The Complainant is Sanofi-Aventis of Gentilly of Cedex, France, represented internally (the “Complainant”).
The Respondent is Aleksandr Ivanov of Voronezh, Russian Federation (the “Respondent”).
The disputed domain name <buyacomplia.info> is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2009. On October 21, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2009, 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” 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 November 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 23, 2009.
The Center appointed Christopher Kuner as the sole Panelist in this matter on December 4, 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines. The Panel has also not found it necessary to request any further information from the parties. The Panel is of the opinion that the Complainant is in compliance with the relevant formal requirements, and that Respondent was properly notified in accordance with the Rules, paragraph 2(a).
The proceedings have been conducted in English.
The Complainant Sanofi-Aventis is a multinational pharmaceutical company present in more than 100 countries across five continents.
In 2004, Sanofi-Aventis announced the results of a new product called “Acomplia”, the purpose of which is to treat obesity and smoking by using a substance called Rimonabant. On February 16, 2004, studies accomplished on the “Acomplia” product were presented at an information meeting, during which Acomplia was described as “likely to become a cornerstone in the management of patients with cardiovascular risk factors” (Annex 4 to the Complaint). These results were later presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004 (Annex 4 to the Complaint).
The “Acomplia” product was granted the European Market Authorization in June 2006, and the product was commercialized in Europe shortly afterwards. However, on October 23, 2008, Sanofi-Aventis announced its decision to comply with the European Medicines Agency (EMEA) recommendation to temporarily suspend the marketing authorization of Acomplia in obese and overweight patients (Annex 6A to the Complaint). On November 5, 2008, Sanofi-Aventis announced that it had decided to discontinue all clinical trials with Rimonabant (Annex 6A to the Complaint).
The Complainant claims to be the owner of trademark registrations consisting of the word ACOMPLIA. It has filed trademark applications for ACOMPLIA in more than 100 countries, including the United States and the Russian Federation. The Complainant has attached a list of worldwide trademark applications or registrations for the ACOMPLIA trademark in Annex 7 to the Complaint. The Complainant has provided in Annex 8 to the Complaint copies of certain of the Complainant's worldwide registration certificates and printouts from a trademark database for the trademarks ACOMPLIA, including:
- Registration for ACOMPLIA as a community trademark, No. of registration 003565678 of July 18, 2005
- International registration with the Madrid Agreement for ACOMPLIA, No. of registration 825821 of May 7, 2004,
- Registration in France for ACOMPLIA, No. of registration 033260481 of May 7, 2004,
- Registration in Japan for ACOMPLIA, No. of registration 4811294 of October 22, 2004,
- Registration in Mexico for ACOMPLIA, No. of registration 837787 of January 19, 2006,
- African Intellectual Property Organization registration for ACOMPLIA, No. of registration 49523 of July 14, 2004,
- Registration in the United States for ACOMPLIA, No. of registration 2941824 of April 19, 2005.
The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example “www.acomplia.info”, “www.acomplia.com”, “www.acomplia.fr”, “www.acomplia.ru”, “www.acomplia.us”. The Complainant has attached an overview of WhoIs search results for a selection of “Acomplia” domain names in Annex 9 to the Complaint.
According to the Registrar's verification response to the Center, dated October 21, 2009, the Respondent registered the domain name <buyacomplia.info> on June 26, 2009. The administrative and technical contacts are registered by the Respondent.
The Panel has itself gone to the web site <buyacomplia.info>, which takes the user to an active web site presented as a kind of online pharmacy where information about the ACOMPLIA product and other pharmaceutical products such as Viagra, Cialis, Levitra, Xenical, etc. is provided. The ACOMPLIA product is also offered for sale on this web site.
No specific information has been provided about the Respondent's business activity.
The Complainant contends that it is the owner of the trademark ACOMPLIA and of many domain names consisting of the trademark ACOMPLIA. Due to the large number of domain name registrations including the trademark ACOMPLIA that are infringing the Complainant's prior rights, the Complainant has filed many complaints before WIPO in order to obtain the transfer of the domain names. According to the Center's web site, as of the date of December 15, 2009, ninety-three (93) cases have been brought before the Center with respect to the ACOMPLIA trademark; among these, one was listed as “active” (the present case), in twenty-four (24) cases, cancellation of the domain names had been ordered, in fifty (50) the domain names had been transferred, and in eighteen (18) the proceedings had been terminated.
The Complainant's request for relief is based on the following arguments:
The Respondent's domain name consists of the use of the Complainant's trademark in addition to the generic or descriptive word “buy” and the gTLD “.info”.
In previous decisions, panelists have considered that the addition of generic or descriptive words to trademarks was not sufficient to escape the finding of similarity and did not change the overall impression of the designation as being connected to the complainant (see Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661, Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045, Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511, PepsiCo Inc. v. PEPSI, SRL(a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS, WIPO Case No. D2003-0696, PepsiCo Inc. v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).
