WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. ALEX and DomainsByProxy.com
Case No. D2007-1453
1. The Parties
The Complainant is Sanofi-aventis of France, represented by Armfelt & Associés Selarl of France.
The Respondents are ALEX of San Jose, Costa Rica and DomainsByProxy.com of Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <generic-acomplia.com> and <buy-generic-acomplia.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2007. On October 4, 2007, the Center transmitted by email to GoDaddy Software a request for registrar verification in connection with the domain names at issue. On October 4, 2007, GoDaddy 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 October 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2007.
The Center appointed John Swinson as the sole panelist in this matter on November 5, 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 a multinational pharmaceutical company with its principal place of business in France.
The Complainant has developed a drug, Acomplia, for the treatment of obese or overweight patients with associated risk factors, such as type 2 diabetes or dyslipidaemia.
The Complainant has registered a trademark in the United States Patent and Trademark Office for ACOMPLIA (filed January 5, 2004; registered April 19, 2005). The Complainant has also registered a community trademark in the European Union Office for Harmonization in the Internal Market (which extends trademark protection to all 27 Member States of the European Union) for ACOMPLIA (registered April 26, 2005). The Complainant has filed trademark applications for ACOMPLIA in over 100 countries worldwide.
The Complainant has also registered numerous domain names worldwide containing the ACOMPLIA trademark, including the domain names <acomplia.com>, <acomplia.us>, <acomplia.fr>, <acomplia.net> and <acomplia.org>.
The Respondent registered the disputed domain names <generic-acomplia.com> and <buy-generic-acomplia.com> on June 18, 2007 and June 19, 2007 respectively.
5. Parties’ Contentions
The Complainant filed a detailed and comprehensive Complaint, and makes the following submissions and arguments:
The disputed domain names are confusingly similar to the Complainant’s ACOMPLIA trademark. The disputed domain names incorporate the Complainant’s trademark in addition with the descriptive word “generic” and the gTLDs “.com”. One of the domain names also includes the generic word “buy”.
Previous Panel decisions have found that the word “generic” is to be considered a descriptive word when used in connection with the medical area. Previous Panel decisions have also considered the domain names: <buygenericacomplia.com>, <generic-acomplia.net>, <generic-accomplia.com>, <genericaccomplia.net> and <genericacomplia.net> to be confusingly similar to the Complainant’s trademark “Acomplia”. Concerning the word “buy”, the mere addition of such a generic word to a registered trademark has consistently been deemed insufficient to avoid confusing similarity.
The Respondent has no right or legitimate interest in respect of the domain names. The Respondent has no registered trademark including the word “Acomplia”. The Complainant has prior rights in the ACOMPLIA trademark, which precede the Respondent’s registration of the disputed domain names. The Complainant’s trademarks for “ACOMPLIA” are well-known throughout the world and are used in 100 countries, including Costa Rica where the Respondent is located.
The Respondent is not using the domain names in connection with a bona fide offering of goods or services. The disputed domain names lead to active websites which provide links to other online pharmacies where Acomplia products or counterfeit, placebo or competitor products are offered for sale. In fact, the Respondent inserted links provided by the “Adsense” program from Google Inc, for which he automatically receives fees and commissions. Those links lead to several websites where competitor products are provided related to weight loss treatment. Previous WIPO UDRP Panels have considered the use of the Adsense Program constitutes evidence of the respondent’s bad faith.
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 content on the Respondent’s website. However, the Respondent’s sites did nothing to disclaim any relationship with the trademark owner. The Respondent registered the domain names with the intention to divert customers and prevent the Complainant from reflecting the trademark in a corresponding domain name.
The domain names were registered and are being used in bad faith, because the Respondent had no prior right or authorization given by the Complainant concerning the ACOMPLIA trademark, and so registration of the disputed domain names has not been made with bona fide intention.
The Respondent registered the domain names knowing that the Complainant was planning to market a revolutionary drug under the name of ACOMPLIA. This knowledge was obtained from Internet postings in 2004 about early results of two Phase III studies with ACOMPLIA, and from several scientific publications concerning Acomplia published during 2005-2006. The Respondent is intentionally attempting to attract Internet users to the disputed domain names for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
It is also evidence of bad faith that the Respondent’s websites will cause Internet users to believe that ACOMPLIA medicine products are available in all countries without medical control. ACOMPLIA has not yet been launched in all countries and can only be obtained by medical prescription.
