WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. M72 Hosting
Case No. D2007-1937
1. The Parties
The Complainant is Sanofi-aventis of Paris, France, represented by Armfelt & Associés Selarl, of Paris, France.
The Respondent is M72 Hosting of Surat, Gujarat, India.
2. The Domain Names and Registrar
The disputed domain names <accompliazimulti.com> and <buyaccomplia.info> (the “Domain Names”) are registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2007. On December 31, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 31, 2007, the Registrar 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”).
3.2 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 January 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2008.
3.3 The Center appointed Matthew S. Harris as the sole panellist in this matter on February 1, 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.
3.4 On reviewing the papers it appeared to the Panel that the Complainant had inadvertently omitted to append a copy of the website operating from one of the Domain Names to its Complaint. Accordingly, on February 12, 2008, the Panel issued a procedural order (the “First Procedural Order”) in which the Complainant was required to provide a copy of the missing pages by 6:00 pm GMT on February 14, 2008. The First Procedural Order also provided for the Respondent to submit a further submission if it wished limited to this issue by February 18, 2008.
3.5 On February 18, 2008, the Complainant’s legal representative sent an email to the Center stating that due to technical problems it had only received the First Procedural Order that day. It also provided a copy of the missing pages. Accordingly, that same day the Panel issued a second procedural order (the “Second Procedural Order”) extending the time for the Respondent to make a further submission to February 20, 2008. By means of the First and Second Procedural Orders time by which a decision should be issued by the Panel in these proceedings was extended until February 21, 2008.
4. Factual Background
4.1 The Complainant was formed in 2004 as a result of merger between Aventis SA and Sanaofi-Synthelabo. It is the largest pharmaceutical group in Europe and the third largest in the world. It is present in more than 100 countries across 5 continents.
4.2 The Complainant offers a wide range of drugs, many of which could be described as “blockbusters”. “Acomplia” is one of the Complainant’s products and its active substance is “Rimonabant”. This drug has applications in the field of weight loss and in assisting those who are attempting to cease smoking. “Zimulti” is another product of the Complainant whose active substance is “Rimonabant”.
4.3 Early results of two Phase III studies of this product under the “Acomplia” name were announced to the world in February 2004 and since that date the product has been widely publicised. Acomplia and Zimulti were both granted European Market Authorisations in June 2006.
4.4 Various trademarks have been registered around the world that incorporate the “Acomplia” and “Zimulti” names. These include:
(i) Community Trademark No. 3565678 filed on December 2, 2003 for the word “Acomplia” in class 5 for “Pharmaceutical preparations”; and
(ii) Community Trademark No. 003409216 filed on October 14, 2003, for the word “Zimulti” in class 5 for “Pharmaceutical preparations”.
4.5 The Complainant is the owner of various domain names that incorporate the words “Acomplia” and “Zimulti”, including <acomplia.com>, <acomplia.fr> and <acomplia.us>, <zimulti.com>, <zimulti.fr> and <zimulti.us>1.
4.6 The exact legal status of the Respondent is unclear, although it appears to be associated with an individual or individuals that go by the name of “Araya Patel” and “Duvyesh Patel”. The Respondent registered the <buyaccomplia.info> Domain Name on October 21, 2006 and the <accompliazimulti.com> Domain Name on May 15, 20072.
4.7 Since registration, or shortly thereafter, the Domain Names have resolved to websites that have homepages that, although somewhat different in style, nevertheless follow the same basic format. Each has a heading which incorporates a prominent reference to Acomplia. One reads “Zimulti Online”, whilst the other reads “BuyAccomplia.info”.
4.8 Underneath these headings is a description (in one case very brief) as to what is Zimulti/Acomplia. In the case of the website operating from the <buyaccomplia.info> Domain Name, the website describes Acomplia as “a new diet pill discovered and developed by a French pharmaceutical company, Sanofi-Aventis”. At the bottom of the page is to be found the following in small text:
“We do not Promote or Sell any Prescription Medicine. This website is for information only. To visit the official website of please see www.acomplia”.
