WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. BAZ
Case No. D2007-1940
1. The Parties
The Complainant is Sanofi-aventis, of Gentilly Cedex, France, represented by Armfelt & Associés Selarl, France.
The Respondent is BAZ, of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyacompliazimulti.com> is registered with GoDaddy.com, Inc.
3. Procedural History
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 GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On December 31, 2007, 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. In response to a notification by the Center concerning the registrant information, the Complainant filed an amendment to the Complaint on January 7, 2008. 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 January 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on February 6, 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 Complainant is one of the largest manufacturers of pharmaceutical products in the world. Amongst its products are “Acomplia” a weight-loss product and “Zimulti”, a product designed to prevent weight gain in patients who quit smoking.
The Complainant has a large number of worldwide trademark registrations for both ACOMPLIA and ZIMULTI, evidence of which has been submitted by the Complainant and annexed to the Complaint. The ACOMPLIA trademark was registered, amongst other jurisdictions, in the United States of America, where the Respondent is domiciled, on April 19, 2005 and with the Office for the Harmonisation for the Internal Market on April 26, 2005. The ZIMULTI trademark was registered, amongst other jurisdictions, with the Office for the Harmonisation for the Internal Market on March 9, 2005 and in the United States of America on August 23, 2005.
The Complainant has also a large number of domain name registrations that reflect the two trademarks respectively, including <acomplia.com>, <acomplia.fr>, <acomplia.us> <zimulti.com>, <zimulti.us> and <zimulti.fr>. Those domain names resolve to websites containing official information on the two products in question.
The Complainant announced the early results of the clinical studies of Acomplia on February 16, 2004; the results of the clinical trials were announced on March 9, 2004 and the European Market Authorization for the product was granted June 19, 2006.
The Respondent registered the disputed domain name on May 14, 2007.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name <buyacompliazimulti.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of Paragraph 4(a) of the Policy, the domain name is confusingly similar to the Complainant’s registered trademarks ACOMPLIA and ZIMULTI, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. Therefore, the Complainant maintains that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered ACOMPLIA and ZIMULTI trademarks to which reference has already been made. It then says that the domain name <buyacompliazimulti.com> is confusingly similar to the ACOMPLIA and ZIMULTI marks as it incorporates the trademarks without any change to their spelling and as the addition of the generic word “buy” is insufficient to avoid the confusing similarity otherwise apparent. Moreover, the Complainant contends, persons observing the domain name would be bound to think that it was connected in some way with the Complainant and its trademark.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show an obvious intention by the Respondent to trade on the Complainant’s ACOMPLIA and ZIMULTI trademarks by using the domain name to operate a website which misleads consumers into believing that they have arrived at one of the Complainant’s websites. This is done, it is contended, by including on the sites information about Acomplia and links to several online pharmacies where Acomplia products, counterfeit Acomplia products, placebos, other competing products and weight loss information are offered for sale.
Nor, it is argued, can the Respondent establish that it has a right or legitimate interest in the domain name by bringing himself within any of the provisions of Paragraph 4(c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent’s deceptive conduct shows bad faith registration and use and in particular comes within Paragraph 4(b)(iv) of the Policy, amongst other provisions; it must be inferred from all of the facts and circumstances that the Respondent knew of the Complainant’s well known products Acomplia and Zimulti and registered and used the domain name with the intention of diverting customers looking for Acomplia and for the Complainant’s official websites to the rival websites of its competitors who are selling competing and counterfeit products and with the further intention of doing so for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence, paragraph 14.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:
(i). The domain names are 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 domain names; and
(iii). The domain names have been registered and are being used in bad faith.
It is to be noted that Paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name <buyacompliazimulti.com> is confusingly similar to the Complainant’s trademarks ACOMPLIA and ZIMULTI. That is so for the following reasons.
The domain name is similar to the trademarks as it includes the entirety of each of them together with the addition of the generic word “buy”, which does not detract from the overall impression given to the reader that the domain name is principally reproducing the two trademarks. Furthermore, the domain name means that it is dealing with buying the two drugs Acomplia and Zimulti and carries the necessary implication that the two products being promoted are the products of that name made by the Complainant.
In this regard, it has been consistently held by UDRP panels that the addition to a trademark of generic words such as “buy” does not negate or detract from what would otherwise be a finding of confusing similarity. It is necessary here, in support of that proposition, to cite only F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049, which applied this principle specifically to the addition of the words ‘buy’ and ‘cheap’ and the recent decision in Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372 which held that <buyambien.info> was confusingly similar to the trademark AMBIEN.
Such a close correlation between the domain name and the trademarks and such an obvious attempt to invoke the name of two widely known trademarks and products in the one domain name can only be described as a confusing similarity within the meaning of the Policy.
