking, were able to quit in 10 weeks without post-cessation weight gain.
These 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, in the United Kingdom and Germany.
The Complainant has filed trademark 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 <acomplia-diet.net> revolves to a website in which it presents itself as the “Acomplia information web site” and a site created to provide a forum for discussion on one’s experiences with the drug, and slimming in general. It also provides links to several on-line pharmacies where Acomplia products or counterfeit products and those of other competitors are offered for sale.
5. Parties’ Contentions
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. (See Sanofi-Aventis v. Daichi Hoang, WIPO Case No. D2006-0363; Sanofi-Aventis v. V. Link, WIPO Case No. D2004-0810.)
The Complainant asserts that:
1. The domain name is confusingly similar to the trade mark ACOMPLIA in which the Complainant has rights.
A wide variety of Panels have considered the addition of generic or descriptive words to trade marks as insufficient to escape a finding of similarity or to change the overall impression of the designations as being connected to the Complainant. (See e.g. 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; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661.)
The descriptive word, “diet”, used in conjunction with the Complainant’s trade mark ACOMPLIA registered for a weight loss treatment, is a common word in this context. Thus, the mere addition of such a word to a registered trade mark is insufficient to avoid confusing similarity, which principle has been established by virtue of previous Panel decisions. In the case of Sanofi-Aventis v. After Hours Hosting/Brett Banta, WIPO Case No. D2006-0479, the Panel held that the domain names <diet-pill-acomplia.com>, <acomplia-diet-pills.com> and <acomplia-diet-aid.com> were confusingly similar to the Complainant’s trade mark ACOMPLIA.
The addition of the gTLD “.net”, which is required for registration of a domain name, has no distinguishing capacity in the context of the domain name and does not alter the value of the trade mark represented in the domain name.
2. The Respondent has no right or legitimate interest 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 Respondent does not actually offer any bona fide genuine goods or services on its website but rather, a portal for the goods of other competitors or possibly counterfeit Acomplia products to be sold by third parties. Such circumstances do not allow one to make a finding that the Respondent has rights or a legitimate interest in the domain name. (See Mr. Olympia, LLC, American Media Operations, Inc., International Federation of Bodybuilders v. Tim Harrington, WIPO Case No. D2005-1287; Societe des Hotels Meridien v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0321.)
Even if the Respondent were directly selling genuine Acomplia products (which is not admitted by the Complainant), previous Panels have stated that this is insufficient basis for the respondent to claim a legitimate interest or right to use the Complainant’s mark in the domain name. (See The Stanley Works and Stanley Logistics, Inc v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079.)
There was nothing reflected in the Respondent’s website which disclaimed any relationship with the Complainant or which dispelled any misconception that the website might be the or an official website of the Complainant (see Sanofi-Aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769).
The Respondent would not have registered the disputed domain name if it was not aware that Acomplia is a revolutionary drug used to target obesity and was ready to be put on the market. The Respondent has therefore registered the domain name with the intention to divert consumers and to prevent the Complainant from reflecting the trade mark in a corresponding domain name.
3. The domain name has been registered and used in bad faith and this is evidenced by the following:
(a) The Respondent has no prior right in the trade mark ACOMPLIA and no authorization from the Complainant to use the same.
(b) The Respondent’s awareness that ACOMPLIA is a revolutionary drug used for problems of obesity.
(c) The use of the domain name by the Respondent to attract, for commercial gain, Internet users.
In regard to point (b) above, various panelists 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.)
There is no doubt that the Respondent, knowing of the launch of the new product under the trade mark ACOMPLIA by the Complainant, registered the domain name in order to prevent the Complainant from adopting the trade mark in a corresponding domain name. This was an opportunistic act which is disruptive to 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.
As regards point (c) above, there can also be no doubt that the Respondent knew of the Complainant’s product sold under the trade mark, ACOMPLIA. This can be deduced from the construction of the domain name, consisting of the Complainant’s trade mark and the descriptive word “diet”, and from the content of the website.
By using the domain name <acomplia-diet.net>, the Respondent is creating confusion with the Complainant’s trade mark and thereby attempting to lead Internet users to its website and to those of third party online pharmacies. Further, Internet users who visit the website would be led to believe, erroneously, that Acomplia drugs are available without prescription by a medical doctor whereas this is not the case. This state of affairs is undesirable as it 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 Panels have held that the sales of such medication without requiring proof of a prescription by a doctor can constitute evidence of the respondent’s bad faith. (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
A. Identical or Confusingly Similar
The Complainant has established that the domain name is confusingly similar to the trade mark ACOMPLIA in which the Complainant has rights. It is a well-accepted principle that the generic top-level domain should be excluded from consideration as it is a functional component of the domain name. Further, the Panel agrees that the mere addition of generic or descriptive words such as “diet” in this case does not sufficiently distinguish the domain name from the mark. The most prominent element of the domain name is the ACOMPLIA mark. Alternatively, Internet users viewing the Respondent’s website are very likely to assume that the site is somehow sponsored or endorsed by, or affiliated with, the Complainant when it is not the case. In fact, consumers are likely to think that the domain name is a variation of the Complainant’s trade mark. The reference to “diet” in the domain name, in the context of Acomplia products, is likely to add to the confusion. (See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259; Novo Nordisk A/S v. Mr. Jonathan Valicenti, WIPO Case No. D2005-0563.)
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the domain name, even if it has not acquired any trademark or service mark rights; or (iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark.
Based on what has been submitted in the case file, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Panel may draw an inference that the Complainant’s assertions are true where the Respondent has failed to submit a Response. In this case, there is no evidence that the Respondent has been commonly known by the domain name or that a licence or permission has been granted by the Complainant to the Respondent to use any of its trade marks or to apply for or use any domain name incorporating any of those marks.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy prescribes a number of circumstances which are non-exhaustive but which, if found by the Panel to be present, shall be evidence of bad faith registration and use. Paragraph 4(b)(iv) sets out one of these circumstances, that is: “by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s web site or location or of a product”.
Whether there is bad faith is a question that must be considered in the context of the case as a whole. In this case, the Panel finds that there is sufficient evidence of the situation described in paragraph 4(b)(iv) and the relevant facts are mentioned above. The domain name is composed of the distinctive part of the Complainant’s mark, ACOMPLIA, to which is added a generic term “diet” that would suggest to Internet users that the website bearing the domain name would provide access to ACOMPLIA products or other goods or services relating to dieting or weight loss offered by the Complainant. The Panel finds that the choice of the domain name by the Respondent was deliberate and registration was made with the intention to profit from the reputation of the Complainant and its trade mark.
Accordingly, for the reasons mentioned, the Panel finds that the domain name has been registered and used in bad faith by the Respondent.
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-diet.net> be transferred to the Complainant.
Dated: September 24, 2007