In the case of the website operating from the <accompliazimulti.com> Domain Name there is a similar “disclaimer” at the bottom of each page. This reads:
“This is an independent new site reporting on rimnobant a diet drug developed by Sanofi-Aventis which is marketing it in Europe under the trademarked name Acomplia and in the United States under the trademarked name Zimulti. Nothing on this site is intended to infringe on these trademarks. Nothing on this site is intended as medical advice. The information provided here is for informational purposes only. Always consult a doctor or medical professional with questions you may have regarding a medical condition.”
4.9 Underneath the descriptions of the product to be found on each home page is to be found price lists. These price lists list the prices of the Acomplia product at different online pharmacies including “Atlantic Drugs”, “121doc”, “Getpharma” and “121docEurope”. Each contain a link which when clicked upon takes one to the relevant online pharmacy’s website and a page that gives further information on, and prices for, Acomplia. From there it is possible to order the product. In each case the online pharmacy webpage also includes links to other pages on that website that offers different pharmaceuticals.
4.10 Nowhere in the websites operating from the Domain Names is any description or disclosure of the identity of who it is that is operating or responsible for the websites. Each contain copyright notices either in the form “Copyright (c) 2007 zilutiaaccomplia.com”3 or “© Copyright 2006-2007, Buyaccomplia.com”.
4.11 These websites continue to operate at the date of this Decision.
5. Parties’ Contentions
The Complainant’s Trademarks
5.1 The Complainant contends that the Domain Names consist of the Complainant’s ACOMPLIA and/or ZIMULTI trademarks, in each case with the term “Acomplia” misspelt with two “c”s. In the case of the Domain Name <buyaccomplia.info>, “accomplia” is combined with the “generic or descriptive” word “buy”.
5.2 The Complainant refers to numerous cases under the Policy that are said to support the proposition that such misspelling (or “typosquatting”) “has been considered insufficient to avoid confusing similarity”. These cases include Sanofi-Aventis v. Elizabeth Regel, WIPO Case No. D2005-1045. It also refers to numerous cases which it states make it clear that “the addition of such generic word to a registered trademarks has consistently been deemed insufficient to avoid confusing similarity”. These include Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494 and Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043.
5.3 The Complainant also refers to a number of UDRP cases in support of the proposition that the addition of the gTLD “.com” and “.info” “has no distinguishing capacity”.
5.4 The Complainant then goes on to contend that there is “identity between the trademark ACOMPLIA and ZIMULTI and the [Domain Names]” and that the Domain Names “generate confusion with the Complainant’s trademarks”.
No Rights or Legitimate Interests
5.5 The Complainant asserts that is has “prior rights in the ACOMPLIA and ZIMULTI trademarks, which precede the Respondent’s registration”. The Complainant maintains that “there is no license, consent or other right by which the Respondent would have been entitled to register or use the [Domain Names]”. It also claims that its trademarks are well known and that there “is no doubt that the Respondent is aware that ACOMPLIA and ZIMULTI correspond to a medicinal product”. Therefore, it is said that the Respondent’s use does not satisfy the test for bona fide use.
5.6 The Complainant also makes reference to the Oki Data Americas Inc v ASD Inc, WIPO Case No. D2001-0903 and appears to be asserting that the Respondent’s use of the ACOMPLIA and ZIMULTI marks in the Domain Names does not satisfy the conditions for bona fide use laid down in this case.
5.7 Instead, the Complainant claims that each of “the Respondent’s websites can be considered a portal for the website of a third party from which the Respondent is paid a commission” and that in such cases the Respondent does not actually offer any “bona fide genuine goods or services”. In support of that proposition it cites a number of cases including Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, WIPO Case No. D2005-1287; Société des Hôtels Méridien v. Modern Limited Cayman Web Development, WIPO Case No. D2004-0321; Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099; and Lilly ICOS LLC v. Cybernet Marketing v. Antoine Tardifi, WIPO Case No. D2006-1123.