It is also now well established that the confusing similarity thus created is not negated by the presence in the domain name of suffixes such as the gTLD suffix ‘. com’.
As the Complainant clearly has rights in the trademarks as its owner, the Panel finds that the domain name is confusingly similar to the trademarks and that the Complainant has accordingly established the first of the three elements that it must prove.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
It is also well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
By virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Respondent in the present case was given notice that it had until January 28, 2008 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name <buyacompliazimulti.com>. That prima facie case is made out from the following considerations.
The Respondent chose for its domain name, without the Complainants’ authorization, two of the Complainant’s widely known trademarks ACOMPLIA and ZIMULTI and added to them merely the word “buy”, which suggests that the domain name provides the means of buying legitimate products with the widely known names Acomplia and Zimulti. The Respondent then linked the domain name to a website containing links to businesses not only selling Acomplia but also providing services in direct competition to the Complainant and its product Acomplia and in some cases offering the counterfeit goods and placebos.
It has been held many times, as it was put in Baudville, In. v. Henry Chan, WIPO Case No. D2004-0059, that “…no rights or legitimate interests derive from this type of use of another’s trademark”.
Nor, as the Complainant contends, was there any licencing or other relationship or arrangement between the Complainant and the Respondent under which it could be said that the Complainant gave permission to the Respondent to use its trademarks.
These facts give rise to the prima facie case made out by the Complainant. The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on the site or location.
The Panel finds that the Complainant has shown that the Respondent registered and used the domain name in bad faith and that in particular the Respondent’s conduct puts the case squarely within paragraph 4(b)(iv) of the Policy.
The reasons why the Complainant’s case has been made out are as follows.
First, the Respondent has undoubtedly been attempting to attract Internet users to its website within the meaning of paragraph 4(b)(iv), both with respect to the registration of the domain name and its use. Looking at the screenshot of the website to which the domain name has resolved, which appears as it was on October 24, 2007 in Annex 12 to the Complaint, it is impossible to accept that this was done for any reason other than commercial gain in one form or another.
Secondly, by using as the principal part of its domain name two of the Complainant’s widely known trademarks, ACOMPLIA and ZIMULTI, the Respondent created the likelihood of confusion with those trademarks.
Thirdly, the confusion likely to be created is confusion with the ACOMPLIA and ZIMULTI marks about the affiliation of the pharmaceutical products being promoted on the Respondent’s website, specifically named as Acomplia and Zimulti and as to whether they are the Complainant’s products or endorsed by it or are in some way associated with them.
This is so particularly as the website purports to provide information on Acomplia products and leads to websites that offer to sell products under the name Acomplia and other products relating to weight loss treatment, a condition widely associated with Acomplia and Zimulti.
Moreover, the unequivocal evidence is that at the time the domain name was
registered, on May 14, 2007, the names of the two drugs, their effect and their significance in the treatment of weight related conditions, were well and truly known among the public.
Clearly, in those circumstances, consumers who are using the disputed domain name would have arrived at this website because they were seeking specific product names that they knew existed, namely Acomplia and Zimulti. When the website promotes goods described as “Acomplia”, as it does and when it deals with weight loss treatment, as it also does, consumers are entitled to believe that the products are genuine Acomplia products, the sale of which is lawful and approved by the manufacturer, when in fact they are not and the goods at least in some cases are counterfeit and placebo products rather than the genuine article.
It is also important to state, as the Complainant submits, that there is an additional element of bad faith both with respect to registering the domain name and using it to sell the products in question. That additional element is that, as the Internet is an international means of communication, the inference from promoting the products online under the name Acomplia is that they may lawfully be sold in any country and without examination and prescription by a doctor, neither of which is true. Such conduct has rightly been noted in decisions such as Lilly ICOS LLC v. Trdor Burden, WIPO Case No. D2004-0794 as constituting bad faith because of the public health consequences which have clearly been ignored by the Respondent in registering and using the domain name.
The Panel finds that these circumstances create confusion with the Complainant’s trademarks as to the sponsorship, affiliation and endorsement of the Respondent’s site and the products and services on it and that the Respondent must be taken to have intended this confusion and to have done so for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100, (Complainant has alleged and the Panelist finds that Respondent’s use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc .v. Cyber Network LLP, WIPO Case No. D2000-0977.); MathForum.co v. Weiguang Huang, WIPO Case No. D2000-0743 and IndyMac Bank v. F.S.B. v. Jim Kato, NAF Case No. FA 190366.
Accordingly, the Complainant has made out the third of the three elements that it must establish.
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 <buyacompliazimulti.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: February 20, 2008