The Complainant is Sanofi-Aventis of Gentilly, France, internally represented.
The Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America / Matthew Stokes of Belize City, Belize.
The disputed domain name <acompliageneric.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 13, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2009, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 19, 2009. 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 October 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 10, 2009.
The Center appointed Gunnar Karnell as the sole panelist in this matter on November 13, 2009.
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 domain name <acompliageneric.com> was created on May 6, 2008.
The Complainant's trade mark ACOMPLIA was then already registered or applied for registration, nationally or internationally, in some 150 countries. Most registrations date back to 2004.
The company name Sanofi-Aventis was adopted on August 20, 2004, as a consequence of the merger of pharmaceutical companies, preserving the brand heritage of these companies. It now claims to be the number one pharmaceutical group in Europe and the number four in the world, with consolidated net sales of € 27,6 billion in 2008. The Complaint indicates current activity in more than 100 countries across 5 continents, employing, at the time of the Complaint, approximately 100.000 people world wide, having a sales force of 33 507 persons as well as 18 976 research staff with 65 projects under development, 27 of those being in advanced stages.
The Complainant is the owner of a considerable number of registered domain names world wide, containing the ACOMPLIA trade mark.
In 2004, ACOMPLIA became the name of a medicine (active substance: rimonabant). During 2005-2006 several scientific publications related to the Acomplia product were issued, notably on the Internet and market authorisation for Europe was acquired in June 2006. Having first been introduced on the UK market in October 2006, the product was commercialised in 18 EU countries. However, on October 23, 2008, since already some 700.000 patients had until then been treated with the medicine world wide, the Complainant, following a recommendation of the European Medicines Agency (EMEA) to the European Commission about the temporary suspension of the marketing authorisation of ACOMPLIA (rimonabant) for the approved indication of overweight and obese patients, announced that it had decided to discontinue all clinical trials with rimonabant.
The Complainant has requested that the domain name <acompliageneric.com> be cancelled.
Under the provisions of paragraph 4(a) of the Policy the burden of proof for approval to the request is upon the Complainant to show that each of the following three elements are present:
(i) the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) the Respondent's domain name has been registered and is being used in bad faith.
The numbering 1 – 3 in the following summary of the Complainant's contentions as well as the letter notation A – C below under “6. Discussion and Findings” relate respectively to the elements (i) – (iii).
The great impact of the product Acomplia in the medical arena – and considering the fact that it had not been launched world wide – has had as a consequence that cybersquatters have registered as a domain name the word “Acomplia” in various combinations so as to sell without authorisation the original product or counterfeit or placebo products, e.g. to Internet users, without any medical advice or control, under the mistaken conception that they deal with the Complainant.
To protect its interests in the trade mark ACOMPLIA, the Complainant has raised complaints before WIPO Administrative Panels in almost 70 cases, about some 210 variations of domain names that have included ACOMPLIA.
1) The domain name <acompliageneric.com> is confusingly similar to the trade mark ACOMPLIA in which the Complainant has rights.
The mere addition of the descriptive word “generic” to the trade mark is insufficient to avoid confusing similarity, as has already been found in other WIPO panel decisions (e.g. about <generic-accomplia .com> and <generic-acomplia.net>). Persons accessing the domain name will think that it is connected to the Complainant. The “.com” has no distinguishing capacity.
2) The Respondent has no right or legitimate interest in respect of the domain name <acompliageneric.com>.
The Complainant's rights in the ACOMPLIA trade mark precede in time the Respondent's registration of its domain name. The trade mark, registered inter al. in the United States of America, where the Respondent is located, is well known throughout the world, notably by world wide communication over the Internet. There is no licence, consent or other possible foundation of a right by which the Respondent would be entitled to register or use the domain name. There can be no doubt that the Respondent knows that the trade mark corresponds to a medical product, taken into account the content of its website.
The Respondent does not use the domain name in connection with a bona fide offering of goods or services. Its website is merely a portal for the website of a third party from which the Respondent will be paid a commission. There, information about Acomplia products is provided, leading to several pharmacies, where original, counterfeit or placebo products are marketed. It should be noted that selling of the genuine product is now prohibited in all countries. The on-line pharmacy selling Acomplia products on the website is also selling competitive “weight loss treatment”. The Respondent has registered its domain name with the intention to divert consumers and to prevent the Complainant from reflecting its trade mark in a corresponding domain name.
3) The domain name <acompliageneric.com> has been registered and is being used in bad faith.
The Respondent, having no prior right and no authorisation to use the Complainant's trade mark has undoubtedly known about the launch of the Complainant's Acomplia product, so as to register the domain name in order to prevent the Complainant from adopting the trade mark in a corresponding domain name. The registration was an opportunistic act, seeking to disrupt the Complainant's business. This is evidenced by the fact that the domain name links to several on-line pharmacies providing information on and offering ACOMPLIA marked competing products. The Respondent is intentionally attempting for commercial purpose to attract Internet users to its website, creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on the website. Also, Internet users connecting to the website which offers the products will believe that Acomplia medicine is available in all countries without any medical control, whereas it could only be obtained by medical prescription. Furthermore, it is presently not being commercialised. Redirecting Internet users to buy Acomplia medicine without examination of an authorised doctor is potentially harmful to the health of the users, purchasing under the mistaken impression that they are dealing with the Complainant.
The Respondent did not reply to the Complainant's contentions.
The factual foundation of the Complainant's contentions, as presented in great detail by the Complainant, while supporting its claim by written evidence, entitles the Panel to deal summarily with the case.
For reasons given by the Complainant, the disputed domain name is confusingly similar to the Complainant's registered and widely known trade mark.
The Complainant has made evident that it has not licensed or otherwise authorised the Respondent to use its trade mark. Also, the Respondent does not appear to be commonly known by the domain name and it is evidently not making a legitimate noncommercial or fair use of it.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there has been no rebuttal from the Respondent. There is nothing in the case file that gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the domain name.
The Panel concludes that the Respondent has no rights and no legitimate interests in the disputed domain name.
Given the widely established market position of the Complainant and the Respondent's use of the domain name, it is beyond belief that the Respondent was unaware of the Complainant and its trade mark when registering the domain name.
The Complainant has provided evidence that the Respondent has knowingly acted so as to harm the Complainant's business, for its own commercial gain, by use of the disputed domain name to direct the public to sources for acquisition of medicines competing with the Complainant's Acomplia product. The public is then engaged by the confusing similarity of the domain name to the trade mark ACOMPLIA, and thus taken advantage of by the Respondent. The use of the domain name will make believe that there is an entitling connection to the Complainant, whereas in fact there is none. The Respondent's use of the domain name opens access to a market shunned by the Complainant, for which its Acomplia product is no longer commercialised. The Respondent contributes wilfully to expose the public to risks that may easily appear attributable to marketing endeavours of the Complainant and which tarnish its trade mark.
Based on the evidence in the case file, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <acompliageneric.com> be cancelled.
Dated: November 27, 2009