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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten

Case No. D2008-0463

 

1. The Parties

The Complainant is Sanofi-aventis, France, represented by Armfelt & Associйs Selarl, France.

The Respondents are:

Protected Domain Services, United States of America, (referred to by the Panel as “first Respondent”), represented by Renova, Ltd., Spain.

Jan Hus, Husiten, Slovakia, (referred to by the Panel as “second Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name <acomplia-24.info> is registered with Name.com LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2008. On March 27, 2008, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the domain name at issue. On April 1, 2008, Name.com 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 April 2, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on April 3, 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 or attempted to notify the Respondents of the Complaint, and the proceedings commenced on April 4, 2008. Since the second Respondent’s physical contact details were unintelligible, contact could only be attempted to an email address that also had permanent fatal errors. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2008. The first Respondent’s Response was filed with the Center on April 24, 2008. The second Respondent did not reply and since no meaningful contact details had been provided, a Notification of Respondent Default could not be sent.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 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 a French pharmaceuticals company that has been known as Sanofi-aventis since 2004 following successive amalgamations of other companies. It is Europe’s largest and the world’s third largest pharmaceuticals company and is the proprietor of a number of internationally renowned drugs.

The Complainant supplies a pharmaceutical product for which it has created the trademark name ACOMPLIA, containing a substance for which the international non-proprietory name is Rimonabant. The drug is promoted for purposes including the treatment of certain forms of obesity and to help people to avoid putting on weight whilst endeavoring to stop smoking. Since the product is indicated for the treatment of problems sometimes described as being of epidemic proportions, its potential market is large. The results of clinical trials were made public from 2004 onwards. The product has been commercialised in only a few countries including the United Kingdom and Germany, but not world-wide.

The Complainant has applied for the trademark ACOMPLIA in more than 100 countries and has registered numerous domain names incorporating the word “acomplia”.

The first Respondent, Christian Investments LLC, is qualified to operate in the State of Colorado and does business as Protected Domain Services. The company provides privacy services to Internet users through various registrars.

The second Respondent gives the company name Husiten and the contact name Jan Hus. Nothing is known of the second Respondent other than the registration details of the disputed domain name. The domain name <acomplia-24.info> was registered on September 5, 2007.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of the registered trademark ACOMPLIA in many countries world-wide and provides in evidence copies of a selection of registration documents.

The Complainant also provides a list of domain names it owns incorporating the word “acomplia”.

The Complainant contends that the disputed domain name <acomplia-24.info> is confusingly similar to the trademark ACOMPLIA in which it has rights. The domain name consists of the Complainant’s trademark ACOMPLIA with the suffix “24”. The Complainant contends, with citations of proposed precedents, that a suffix such as “24” should not avoid a finding of confusing similarity because it is merely descriptive. Furthermore the gTLD “.info”, being integral to the domain name, has no distinguishing capacity.

 

The Complainant contends that the Respondent should be considered as having no right or legitimate interest in respect of the disputed domain name.

The Complainant has prior rights in the ACOMPLIA trademark because it is registered in 100 countries and has been promulgated world-wide via the Internet.

The Complainant has not in any way authorised the Respondent to use its trademark. The Respondent has not made any bona fide use of the disputed domain name. In particular the Respondent has not offered exclusively the trademarked product for sale through the corresponding website with disclosure of its relationship to the Complainant.

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith. The Respondent has no prior right and no authorisation has been given by the Complainant concerning the ACOMPLIA trademark. The Respondent must have been aware that ACOMPLIA is a revolutionary drug against obesity, because it had been announced publicly on February 16, 2004, and on other occasions. The Respondent uses the disputed domain name to attract Internet users for commercial gain.

The Complainant further contends that the Respondent’s website corresponding to the disputed domain name provides information and has links to other websites that may trade in Acomplia or other products for the treatment of the same or related conditions. It may be inferred that these links are provided for commercial gain on the part of the Respondent through commissions. Internet users may be misled into believing that the drug is available in countries where it is not, or that it is available without a doctor’s prescription.

The Complainant says the mere holding of a domain name that is identical or confusingly similar to a trademark can be considered as disrupting to the business of the trademark owner. The Complainant cites previous WIPO UDRP decisions as precedent to the effect that dealing in prescription medication without a doctor’s examination or prescription, contrary to public health regulations, can constitute evidence of bad faith.

The Complainant requests by way of remedy that the disputed domain name be cancelled.

B. First Respondent

The first Respondent gives its full name as Christian Investments LLC, d/b/a/ Protected Domain Services, and as preferred by the first Respondent it will hereafter be referred to as “Christian”.