5.8 Further, it contends that even if the Respondent is directly selling the genuine Acomplia product (which is contested) “many Panels” have said that this would not confer rights. In this respect it cites a passage from The Stanley Works and Stanley Logistics Inc. v. Camp Creek, Co Inc., WIPO Case No. D2000-0113.
5.9 The Complainant states that the bad faith of the Respondent is “obvious” because of the following:
(i) the fact that the Respondent has no prior right, and no authorization has been given to it by the Complainant in relation to the ACOMPLIA and ZIMULTI trademarks; and
(ii) the Respondent’s supposed awareness that Acomplia or Zimulti is a “revolutionary drug against obesity”; and
(iii) the Respondent used the Domain Names to attract Internet users for commercial gain.
5.10 So far as the second point is concerned, the Complainant makes various statements in support of the contention that Acomplia is revolutionary and then goes on to assert:
“in the present case, there is no doubt that the Respondent knowing of the launch of a new product under the trademarks ACOMPLIA and ZIMULTI by the Complainant, registered the [Domain Names] in order to prevent the Complainant from adopting the trademark in a corresponding domain name. It is an opportunistic act, which seeks to disrupt the Complainant’s business.”
5.11 So far as its third point is concerned, it refers to the wording of paragraph 4(b)(iv) of the Policy. It asserts that:
“By using its websites under the [Domain Names] to sell Acomplia products or counterfeit products or placebo products and other competitors’ products related to the weight loss treatment, the Respondent is intentionally attempting for a commercial purpose to attract internet users to the Respondent’s websites, and creates a likelihood of confusion with the Complainant’s trademarks”.
It also maintains that the links on the Respondent’s website were not inserted “for free” and that the Respondent had a clear intention of commercial gain.
5.12 The Complainant then goes on to state:
“any internet user who will try to connect to the above mentioned websites will believe that the Acomplia medicine is available in all countries without any medical control, whereas, the Acomplia medicine (i) has not been yet launched in all countries as this medicine has not been granted with all the administrative market authorization required, (ii) and can only be obtained by medical prescription.
Therefore, the use of the [Domain Names], by redirecting internet users to other on-line pharmacies selling pharmaceuticals such as Acomplia without requiring proof of a physical examination by an authorized 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.”
5.13 It is claimed that previous WIPO panellists have stated that this can constitute evidence of bad faith and the Complainant in this respect cites Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.
5.14 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.5 The Panel accepts that the Complainant has relevant rights in the trademarks ACOMPLIA and ZIMULTI. Some of the trademark certificates provide by the Complainant suggest that it is not the Complainant but “Sanaofi-Synthelabo” or “Aventis Pharma S.A.” (i.e. the two companies that merged to create the Complainant) that owns these marks. The Panel suspects that in many of these cases the papers that have been supplied by the Complainant are simply out of date. But even if they are not, it does not matter. The Complainant, whether directly or indirectly, clearly controls each of the marks relied upon and in any event, at least one of the relevant ACOMPLIA marks (i.e. Community Trademark No. 3565678) is registered in the Complainant’s own name.
6.6 The Panel does not accept that the Domain Names are identical to the Complainant’s trademarks, but it does accept that they are “confusingly similar”. The <buyaccomplia.info> Domain Name can only be sensible understood as a combination of the word “buy” with a misspelling of the word “Acomplia”. These amendments and additions do not prevent the Domain Name from having the necessary degree of similarity with the ACOMPLIA mark for the purposes of the Policy.
6.7 Similarly, the <accompliazimulti.com> Domain Name can only be sensibly understood as a combination of “Zimulti” and a misspelling of the word “Acomplia”. Accordingly, the Domain Name is confusingly similar with both of the Complainant’s ACOMPLIA and ZIMULTI marks.
6.8 Therefore, the Panel concludes that the Complainant has made out paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.9 The Panel accepts the Complainant’s claims that the Respondent has not been authorised by the Complainant to use the “Acomplia” or “Zimulti” names. The Panel also accepts for the purposes of these proceedings that the Complainant is right in its assertion that the Respondent has chosen and is using the Domain Names for websites that operate as portals to the websites of third parties that purport to sell Acomplia products. Similarly, the Panel accepts that it is likely that the Respondent receives payment (either directly or indirectly) from the operators of those third party websites. However, whether this takes the form of a commission on sales achieved, click through payments based upon the number of Internet users funnelled to the third party website or otherwise is unknown.
