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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Tania Malik

Case No. D2006-0932

 

1. The Parties

The Complainant is Sanofi-aventis, of Gentilly, France, represented by Bird &Bird, Paris, France.

The Respondent is Tania Malik, of Raleigh, North Carolina, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <about-acomplia.com> (hereinafter “Domain Name”) is registered with Melbourne IT Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2006. On July 24, 2006, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name at issue. On July 25, 2006, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

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 July 26, 2006.

In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2006. Upon subsequent formal requests filed by the Complainant the administrative proceedings was suspended until November 17, 2006, and then reinstated.

The Center appointed Anna Carabelli as the sole panelist in this matter on December 27, 2006, indicating that absent exceptional circumstances the decision would be due by January 10, 2007. 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 independently determined and agrees with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant, Sanofi-aventis was formerly Sanofi-Synthelabo until the merger by the latter with the company Aventis which took place in the year 2004, as alleged in the introduction of the Complaint and confirmed by press releases that can be found in the “press room” section of the Complainant’s site, accessed by the Panel.

The Complainant submitted evidence of the following registrations of the trademark ACOMPLIA (Annex 6):

A) French trademark registrations:

T.M./S.M.	Reg. No.	Issuance Date
ACOMPLIA	033260481	December 3, 2003

B) African trademark registration:

T.M./S.M.	Reg. No.	Issuance Date
ACOMPLIA	49523	March 10, 2004

C) International trademark registration:

T.M./S.M.	Reg. No.	Issuance Date
ACOMPLIA	825821	May 7, 2004

D) Mexican trademark registration:

T.M./S.M.	Reg. No.	Issuance Date
ACOMPLIA	837787	June 17, 2004

E) Japanese trademark registration:

T.M./S.M.	Reg. No.	Issuance Date
ACOMPLIA	4811294	October 22, 2004

F) U.S. trademark registration:

T.M./S.M.	Reg. No.	Issuance Date
ACOMPLIA	2941824	April 19, 2005
ACOMPLIA	854264	June 3, 2005

The Complainant submitted evidence of registration of the following domain names (Annex 7):

<acomplia.us>

<acomplia.fr>

<acomplia.net>

<acomplia.org>

At the beginning of 2004 through the Internet and press releases (Annexes 3,4 and 9), the Complainant disseminated information about the results of studies for the treatment of obesity with new Acomplia product and its launching in 2006.

The Respondent registered the domain name <about-acomplia.com> on January 30, 2006.

The Domain Name had been used by the Respondent as a referring portal site which through key words such as “Finance”, “ Travel”, “Health”, “Women Health”, “Diet” and “Weight Loss”, among others, lead to third parties’ websites (Annex 13).

The Complainant’s lawyer sent by email a cease and desist letter to the Respondent on May 26, 2006, requesting the transfer of the Domain Name (Annex 12).

Subsequently, the Domain Name was used to lead to a webpage on which the following sentence appeared alone: “Acomplia is the registered trademark of Sanofi-Aventis and this site is not endorsed by them” (Annex 14), but the Respondent informed the Complainant that the Respondent would have further changed the site so that nothing would appear when a user accesses it since mere registration of <about-acomplia.com> would not affect the Complainant’s trademark rights (Annex 15).

At present, the Domain Name does not resolve to a website, as the Panel has personally verified.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- Sanofi-aventis is a well known company in the pharmaceutical industry as well as in the general public as it is the number 1 pharmaceutical group in Europe and number 3 in the world since the year 2004 and is currently present in more than 100 countries across 5 continents;

- The Complainant has published in the internet the report of the information meeting held on February 16, 2004, during which announced early results of two Phase III studies on the new Acomplia product. The results of the studies were also presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004, and were published in the Internet;

- The Complainant holds several registrations of the trademark ACOMPLIA;

- The Complainant has filed applications for the registration of the trademark ACOMPLIA in more than 100 countries;

- The Complainant also holds several registered domain names containing the trademark ACOMPLIA; and

- The Domain Name is confusingly similar to Complainant’s registered trademark ACOMPLIA as it incorporates it in its entirety and the addition of the generic word “about” is not sufficient to avoid the finding of confusing similarity;

With respect to the Respondent the Complainant further contends that:

- The Respondent has no rights or legitimate interests in the Domain Name as:

(i) The Complainant’s trademark registrations pre-dates the Domain Name’s registration;

(ii) The Respondent’s use of the Domain Name is not connected with a bona fide offering of goods or services;

(iii) The Complainant did not authorize the Respondent’s use of the Domain Name; and

(iv) The Respondent’s use of the Domain Name to divert consumers cannot be considered a fair use.