Christian contends that it was not the registrant of the disputed domain name and therefore is not a proper Respondent.

Christian contends at length that it had no responsibility, role or beneficial interest in the actions of the second Respondent and is an entirely legitimate privacy service. Christian’s company registration details, contact details and location are provided in full detail.

Christian’s services are intended to be as transparent as possible. Customers are provided with notification as to any claim or communications received and it has a strict policy of disclosing the contact information of its customers upon legal demand. The first it knew of the dispute was from the registrar following the Center’s request for registrar verification and it immediately disclosed the identity and contact details of its client. Several attempts were made to contact the Complainant’s counsel and have Christian removed as a Respondent, but the Complainant declined to do so.

Christian contends that the Panel should declare it not to be the registrant or the Respondent in respect of the disputed domain name and should make no findings of facts or liability against it. Christian says that its role as a privacy service provider was confirmed in Viacom International Inc. v. Hicham Baktit Media, WIPO Case No. D2008-0079. In its amendment of April 3, 2008 to the Complaint, the Complainant named Jan Hus Husiten as the registrant, and identified Protected Domain Services as a “respondent”.

Christian cites inter alia in support of its position: Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438; Building Trade 1868 Kft. v. RegisterFly.com, WIPO Case No. D2006-0396; Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC, WIPO Case No. D2007-0169; Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070; WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975.

C. Second Respondent

The second Respondent has not replied to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identification of Respondent or Respondents

An initial search of the relevant Whois database by the Complainant yielded as the apparent registrant name the first Respondent, “Protected Domain Services”, which is a service that allows registrants to protect their identity. The parent body of Protected Domain Services is Christian Investments LLC. The registrar subsequently provided the Center with a different identity, physical and email address of the registrant, being those of the second Respondent, and these were forwarded to the Complainant with an invitation to amend the Complaint.

Paragraph 1 of the Rules defines “Respondent” as the holder of a domain name registration against which a complaint is initiated. The amendment of April 3, 2008 to the Complaint refers to Protected Domain Services as “the Respondent” and to Jan Hus, Husiten as “registrant”, however since both are named under the bold heading, “B. The Respondent”, the Complainant has formally named and proceeded against both. The Panel must therefore identify the appropriate Respondents or Respondent.

A registrant may have legitimate reasons to use a privacy service. On the other hand it may do so in an attempt to evade contact in the event of a domain name dispute (TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542). In the present case there is no evidence in the contact details or otherwise to suggest commonality or collusion between Christian and the registrant (the second Respondent). At face value, they are independent and separated at arm’s length, Christian providing a privacy service of which the second Respondent has availed itself.

Christian has strenuously denied that it has ever been the registrant of the disputed domain name and asserts in effect that it provides an innocent and respectable service to entities wishing to protect their identity, and furthermore, that it does immediately disclose their identity upon legal enquiry (Viacom International Inc. v. Hicham Baktit Media, WIPO Case No. D2008-0079). Christian and the registrar hold and share the purported contact details provided by each relevant registrant.

A registrar or a privacy service has only the client contact details with which it is provided and it is notionally impractical to authenticate them, particularly as these services are essentially automated. Nevertheless the conduct of registrants and privacy services spans the various permutations of, on the one hand, registrants who give either true or false contact details and, on the other hand, privacy services that either do or do not disclose those contact details upon properly founded enquiry. It would appear in the present case that Christian has been fully cooperative in the disclosure of the second Respondent’s purported contact details, as has the registrar. The Panel finds that Christian has played no part in the registration or ownership of the domain name. The Panel formally records that no adverse finding has been made in respect of Christian, the first Respondent.

Hereafter the registrant of record, being the second Respondent, will be treated and referred to as the sole Respondent. The contact details it provided to the registrar and privacy service, however, were self-evidently gibberish, devoid of names or words, and the email address proved to be fictitious. The responsibility for refusing to supply any contact details lies squarely with the second Respondent.

Christian graciously did some detective work to try to track down the real identity of the registrant and in a letter dated April 9, 2008 (after the amended Complaint had been filed), offered the Complainant its findings, being a name, address, email, telephone and fax numbers in Germany. The letter is included in Christian’s formal Response.

Paragraph 2 of the Rules states that “it shall be the Provider’s [WIPO’s] responsibility to employ reasonably available means calculated to achieve actual notice to Respondent”, and specifies measures that should be taken, which essentially are to contact such addresses as are supplied by the Registrar or are provided in the Complaint. These were the fictitious details mentioned above. The Provider is not charged with launching independent investigations. It may further be noted that the ICANN Registrar Accreditation Agreement (2001) at paragraph 3.7.7.1 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them ...”. Thus it is the registrant and the registrar who are expected to keep contact with each other.