6.10 The key question then is whether such usage of a domain name that incorporates a trademark provides rights or legitimate interests within the meaning of the Policy. The Panel notes that the Complainant asserts, in the context of its contentions on the issue of bad faith, that the products in question may be “counterfeit or placebo” products, although there is no evidence put forward in this respect. Therefore, the Panel assumes for the purposes of this question, that the products in question are genuine.
6.11 The Complainant refers to the decision in Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903. Oki Data was a case that addressed the issue of in what circumstances a genuine retailer of products bearing a trademark could use that trademark in a domain name. As paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions explains this has been an issue of some debate. Nevertheless, the majority view among panellists, for which Oki Data is cited as authority, is that if such use is ever to give rise to a right or legitimate interest then the use of the domain name must comply with a number of minimal requirements. These include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
6.12 It is questionable whether a respondent such as the Respondent in this case could claim Oki Data type “rights or legitimate interests”. It is one thing to use a trademark in a domain name to directly sell the goods in question. It is a somewhat different thing to use the trademark to redirect users to a number of different retailers that sell these products. However, the Panel accepts that it would make little sense to place a lesser burden on the operator of a mere portal site than upon a retailer of genuine products. Also this Panel notes that an Oki Data type analysis has been adopted before by other panels when faced by portal websites of this type (see, for example, Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099, Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123).
6.13 In this case it is clear the Respondent cannot satisfy the Oki Data requirements. First in the opinion of the Panel the websites do not sufficiently disclose the nature of the relationship that exists (or does not exist) with the website owners. The Panel accepts that in each case there is reference (to differing degrees) to the Complainant and that at the bottom of the page there are disclaimers that might be said to distinguish the site from the Complainant’s (i.e. the reference in one disclaimer to the fact that the website is “independent” and in the other a reference to the fact that the “official website” can be found elsewhere). However, in the opinion of the Panel these disclaimers are far from sufficient.
6.14 In particular, in the Panel’s view in order to adequately describe the nature of the relationship between the domain name and website owner and the trademark owner, it is necessary that the website fully and honestly discloses who is operating the website and what the purpose of the website is. In this case, the assertions to be found in one disclaimer that the website is an independent “news site” and in the other disclaimer that the website does not “promote” any prescription medicine, are at the very least highly misleading. It is clear beyond any reasonable doubt that the website operator’s real intention is to direct Internet users to online pharmacies with a view to purchasing Acomplia. Also there is a marked failure to disclose on the website the name of the entity or organisation that is operating the website in question.
6.15 Further, the Respondent does not offer the products itself but via third parties and although the Internet user is taken to a page on the third party online pharmacy websites that is primarily directed to the sale of Acomplia, those pages (as the Complainant’s evidence demonstrates) also include references to competing products.
6.16 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.17 There can be no doubt that the Respondent in this case registered the Domain Names in full knowledge of the Complainant’s use of the “Acomplia” and “Zimulti” names for its products. There is the fact that “Acomplia” and “Zimulti” are unusual names that (as far as the Panel is aware) exclusively refer to products of the Complainant, the extensive reputation that the Acomplia product had achieved worldwide prior to the date that the Domain Names were registered, and the fact that the website operating from the Domain Names refers directly to these products. Indeed, it would appear that the Respondent was not only aware that these names were used for the Complainant’s products but that these names constituted trademarks. In particular, there is the reference to this fact in the disclaimer to be found at the bottom of the website operating from the <accompliazimulti.com> Domain Name.
6.18 As the Panel has already stated under the heading of “Rights and Legitimate interests”, the Panel has also formed the view that there is little doubt that the Domain Names were registered with the intention of using them for portal websites of the sort that continue to operate from the Domain Names to this day.
