WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Kent Arwood
Case No. D2007-1779
1. The Parties
The Complainant is Sanofi-aventis of France, represented by Armfelt & Associés Selarl of France.
The Respondent is Kent Arwood of United States of America.
2. The Domain Name and Registrar
The disputed domain name <acompliageneric.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 4, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On the same day GoDaddy.com, Inc. 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 December 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2007.
The Center appointed Philip N. Argy as the sole panelist in this matter on January 14, 2008. 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 following facts, taken from the Complaint, are uncontested.
The Complainant was formed during 2004 as a result of a merger between the two French companies AVENTIS SA and SANOFI-SYNTHELABO. Completion of the transaction created the no. 1 pharmaceutical group in Europe (no. 3 in the world), with 2006 consolidated sales of € 284 billion in the core business and a strong direct presence in all major world markets.
On February 16, 2004, during a public information meeting (the contents of which were also promulgated on the Internet), the Complainant announced early results of two Phase III (human) clinical studies with a new anti-obesity/quit smoking medicine called “Acomplia”. Results of the clinical trials were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004. During 2005-2006, several scientific publications were published in relation to “Acomplia” (as the RIO-Lipids study published in The New England Journal of Medicine) and there was extensive Internet discussion of this new product.
As obesity is becoming the number one health epidemic of the 21st century, there is no doubt that “Acomplia” can be considered as a revolutionary medicine.
The European Market Authorization for ACOMPLIA was granted in June 2006. The product is commercialized in the United Kingdom and Germany.
The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries including France and United States of America. Registration has been obtained in many countries and evidence of this is before the Panel. The Complainant is also the registrant of several domain names, including <acomplia.com>, <acomplia.fr>, and <acomplia.us>.
5. Parties’ Contentions
The Complainant’s submissions and contentions are quite extensive and thorough, and supported by a considerable volume of annexed evidence, but given the lack of a Response, they can be summarized for present purposes as follows:
(i) The domain name <acompliageneric.com> is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights:
The Respondent’s registration consists of the use of the Complainant’s trademark in addition to the descriptive word “generic” and the gTLD “.com”. The descriptive word “generic” used in conjunction with the Complainant’s trademark ACOMPLIA is a common word used in the medical market like “drug”, “pills”, and “pharmacy”. The Complainant says that the mere addition of such a descriptive word to a registered trademark is insufficient to avoid confusing similarity, and it cites many previous UDRP decisions which have upheld this submission. Persons accessing the domain name would be bound to think that the domain name has a connection with the Complainant or at least to bioequivalent products. Furthermore, the addition of the gTLD “.com ” has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name. Because of the identity between the trademark ACOMPLIA and the disputed domain name, the Complainant says that there is a high risk of confusion, since a consumer may think that the domain name directly refers to its new product.
In short, the Complainant strongly argues that the disputed domain name <acompliageneric.com> is confusingly similar to the Complainant’s ACOMPLIA trademark.
(ii) The Respondent has no right or legitimate interest in respect of the domain name <acompliageneric.com>
The Complainant’s applications/registrations for the ACOMPLIA trademark precede the Respondent’s registration of the disputed domain name. The Complainant’s ACOMPLIA trademark is used in more than 100 countries, including the United States, where the Respondent is located. Furthermore a worldwide communication, notably by the way of the Internet, was made about the results of ACOMPLIA Phase III trials.
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 in conjunction with the adjective “generic”.
There is no doubt that the Respondent is aware that ACOMPLIA corresponds to a trademarked medical product - the disputed domain name resolves to an active website where some information about the Complainant’s “Acomplia” product is provided in conjunction with links to several on-line pharmacies where Acomplia products or counterfeit products or placebo products and other competitor products are offered for (illegal) sale.
(iii) The domain name was registered and is being used in bad faith
The obvious bad faith of the Respondent results from the following elements:
- the Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA trademark;
- the Respondent’s awareness that ACOMPLIA is a revolutionary drug against obesity;
- the Respondent uses the domain name to attract Internet users for commercial gain.
The Respondent would not have registered the disputed domain name if it was not aware that “Acomplia” is a revolutionary drug against obesity, and was ready to be put on the market. It is clear that the Respondent has registered the disputed domain name with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name. The Respondent has not made bona fide use of the disputed domain name because of its lack of authorization to use the ACOMPLIA trademark and sell “Acomplia” or any bioequivalent medicine.
In October 2006, Acomplia was first marketed in the United Kingdom. The Respondent registered the disputed domain name on May 7, 2007.
There has been no communication from the Respondent and, in particular, no reply to the allegations and submissions made in the Complaint.
