|Beklagter||Brian Kleiner, Registered Agent|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Brian Kleiner, Registered Agent
Case No. D2007-0982
1. The Parties
The Complainant is Sanofi-aventis, Gentilly Cedex, France, of France, represented by Armfelt & Associs Selarl, France.
Complainant has named two Respondents: Registered Agent, located at West Palm Beach, Florida, United States of America and Brian Kleiner, located at Weston, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <4acomplia.com> is registered with Go Daddy.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2007. On July 5, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name(s) at issue. On July 10, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 13, 2007. 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 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2007.
The Center appointed Amarjit Singh as the sole panelist in this matter on September 12, 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 considers that according to paragraph 11 of the Rules, the language of the proceedings be English.
4. Factual Background
4.1 The Complainant in this administrative proceeding is Sanofi-aventis, a company governed by French law, having its principal place of business in Paris, France.
4.2 According to the Whois database, the Respondent in this administrative proceeding is Registered Agent, Clematis Street, West Palm Beach, Florida, United States of America, and the technical contact is Kleiner Brian, Weston, Florida, United States of America.
4.3 The Complainant Sanofi-aventis is a multinational company present in more than 100 countries across 5 continents.
4.4 The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries including United States of America.
4.4 The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example <www.acomplia.com>, <www.acomplia.fr>, <www.acomplia.us> etc.
4.5 The domain name “4ACOMPLIA.COM” was created on June 17, 2005.
4.6 The Respondent’s registration consists of the use of the Complainant’s trademark in addition with the prefix “4” and the gTLDs “.com”.
4.7 The Complainant claim prior rights in the ACOMPLIA trademark, which precede the Respondent’s registration of the disputed domain name.
5. Parties’ Contentions
5A.1 During summer of 2004, Sanofi-Synthelabo, a French pharmaceutical company, resulting from the merger between Sanofi and Synthelabo, announced the success of its offer to acquire Aventis shares.
5A.2 Aventis was also a well-known pharmaceutical company resulting from the merger of HMR (Hoechst Marrion Roussel), and Rhne Poulenc.
5A.3 The name of the parent company resulting from this operation adopted in August 20, 2004, is sanofi-aventis. This name has preserved the brand heritage of each of the constituent companies (group of companies).
5A.4 The new group benefits from a large portfolio of high-growth drugs, with 8 blockbusters pharmaceuticals in 2005: Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It enjoys firmly established positions in 7 key fast-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
5A.5 According with the 2005 Annual Report extract submitted by the Complainant, Sanofi-Aventis employed approximately 100.000 people worldwide, Sanofi-Aventis has a sales force of 35 030 persons, as well as more than 17 600 research staff with 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development. The stock market capitalization of Sanofi-Aventis is 103 697 million Euros.
5A.6 On February 16, 2004, during an information meeting, the contents of which were dispersed on the Internet, the Complainant announced early results of two Phase III studies with a new ACOMPLIA product (Complainant trademark) 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.
5A.7 During 2005-2006 (i) several scientific publications were published in relation to ACOMPLIA, (as the RIO-Lipids study published in The New England Journal of Medicine) and (ii) a large communication was made on this revolutionary product notably on Internet.
5A.8 As obesity is becoming the number one health epidemic of the 21st century, there is no doubt that ACOMPLIA can be considered as a revolutionary medicine.
5A.9 The European Market Authorization concerning ACOMPLIA has been granted in June 2006. The product is now commercialized only in few countries like the United Kingdom and Germany..
5A.10 Given the huge impact of this new product in the medical area, and considering the fact that as of today ACOMPLIA has not been launched worldwide, cybersquatters registered as a domain name the trademark ACOMPLIA, owned by the Complainant in order to sell without any authorization ACOMPLIA or counterfeit products of ACOMPLIA. Such practice is harmful to public health and to Internet users who purchase Acomplia products, counterfeiting product or placebo products without any medical advice or control, under the mistaken impression that they are dealing with the Complainant.
5A.11 The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries including United States of America.
5A.12 The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example <www.acomplia.com>, <www.acomplia.f>r, <www.acomplia.us> etc.
5A.13 Considering the huge number of domain names registrations infringing the Complainant prior rights since all of them include the trademark ACOMPLIA, the Complainant had to file many complaints before the WIPO so as to obtain the transfer of the disputed domain names.
To date, all the decisions rendered by WIPO in respect of the trademark ACOMPLIA, have ordered the transfer of the disputed domain names to the Complainant.
5A.14 The disputed domain name is confusingly similar to the Complainant’s trademark ACOMPLIA. The trademark is used in its entirety in the disputed domain name, and the addition of the prefix “4” does not distinguish the domain name from the trademark, as this prefix is merely saying “for”.
5A.15 In conclusion, the disputed domain name < 4ACOMPLIA.COM > generates confusion with the Complainant’s trademark ACOMPLIA.
5A.16 There is no license, consent or 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 adjunction of the prefix “4”.
5A.17 There is no doubt that the Respondent is aware that ACOMPLIA corresponds to a medical product and therefore to a trademark in respect of the content of its website.