The dispute service Provider must attempt reasonably to contact the Respondent, but can do no better than to send communications to the email and physical addresses on official record or provided in the Complaint. It is noted that the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. In the present case the Complaint and associated communications could not be sent to any meaningful physical address of the Respondent. Since an email address need not make sense there was no way of knowing whether the Respondent’s was real and the Center attempted to contact it, without success. If the Respondent has blocked itself from receipt of notification of the dispute, it must accept the consequences. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules.

B. Identical or Confusingly Similar

The Complainant has submitted ample documentary evidence to the effect that it has registered and has rights in the trademark ACOMPLIA.

The disputed domain name is <acomplia-24.info>. The gTLD discriminator such as “.info”, being an integral and necessary part of an Internet domain name, may be disregarded in the determination of confusing similarity. What remains is “acomplia-24”, comprising the trademark ACOMPLIA and “24”. It is well established that descriptive words, prefixes or suffixes, such as in this case “24”, do not detract from the confusing similarity between a trademark and a domain name (Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO Case No. D2000-0599; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafй, WIPO Case No. D2000-0068; Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO Case No. D2000-0074).

The Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant is required to prove that the Respondent does not have any right or legitimate interest in the disputed domain name. The Complainant has approached this in the conventional way by setting out a prima facie case to the effect that it has had no dealings with the Respondent and has not in any way granted the Respondent any right to use the trademark.

Even if the Respondent were to engage in the legitimate supply of the Complainant’s product, and had legitimate reason to make collateral use of the Complainant’s trademark in the text of a website, that would not in itself create any right to incorporate the Complainant’s trademark into the name of a website or a domain name without the trademark owner’s agreement.

The Respondent has the opportunity to refute the Complainant’s prima facie case either in the terms of the model grounds set out in paragraph 4(c) of the Policy or by advancing acceptable alternative grounds. The Respondent has not done so or replied in any way. In particular there is no evidence to suggest that the Respondent has made preparations for bona fide use of the disputed domain name, or been known by the name, or is making any legitimate non-commercial or fair use of the domain name.

The Panel finds that the Respondent does not have any right or legitimate interest in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Complainant has proceeded principally under paragraph 4(b)(iv) of the Policy. According to the Complainant’s evidence, information about the drug Acomplia has been publicly available since 2004. The Respondent’s website provides information and links to other websites through which Acomplia or alternative products may be purchased. Taking together this evidence and the apparently unique and creative nature of the trademarked name ACOMPLIA, it is not possible to escape the conclusion that the Respondent has knowingly appropriated the Complainant’s trademark without authorisation.

The overall intended function of the Respondent’s website is clearly to cause Internet users to be redirected to sellers of Acomplia, or of products offered as alternatives to Acomplia. It may reasonably be concluded that the Respondent has not set up this redirection system without the expectation of some financial return, and is operating the well known click-through or pay-per-click device whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.

The success of the scheme depends on the Respondent’s websites attracting visitors to redirect. The Respondent’s objective, it may be assumed, is to be featured in search engine results when users search for Acomplia, including users who expect to be taken to the Complainant’s authentic website or to sites endorsed by the Complainant. The suffix “24”, particularly in the pharmaceutical context, is likely to evoke notions of a 24-hour service and a facility to order immediately, enhancing the profile of the Respondent’s website in comparison with other search results. Thus, the Respondent is trading illegitimately on the Complainant’s trademark in order to attract visitors by initial interest confusion as to the affiliation or endorsement of the website. The Panel finds registration and use of the disputed domain name in bad faith to be proven in the terms of paragraph 4(b)(iv) of the Policy.

The scope of paragraph 4(b)(iii) of the Policy is wide, however the Respondent’s objective in diverting users from the Complainant’s authentic websites to competing websites is found to constitute disruption and bad faith within the meaning of the Policy.

The Complainant advances as a ground of bad faith that the selling or purchasing of a prescription medication without any doctor’s examination or prescription can constitute evidence of bad faith (Lilly ICOS LLC v. Tudor Burden, WIPO Case No. D2004-0794, in which the panelist said: “The products sold on Respondent’s website are therefore illegal and potentially dangerous”). The present Panel interprets the Policy as being concerned with abusive registration and the infringement of a trademark in a domain name, rather than matters of the quality, efficacy, legality or safety of a product, which would require value judgements and would be argued in another forum.

 

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 <acomplia-24.info> be cancelled.

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Dr. Clive N.A. Trotman
Sole Panelist

Dated: May 20, 2008