6. Discussion and Findings
Although the Complainant’s submissions are uncontested, it has the burden of demonstrating that the requirements of paragraph 4(a) of the Policy are made out, and it is therefore necessary for the Panel to consider the submissions, and the evidence, and to make formal findings.
A. Identical or Confusingly Similar
The Complainant has extensively demonstrated its global rights in the trademark ACOMPLIA for its anti-obesity medicine. A domain name comprising the trademark of a medicinal preparation as its root, concatenated with the word ‘generic’ and the gTLD ‘.com’, is self evidently confusingly similar to the trademark, and the Complainant’s contentions, supported by extensive authority, are quite sound in this regard. As this Panel noted in Wal-Mart Stores, Inc. v. xc2, WIPO Case No. D2006-0811, confusing similarity is not tested by reference to the content of the website to which the disputed domain resolves, but by reference to the inherent likelihood of the disputed domain name to confuse Internet users as to the trade origins of any products that might be found at a site to which the domain resolves. In the present case there is certainly scope for a consumer to be confused about the trade origins of the products to be offered on any site to which such a link might lead. Whilst on one view consumers might assume that a generic form of a brand name drug did not come from the brand supplier, it is in fact quite common for innovators to market ‘fighting’ brands.
This case is slightly different to Sanofi-aventis v. Privacyprotect.org, WIPO Case No. D2007-1776, where the disputed domain name comprised ACOMPLIA followed by “pills”. Whereas in that case there was no scope for initial interest confusion to be dispelled, here the confusion may be somewhat weaker if consumers assume that brand manufacturers are not the source of generic versions of their own products. Nevertheless, on balance, the Panel does not think that Internet consumers would engage in that level of analysis. These issues are to be tested as matters of fleeting first impression and shallow consideration on the part of a putative consumer. Also, the presence of the brand name in question as the root of the disputed domain name gives it more emphasis than if it were simply appended, although the Panel does not want to suggest that ‘genericacomplia’ would be less confusing than ‘acompliageneric’; the reverse may be the case. Each situation turns on its facts and needs to be evaluated carefully.
The Panel is satisfied here that the disputed domain name is confusingly similar to the Complainant’s well established trademark ACOMPLIA.
B. Rights or Legitimate Interests
The Respondent has not asserted any basis for its use of “Acomplia” in the disputed domain name. The Panel is aware of no basis for any such assertion. For the reasons advanced by the Complainant on the use of the disputed domain name (as also further discussed in the section below), the Panel comfortably concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As the Complainant contends, any Internet user who seeks to follow the disputed domain name might well believe that the Complainant’s “Acomplia” medicine, or generic versions of it, is available in that user’s country without any medical control, whereas such medicine (i) has not been yet launched in all countries, (ii) has not been granted marketing approval authorization in all countries and (iii) can only be obtained by prescription from a medical practitioner.
Use of the domain name <acompliageneric.com> to redirect Internet users to on-line pharmacies selling pharmaceuticals such as genuine or more usually counterfeit “Acomplia”, without requiring physical examination by a doctor, is potentially harmful to public health, especially to Internet users who purchase “Acomplia” or supposedly bioequivalent products under the mistaken impression that they are dealing with the Complainant’s formulation. Even if those users have been examined and have been prescribed “Acomplia” by their physician, it is just as likely that the user will be directed to a site selling counterfeit or inferior products. This public detriment is properly to be taken into account in assessing the Respondent’s bona fides because in this Panel’s view such a cavalier disregard for public health is strong evidence of bad faith.
Previous WIPO UDRP Panelists have stated that selling or purchasing prescription medication without any doctor’s examination or prescription, and consequently in violation of Public health regulations, can constitute evidence of the respondent’s bad faith. For example, in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794, the panel took this view and noted:
“Complainant’s Cialis product is available only on a physician’s prescription, and is manufactured, labelled, and sold in strict compliance with FDA [Food and Drug Administration] and other health authority laws and regulations…The products sold on respondent’s website are…illegal and potentially dangerous”.
The timing of the registration of the disputed domain by the Respondent gives rise to a strong inference of it being opportunistic in the face of the registration and increasing recognition of the “Acomplia” brand around the world. In particular, the use of the Acomplia trademark in the USA before the Respondent registered the disputed domain, when combined with the nature of the website to which the disputed domain name resolves, makes it easy for the Panel to find that the disputed domain name was both registered and is being used in bad faith by the Respondent.
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <acompliageneric.com> be transferred to the Complainant.
Philip N. Argy
Dated: January 28, 2008