In other cases involving the Complainant's trademark ACOMPLIA (see Sanofi-aventis v. Iqbal Hans, WIPO Case No. D2007-0538, Sanofi-aventis v. VSA - Andrew King, WIPO Case No. D2007-0061), panels have considered that the domain names <buy-acomplia-online.com> and <buy-acomplia-rimonabant.com> were confusingly similar to the complainant's trademark ACOMPLIA.
The mere addition of the generic word “buy” to a registered trademark has consistently been deemed insufficient to avoid confusing similarity under previous UDRP panels' decisions (see Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043).
Furthermore, the addition of the gTLD “.info” which is required for registration of a domain name 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.
Consequently, because of the identity between the trademark ACOMPLIA and the disputed domain name, there is a high risk of confusion, since a consumer may think that the disputed domain name refers directly to the Complainant's product.
The Complainant states that it had prior rights in the ACOMPLIA trademark, preceding the Respondent's registration of the disputed domain name. The Complainant's trademark ACOMPLIA is present in 100 countries, including the Russian Federation, where the Respondent is located.
The Respondent was not granted any license, consent or any other right by which the Respondent would have been entitled to register or use the domain name with the Complainant's trademark ACOMPLIA with the addition of the generic or descriptive word “buy” and the gTLD “info”. Furthermore, the Respondent's use does not satisfy the test for bona fide use established in prior UDRP decisions (see OKI Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903).
The disputed domain name leads to an active web site where information about “Acomplia” products is provided, and to several on-line pharmacies where “Acomplia” products or counterfeit or placebo products and/or other competitors' products are offered for sale. Thus, the Respondent's web site is merely a portal for the web site of a third party from which the Respondent is paid a commission. In such cases, the respondent does not actually offer any bona fide genuine goods or services. In such circumstances, many previous UDRP panels have considered that a respondent did not have any rights or legitimate interests in respect of a complainant's trademark (see 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, Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123).
Furthermore, even if the Respondent was directly selling the genuine “Acomplia” product (which is contested by the Complainant and now prohibited in all countries), many previous UDRP panels have considered that it was not sufficient to give the respondent a right or a legitimate interest to use the complainant's trademark in a domain name (see Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).
Finally, the Respondent's web site does not disclaim any relationship with the trademark owner. 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 bad faith of the Respondent derives from the following elements:
The Respondent had no prior right and no authorization to use the ACOMPLIA trademark in any form.
Furthermore, the Respondent knew that the Complainant was marketing a new drug against obesity on several territories under the name “Acomplia” and registered the disputed domain name on June 26, 2009. Different UDRP panels have considered that the fact of registering a domain name after a complainant's product launch leads to an inference of bad faith (see Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011, America Online Inc v. Chan Chunkwong, WIPO Case No. D2001-1043, Guardant Inc. v. youngcho kim, WIPO Case No. D2001-0043).
The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party, in some circumstances, can be considered as disrupting the business of the right owner.
The Respondent uses the disputed domain name to attract Internet users for commercial gains, which according to paragraph 4(b)(iv) of the Policy is one of the typical situations evidencing bad faith. By using its web site at the domain name <buyacomplia.info> to intentionally link its domain name with several online pharmacies providing information on and selling “Acomplia” products or counterfeit or placebo products and other competitors' products related to weight loss treatment, the Respondent is intentionally attempting to attract Internet users to the Respondent's web site for a commercial purpose, and creates a likelihood of confusion with the Complainant's trademark.
Any Internet user who connects to this web site will believe that the Acomplia medicine is available in all countries without any medical control, whereas (i) the Acomplia medicine could not be obtained without a medical prescription, and (ii) Acomplia is no longer commercialized.
Based on this behaviour, the disputed domain name is used in bad faith and the Respondent intentionally attempts to attract Internet users to its web site for commercial gains, by creating a likelihood of confusion with the Complainant's trademark.
For the above reasons, the Complainant has requested the Panel to cancel the domain name <buyacomplia.info>.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires that three elements be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration. These elements are as follows:
i. respondent's “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights,” and
ii. respondent has “no rights or legitimate interests in respect of the domain name,” and
iii. respondent's “domain name has been registered and is being used in bad faith.”
Each of these three elements must be proven by the Complainant to obtain relief.
Paragraph 4(b) of the Policy provides non-exclusive criteria for evidencing bad faith registration and use of a domain name.
Paragraph 4(c) of the Policy provides non-exclusive criteria for demonstrating a registrant's right or legitimate interests in a domain name.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel shall proceed to a decision on the Complaint (Rules, paragraph 14(a)), and the Panel may draw such inferences from the Respondent's default as the Panel finds appropriate (Rules, paragraph 14(a)).
The Complainant has provided substantive evidence that it is the legitimate holder of the ACOMPLIA trademark which is in force. The trademark ACOMPLIA has been registered in more than 100 countries. In particular, the Complainant was granted an international registration under the Madrid Agreement for the ACOMPLIA trademark in 2004, ACOMPLIA registration as a community trademark in 2005 and ACOMPLIA trademark registration in the United States in 2005. The Panel determines that the Complainants' rights in the trademark arose prior to the Respondent's registration on June 26, 2009.
