The Complainant is Sanofi-aventis of Gentilly Cedex, France.
The Respondent is Igor Peklov of Tel-Aviv, Israel.
The disputed domain name <acompliabuyonline.com> was registered with EstDomains, Inc. at the time of filing of the Complaint. The disputed domain name is presently registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com due to the de-accreditation of EstDomains, Inc. by ICANN on November 24, 2008.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2008. On September 18, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the disputed domain name. On September 19, 2008, EstDomains, 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 Complainant filed an amendment to the Complaint on September 22, 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” or “UDRP”), 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 September 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2008.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 13, 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.
The Complainant is a multinational pharmaceutical company which is present in more than 100 countries across 5 continents, with consolidated net sales of € 28 billion in 2007 in the core business, and a strong direct presence on all major world markets.
The Complainant owns a number of trademark registrations and applications protecting the mark ACOMPLIA in numerous countries worldwide, inter alia, Community trademark No. 003565678 ACOMPLIA in class 05 with priority of December 2, 2003 and international registration No. 825821 ACOMPLIA in class 05, registered on May 7, 2004.
The mark ACOMPLIA designates a pharmaceutical product, which is composed of the active substance called Rimonabant, indicating 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.
The Complainant submitted screen shots of a website under the disputed domain name which offers for sale ACOMPLIA products or counterfeit products or placebo products related to the treatment of obesity.
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied and requests that the disputed domain name be cancelled, not transferred to it.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the words “buy” and “online“ are descriptive and therefore do not eliminate the similarity between the Complainant's trademark ACOMPLIA and the disputed domain name.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. The Complainant states that the Respondent has no authorization or license to use the ACOMPLIA trademark in the disputed domain name and that the use of the disputed domain name for a website offering counterfeit and placebo products can not to be considered as a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i), nor a legitimate non-commercial or fair use pursuant to Policy paragraph 4(c)(iii).
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that
- the Respondent has no prior right in respect of the trademark ACOMPLIA;
- no authorization to use this trademark in any form was granted to the Respondent;
- there can be no doubt that the Respondent knew Complainant's anti obesity drug sold under the trademark ACOMPLIA at the time of the registration of the disputed domain name as wholly incorporated the Complainant's distinctive trademark ACOMPLIA and was registered after the Complainant launched its anti-obesity drug;
- Respondent is using the disputed domain name for a website offering for sale Complainant's product ACOMPLIA as well as counterfeit products or placebo products related to the treatment of obesity.
The Respondent did not reply to the Complainant's contentions.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚ WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the Complainant's distinctive trademark ACOMPLIA, used in connection with drugs. The fact that the words “buy” and “online” are added to the Complainant's trademark does not eliminate the similarity between the Complainant's trademark and the disputed domain name, as “buy online” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also well established that the specific top level of a domain name such as “.com“, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds that the domain name <acompliabuyonline.com> is confusingly similar to the trademark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show e.g., one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant's trademark ACOMPLIA. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant‘s distinctive trademark.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The Respondent is using a domain name which incorporates Complainant's trademark ACOMPLIA in its entirety for a website offering for sale various drugs including counterfeit products and placebo products related to the treatment of obesity and thus capitalizes on Complainant's anti-obesity drug ACOMPLIA.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
The Panel is also convinced that the Respondent registered and used the disputed domain name in bad faith.
The Complainant's distinctive trademark ACOMPLIA is used for an anti-obesity drug which is widely known. Respondent is using a domain name which incorporates Complainant's trademark in its entirety for a website offering for sale counterfeit products and placebo products also related to the treatment of obesity. It is therefore inconceivable that the Respondent registered the disputed domain name unaware of the Complainant's rights in its ACOMPLIA marks.
The use of the disputed domain name for an online pharmacy site on which the Respondent sells a large variety of drugs including counterfeit products and placebo products clearly indicates that Respondent's primary intent was to redirect Internet users to his website and thus capitalizing on the goodwill of Complainant's trademark.
This qualifies as bad faith under paragraph 4(b)(iv) in that Respondent's use of the disputed domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Moreover, Respondent's default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the disputed domain name, it should have asserted them.
Accordingly, the Panel concludes that Respondent registered and used the disputed domain name in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
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 <acompliabuyonline.com> be cancelled.
Dated: November 27, 2008