On August 14, 2007, the Complainant sent a cease and desist letter to the Respondent, requiring the transfer of the disputed domain names. On August 16 and August 17, 2007, the Respondent replied and offered the domain names for sale. The offering for sale of the domain names is evidence that the domain names were opportunistic registrations that have been made and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant has a registered trademark of ACOMPLIA in the United States of America and the European Union. The Panel finds that the Complainant has trademark rights in ACOMPLIA.
The next issue is whether the disputed domain names are identical, or confusingly similar, to the ACOMPLIA mark.
The disputed domain names are comprised of the entirety of the Complainant’s ACOMPLIA trademark, preceded by the descriptive word “generic” and followed by the gTLDs “.com”. One of the domain names is also preceded by the generic word “buy”.
The addition of the words “generic” and “buy” means that the disputed domain names are not identical to the Complainant’s trademark. The question therefore becomes whether the disputed domain names are confusingly similar to the Complainant’s trademark.
The word “generic” has been held by previous panels to be a purely descriptive word. In Lilly ICOS LLC v. Kevin Adelman, WIPO Case No. D2006-0305, concerning the domain name <generic-cialis-prescription.com>, the Panel stated:
“The Panel notes that the entirety of the CIALIS Mark is included in the Domain Name. The only additional words are “generic” and “prescription” which are both descriptive in the drug industry.”
The word “buy” is a generic word. The use of generic terms together with a Complainant’s trademark will not prevent the disputed domain name from being confusingly similar to the trademark, as generic terms lack distinctiveness (Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809). In Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660, the panel commented, “There will be words such as ‘buy’, ‘shop’, ‘cheap’, which by their very nature add nothing to a trade mark…”
It has been consistently held that mere addition of descriptive or generic words to a registered trademark is insufficient to avoid confusing similarity (Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Sanofi-Aventis v. Internet Marketing Inc. John Bragansa, WIPO Case No. D2005-0742; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057).
The gTLD “.com” has no distinguishing capacity and does not alter the value of the trademark represented in the domain names (Telecom Personal, S.A., v. NAMAZERO.COM, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).
Confusing similarity has been found in previous cases brought by Sanofi-aventis concerning the present trademark, ACOMPLIA, and the domain names <generic-accomplia.com>, <genericaccomplia.net>, <genericacomplia.net>, <buygenericacomplia.com> and <generic-acomplia.net> (Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440). These domain names are almost identical to the domain names presently in dispute. For example, <generic-acomplia.net> and <generic-acomplia.com> differ only by the gTLD, and <buygenericacomplia.com> and <buy-generic-acomplia.com> differ only by the addition of hyphens. Further, if confusing similarity can be found between the ACOMPLIA trademark and the domain name <generic-accomplia.com>, where Acomplia is misspelt with an extra “c”, there is no reason why confusing similarity would not exist in the domain name <generic-acomplia.com>, where acomplia is spelt correctly.
For all these reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):
(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 non-commercial 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”. (Policy, paragraph 4(c)).
For the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainant to show a prima facie case, after which the burden of proof is shifted onto the Respondent. However, as the Respondent has failed to respond to the Complaint or participate in these proceedings, the Panel has to decide the Complaint on the basis of the statements and documents submitted by the Complainant.
The Complainant has not granted the Respondent any license or other authorization to use its trademark in relation to the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names or by the name ACOMPLIA.
The Respondent uses the disputed domain names to provide links to websites where products in competition with Acomplia are offered for sale. This cannot be considered a bona fide offering of goods or services in accordance with the Policy, paragraph 4(c)(i). It also cannot be considered a non-commercial or fair use of the domain name without intention for commercial gain, under paragraph 4(c)(iii) of the Policy (Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661).
On November 14, 2007, the Panel visited the Respondent’s websites under both disputed domain names. Both websites provide links to redirect Internet users to other sites featuring competing dietary and weight-loss products and programs, including Weight Watchers, “surgery for obesity” and numerous sites promoting various kinds of diet pills. The websites also contain links to products completely unrelated to the Complainant’s Acomplia product.