The disputed domain name <buyacomplia.info> is identical with the Complainant's trademark, except that (1) the domain name is comprised of the Complainant's trademark ACOMPLIA in conjunction with the generic or descriptive word “buy”, and (2) the domain name adds the generic top level domain name “.info”. Neither the addition “buy”, nor the necessary inclusion of the gTLD “.info” are likely to avoid the impression of confusing similarity between both identifiers. See Hoffmann-La Roche Inc. v. George Thomas, WIPO Case No. D2008-1989 (“The addition of the generic terms “buy,” “cheap,” and “online,” and the “.net” top level domain does not defeat confusing similarity”).
The above was confirmed in other UDRP decisions involving the Complainant's trademark ACOMPLIA. See Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660 (“There will be words such as “buy”, “shop” cheap” which by their very nature add nothing to a trade mark, but there are words too which may in one context lend distinctiveness and shape a new brand, but be purely trivial when put alongside a different trade mark”) and see Sanofi-aventis v. Tomas Sullivan, WIPO Case No. D2009-0195 (“In the disputed domain name [<cheapacompliaonline.com>], the descriptive and generic terms “cheap” and “online” are added to the ACOMPLIA mark. Neither of these additions, nor the necessary inclusion of the gTLD “.com”, is apt to avoid the impression of confusing similarity between both identifiers.”).
Furthermore as expressed by the panel in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629: “Indeed, the addition of a promotional word such as “buy” tends only to reinforce the (false) association between Complainant's mark and the Domain Name”.
The addition of the generic top-level domain name (gTLD) “.info” is also without legal significance from the standpoint of comparing <buyacomplia.info> to ACOMPLIA since the use of a gTLD is required of all domain name registrants. “.info” is one of only several such gTLDs, and “.info” does not serve to identify a specific business as a source of goods or services.
Therefore, the Panel decides that the disputed domain name <buyacomplia.info> is confusingly similar to the trademark ACOMPLIA in the sense of paragraph 4(a)(i) of the Policy.
The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4 (a)(ii):
i. before any notice to you of the dispute, your use of, or demonstrate 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 (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 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.”
Taken together, the Complainant's contentions and supporting evidence are sufficient to make out a prima facie case that the Respondent lacks any rights or legitimate interests in respect of the disputed domain name. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name (see paragraphs 2.1 and 4.6. of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” available at “www.wipo.int/amc/en/domains/search/overview/index.html”).
The Respondent has not presented the Panel with any comments or evidence. The Respondent has thus failed to establish rights or legitimate interests in the disputed domain name. The Panel is unaware of any evidence showing the Respondent's use of the disputed domain name in connection with any bona fide offering of goods or services. There is no evidence that the Respondent is commonly known by the disputed domain name or by the name “Acomplia”. No evidence has been forwarded to the Panel establishing that the Respondent is making a legitimate noncommercial or fair use of the domain name.
Thus, the Complainant has established the second element necessary to prevail on their claim that the Respondent has engaged in abusive domain name registration. Accordingly, the Panel considers that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4 (a)(iii) of the Policy sets forth two conjunctive requirements: it requires that the domain name has been registered and used in bad faith. Bad faith registration alone does not suffice to obtain relief under the Policy (see Telstra Corporation Limited v. Nuclear Marhmallows, WIPO Case No. D2000-0003). The Panel finds that the disputed domain name <buyacomplia.info> has both been registered and used in bad faith.
The registration was completed in bad faith because the Respondent would not have registered the disputed domain name, had it not been aware that “Acomplia” was a revolutionary drug used against obesity. Other UDRP panels have taken similar positions in analogous cases (see Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397, where the panel concluded that the domain name had been registered in bad faith because the complainant's trademark was well-known and it was very unlikely, if not nearly impossible, that the respondent was not aware that it was infringing the complainant's trademark rights).
The Panel also finds that the disputed domain name was used in bad faith. Paragraph 4(b)(iv) of the Policy states that a domain name is used in bad faith if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusions with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Panel finds that the Complainant has provided substantive evidence that the Respondent has been using the disputed domain name in bad faith. The Respondent uses the disputed domain name to attract Internet users to a web site where “Acomplia” products or counterfeit products are presented and are offered for sale. The use of the domain name <buyacomplia.info> in association with the product description, image and mark “Acomplia” clearly creates a likelihood of confusion with the Complainant's mark as to the sponsorship, affiliation, or endorsement of this web site. In addition, Internet users are meant to believe that the Complainant sells the “Acomplia” product on this web site, thus indicating that the Respondent is intentionally attempting to attract Internet users to its web site in order to obtain a commercial gain.
In this regard, the statements of the panel in Sanofi-aventis v. Mircea Timbusan, WIPO Case No. D2007-0981 are relevant: “The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to associate himself and his business with that of the Complainant and to profit from the reputation of the Complainant's trade mark and thereby to attract Internet users to his website.”
Thus, this use of the domain name falls squarely within the description of Policy paragraph 4(b)(iv).
For all these reasons, the Panel decides that the Respondent's bad faith has been established in the sense of paragraph 4 (a)(iii) of the Policy.
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 <buyacomplia.info> be cancelled.
Dated: December 15, 2009