6.19 Further, given the degree of similarity between the Domain Name and the Complainant’s trademarks (and in the absence of any argument or evidence to the contrary from the Respondent), the Panel is also of the view that the Domain Names were registered by the Respondent in the knowledge, hope and belief that Internet users would type the Domain Names into their Internet browsers with the intention of reaching a website that was either operated or authorised by the Complainant.
6.20 The Panel, therefore agrees with the Complainant, that the activities of the Respondent in this case fall within the scope of paragraph 4(b)(iv) of the Policy which states that the following shall be evidence of bad faith registration and use:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
6.21 There is one other factor in this case that points to a finding of bad faith registration and use. That is the failure on the part of the Respondent on the website to identify who it is. If the Respondent is engaged in a use of the Complainant’s trademarks that it believes to be legitimate, this immediately raises the question as to why the Respondent seems to be so coy about revealing (at least to Internet users using the website) who it is. The Complainant has not put any evidence before the Panel to the effect that the registration details provided by the Respondent in relation to the Domain Names are positively false or misleading. Nevertheless, not to include details as to who one is on a prima facie commercial website, is suspicious. Whilst by itself not sufficient to justify a finding of bad faith, it is a factor that weighs in the Complainant’s favour.
6.22 Accordingly, the Panel concludes that the Complainant has made out paragraph 4(a)(iii) of the Policy.
6.23 In coming to this conclusion the Panel (in common with its decision in Sanofi-aventis v. Rx World, Nils Bor, WIPO Case No. D2007-1773) has not taken notice of the assertions by the Complainant that those reaching the website will believe that “Acomplia medicine is available in all countries without any medical control” and that “the redirection of internet users to on-line pharmacies selling pharmaceuticals such as Acomplia without requiring proof of a physical examination by an authorized doctor, is potentially harmful to the health of internet users”.
6.24 It might be said that this is not much more than assertion on the part of the Complainant. However, there is a far more fundamental point here. The UDRP procedure is not a procedure that is intended generally to police alleged wrong doing on the Internet. It is instead primarily directed at the misuse of a name or mark in which a complainant has developed or acquired rights. It is not designed for, or well equipped to deal with, broader disputes. There may perhaps be cases where the activity operating form a domain name is so obviously unlawful that this is a factor that may be taken into account when assessing bad faith. However, this Panel suspects that in most cases it will be possible to reach a finding of bad faith without the need to rely upon such reasoning.
6.25 The issue of the sale of prescription medicines on the Internet and the extent to which individuals should be allowed to directly purchase such products is one that raises a range of policy issues that include the imposition of suitable measures for the protection of public heath, the protection of intellectual property rights, and drug company pricing practices. It is an area where national laws can vary. This Panel would suggest that this is a debate in which UDRP panels should be reluctant to become involved, even if that involvement is only peripheral.
6.26 This Panel notes that compliance with US Food and Drug Administration and other health authority laws and regulations seems to have been a factor that was taken into account in the decision in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794. However, when one reads this decision, it is clear that the panel was both prepared and able to come to a finding of bad faith quite independently of the issue of regulatory compliance. This was so in the Panel’s recent decision in Sanofi-aventis v. Rx World, Nils Bor, WIPO Case No. D2007-1773 and is also so with the case now before this Panel.
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 <accompliazimulti.com> and <buyaccomplia.info> be transferred to the Complainant.
Matthew S. Harris
Dated: February 22, 2008
1 The papers filed by the Complainant in this respect suggest that the “Acomplia” related domain names are registered in the name of Sanofi-Synthelabo but the documents would appear to be over three years old and may be out of date. No papers have been filed in relation to the “Zimulti” domain names but the Panel has no reason not to accept at face value the Complainant’s assertions in this respect.
2 No evidence has been filed by the Complainant in this respect but this is apparent from a WhoIs search conducted by the Panel.
3 This, of course, reverses the order of the words “accomplia” and “zimulti” that appear in the relevant Domain Name. Whether this reversal is intentional or inadvertent is not clear.