In this regard, the statements of the Panel in Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440, are relevant:
“The Complainant is a major manufacturer of pharmaceuticals, and its products and trade mark ACOMPLIA is undoubtedly of great value. Respondent’s web sites resolving to the domain names at issue are not related to the Complainant or the Complainant’s products, and it is in the opinion of the Panel unlikely that the Respondent would have any right or legitimate interest in the use of the trade mark which takes place.”
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names and the Respondent has, by not responding, failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, 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 trademark 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 trademark 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.
It is extremely likely that the Respondent knew of the product sold under the Complainant’s ACOMPLIA trademark when it registered the disputed domain names. This conclusion can be reached by considering three factors. Firstly, the word “Acomplia” is a coined word with no independent meaning (See F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057; Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661). Secondly, the use of the word “Acomplia” together with the descriptive word “generic” and, in the case of one of the domain names, the generic word “buy” indicates that the Respondent was referring to the Complainant’s product (Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440; Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2006-0363). Finally, the Complainant’s product is a weight loss medicine and the Respondent’s websites contains links to weight loss programs and to products that compete with the Complainant’s product (F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946).
If the Respondent knew of the Complainant’s product “Acomplia”, then it must have at least suspected that the Complainant would have registered trademark rights in the name. It is evidence of bad faith that the Respondent nevertheless used that name to attract Internet users to the Respondent’s websites, knowing that the Complainant had not authorized it to do so (F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066).
There is evidence that the Respondent uses the Adsense Program from Google Inc to insert links into its websites in order to generate fees and commissions. In Lilly ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729, the panel considered use of the Adsense Program when finding bad faith:
“However, even if the only fees and commissions received by the Respondent were those obtained through the ‘Adsense’ program, and even if they were used solely to defray the costs of his website, the use of the Domain Name for a website which promoted suppliers of other products was in itself an objectionable exploitation of the Complainant’s reputation under its mark.”
In F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066, the panel said, in relation to a finding of bad faith:
“The Respondent’s use of the Complainant’s trademark to sell products that compete with the Complainant’s medicine which bears the name of the mark provides further evidence of bad faith. This time, it is in the use of the domain name. It is fairly outrageous to attract customers to your site by breaching someone else’s trademark rights and then use that site to sell products that compete with the person or company whose rights you are infringing.”
In the present dispute, there is no evidence that the Respondent is selling authorized or legitimate Acomplia product or that the Respondent is an authorized reseller or distributor of the Acomplia product (contrast Gordano Limited v. NT mail server, WIPO Case No. D2002-0277; Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774).
It is also evidence of bad faith that the Respondent has registered more than one domain name incorporating the Complainant’s trademark. By registering several domain names that are confusingly similar to the Complainant’s trademark, the Respondent has prevented the Complainant from reflecting its mark in corresponding domain names. The registration of several names corresponding to the Complainant’s trademark is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy (General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452; Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2006-0363).
On August 14, 2007, the Complainant sent a cease and desist letter to the Respondent. On August 16 and August 17, 2007, the Respondent replied to the Complainant, seeking an offer from the Complainant to purchase the domain names. In the email dated August 16, 2007, the Respondent writes:
“Please make an offer on the domain’s www.generic-acomplia.com and www.buy-generic-acomplia.com, if it’s a reasonable offer they are yours.”
An offer to sell a domain name is not per se proof of bad faith registration and use, particularly where the domain name has value to the registrant (Upbeat, Inc. v. Scott Fabian, WIPO Case No. D2006-0332). The Respondent is this case used the domain names to generate revenue through advertisements (contrast Alitalia - Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260, where the respondent made no use of the domain name in question). Even though there is no direct evidence that the Respondent registered the domain names primarily for the purpose of selling the domain names to the Complainant for valuable consideration in excess of costs, the Panel finds the Respondent’s email to be a further indication of bad faith. (contrast Nabisco Brands Company v. Patron Group Inc, WIPO Case No. D2000-0032; Matmut v. Paul Tweed, WIPO Case No. D2000-1183; Lockheed Martin Corporation v. Allen Jarosz, WIPO Case No. D2005-0361).
For the above reasons, the Panel finds that paragraph 4(b) is satisfied in this case and that the registration and use of the disputed domain names has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 names <generic-acomplia.com> and <buy-generic-acomplia.com> be transferred to the Complainant.
Dated: November 19, 2007