- The Respondent registered the Domain Name and is using it in bad faith as:

(i) The Respondent must have been aware of the Complainant’s trademark rights at the time of registration of the Domain Name; and

(ii) The Respondent have used the Domain Name to deceivingly attract, relying on the Complainant’s product’s notoriety, and redirect Internet users to third parties’ sites (some of which offer online sale of products belonging to some of the Complainant’s direct competitors).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademarks listed under paragraph 4 above, by submitting copies of several trademark registration certificates of the trademark ACOMPLIA.

The Domain Name is not identical to the Complainant’s registered trademark. However, the Panel, consistent with WIPO UDRP decisions, finds that the Domain Name is confusingly similar to the Complainant’s trademark ACOMPLIA as it incorporates it in its entirety and since the addition of the generic word “about” is not capable to sufficiently differentiate the Domain Name from the Complainant’s trademark.

Indeed, several WIPO UDRP decisions, some of which relate specifically to the Complainant’s trademark, have held that: (i) the incorporation in a domain name of a distinctive trademark in its entirety creates sufficient similarity between that trademark and the domain name to render it confusingly similar (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com, WIPO Case No. D2002-0313); and (ii) the addition of generic terms to a domain name (such as “about”) which incorporates a widely known trademark in its entirety, not only does not eliminate a likelihood of confusion (Sanofi-aventis v. John Adams, WIPO Case No. D2006-0688; F. Hoffmann-La Roche AG v. Cheaptamiflu.net, WIPO Case No. D2005-1256; Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories), WIPO Case No. D2004-0917; Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232) but may even reinforce the impression of an affiliation among the Domain Name and the Complainant (Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).

Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

The Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under Policy, paragraph 4(c). According to a consistent line of WIPO UDRP decisions in such a case the burden of proof shifts to the Respondent to rebut the evidence. (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). As a consequence, the Respondent’s failure to rebut the Complainant’s allegations, allows the Panel to infer, taking into consideration the circumstances of this case, that the Respondent has no such rights or legitimate interests.

The Panel finds that the following circumstances support such determination:

(a) the Complainant has not licensed or otherwise authorized the Respondent to use its trademark ACOMPLIA whatsoever;

(b) the word “acomplia” appears to be an invented word and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant (see e.g.: Six Continents Hotels Inc. v. Inoxis Africa Ltd., also known as Holidex Reservation Network, WIPO Case No. D2004-0516; Telstra Corporation Ltd. v. Nuclear Marshmallows; WIPO Case No. D2000-0003); and

(c) the Respondent has used the Domain Name to divert Internet users to its websites and redirect them to other websites, presumably receiving compensation for this misdirection (Annex 13). In line with WIPO UDRP decisions, such use of a domain name cannot be considered a bona fide use as per paragraph 4(c)(iii) of the Policy. (see e.g.: Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142; Motorola, Inc. v. Mr. Josip Broz, WIPO Case No. D2002-1063).

Consequently, the Panel deems that the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As established in paragraph 6.A. above, the Domain Name is confusingly similar to the Complainant’s trademark which was registered before the Domain Name was registered by the Respondent. The Panel accepts that the Complainant has made a relevant diffusion of the new product Acomplia to the industry and the public in general and, as a result, the Panel accepts that the product Acomplia was widely-known at the time of registration of the Domain Name (Annexes 3, 4 and 9). Consequently, the Panel finds it more likely then not that the Respondent, at the time registered the Domain Name, was aware of the Complainant’s trademarks (see e.g.: Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397). The more so considering that the Respondent appears to be active in the medical environment as the Respondent’s email address corresponds to a virtual medical management services company Medicalweb.

The Domain Name has been used by the Respondent in bad faith, as explained in paragraph 6.B. above. The fact that at present the Domain Name does not resolve to a website and does not appear to be used online otherwise does not affect the grounds for the Complaint. According to Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which was followed by several consistent WIPO UDRP decisions, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Consistent with the quoted decision and in the light of the following particular circumstances of this case, the Panel finds that the Respondent’s passive holding of the Domain Name, in this particular case, meets the requirement of paragraph 4(a)(iii) that the Domain Name “is being used in bad faith” by the Respondent.

The Respondent has used the Domain Name as a referral portal site which, through key words as “Finance” “Travel” and, more importantly, “Health”, “Diet” and “Weight Loss”, offered links to third parties’ sites, some of which offer for sale the Complainant’s direct competitors’ products. Therefore, it is very likely that the Respondent’s purpose in such use was that of collecting referral or click-through fees. Such a use of a domain name has been held by various WIPO UDRP decisions as clear evidence of bad faith use of a domain name (see Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

In light of all the above, the Panel deems that it is not possible to conceive any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation or an infringement of the Complainant’s right under trademark law.

In view of all the foregoing the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy.

 

7. Decision

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 <about-acomplia.com> be transferred to the Complainant.

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Anna Carabelli
Sole Panelist

Dated: January 10, 2007