Therefore, the Respondent’s use does not satisfy the test for bona fide use established in prior WIPO decisions.
5A.18 The disputed domain name used by the Respondent, leads to an active website where information about ACOMPLIA product is provided and leads to an on-line pharmacy where Acomplia products or counterfeit products or placebo products and other competitor products are offered for sale.
5A.19 Indeed, the Respondent would not have registered the disputed domain name if he was not aware that ACOMPLIA is a revolutionary drug against obesity, and was ready to be put on the market.
5A.20 The Respondent has not made bona fide use of the disputed domain name because of its lack of authorization to use the ACOMPLIA trademark and sell the ACOMPLIA medicine. Furthermore, using domain names in order to divert consumers cannot be characterized as a fair use, see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066.
5A.21 The Respondent, knowing the Complainant was planning to market a revolutionary drug on several territories under the name of ACOMPLIA, registered the disputed domain name on June 17, 2005.
5A.22 By using its website under the domain name < 4ACOMPLIA.COM> to sell ACOMPLIA medicine without any authorisation, the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent’s website, and creates a likelihood of confusion with the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted. It is therefore appropriate, to note that merely because Respondent has not made a response to the Complaint does not avoid the necessity of examining the issues in the light of the evidence.
Paragraph 4 of the Policy provides that the onus of proof is on the Complainant. As the proceeding is a civil one, the standard of proof is on the balance of probabilities.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names of the Respondent be transferred to the Complainant or cancelled:
1. The domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain names; and
3. the domain names have been registered and are being used in bad faith.
That being so, the Panel will now proceed to enquire if the complaint has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
6A.1 A list of the Complainant’s worldwide trademark applications or registrations for the ACOMPLIA trademarks and copies of certain of the Complainant’s worldwide registration certificates for the trademarks ACOMPLIA, were duly submitted.
6A.2 The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example <www.acomplia.com>, <www.acomplia.fr>, <www.acomplia.us> etc..
6A.3 The Respondent’s domain name registration consists of the use of the Complainant’s trademark in addition with the prefix “4” and the gTLDs “.com”.
6A.4 Furthermore, the addition of the gTLDs “.com” 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, see Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; and see Nokia Corporation v. Private Case, WIPO Case No. D2000-1271.
6A.5 The disputed domain name is confusingly similar to the Complainant’s trademark ACOMPLIA. The trademark is used in its entirety in the disputed domain name, and the addition of the prefix “4” does not distinguish the domain name from the trademark, as this prefix is merely saying “for”.
6A.6 Previous panel decisions have stated that the addition of the prefix “4” has no significance in distinguishing a domain name as can be seen from Credit Suisse Group v. Kingdomdatanet Network, Inc, WIPO Case No. D2004-0846, (see also F. Hoffmann-La Roche AG v. ORG-174337, WIPO Case No. D2006-0519, F. Hoffmann-La Roche AG v. Lythion Services Ltd., WIPO Case No. D2006-0035).
6A.7 Therefore, and after analysis of these different WIPO cases, there is no doubt that the association in a domain name of the trademark ACOMPLIA, and the prefix “4”, which is distinctiveness, generates confusion. Indeed, persons accessing the domain name would be bound to believe that the domain name has a connection with the Complainant
6A.8 Consequently, because of this identity between the trademark ACOMPLIA and the disputed domain name, there is a high risk of confusion, since a consumer may think that the domain name directly refers to the Complainant product.
6A.9 For the above reasons, the Panel comes to the conclusion that the first element under the Policy, that the domain name registered by the Respondent is identical or confusingly similar to the trademarks/service marks/domain names in which the Complainant has a right.
B. Rights or Legitimate Interests
6B.1 Paragraph 4(c) of the Policy lists the following three non-exclusive methods for determining whether Respondent has rights or legitimate interests in a disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable 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.”
6B.2 As to the circumstances under paragraph 4(c)(i) of the Policy, Complainant has not consented to the Respondent’s use of the domain names, which incorporates the Complainant’s trademark ACOMPLIA or the marks as are deceptively similar thereto.
6B.3 The Complainant has prior rights in the ACOMPLIA trademark, which precede the Respondent’s registration of the disputed domain name.
6B.4 Moreover, the Complainant’s trademark is present in 100 countries for ACOMPLIA, including United States of America, where the Respondent is located, and most of all, Complainant’s trademarks are widely known throughout the world.
6B.5 Furthermore a worldwide communication, notably by the way of Internet has been made about the results of ACOMPLIA.
6B.6 The notion of bona fide has notably been discussed in the WIPO decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where it was held that, to be bona fide pursuant to paragraph 4(c)(i), the offering must meet several minimum requirements, being that:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own trademark in a domain name.
In the present case, there is in this Panelist view, no doubt that the Respondent does not use the domain name in connection with the bona fide offering of goods or services.
6B.7 It appears that the Respondent’s website is merely a portal for the website of a third party from which the Respondent is paid a commission. In such case, the Respondent does not typically offer any “bona fide genuine goods or services”. In such circumstances many previous panels decisions have stated that such use does not of itself give rise to the respondent having any rights or legitimate interests in respect of the disputed domain name. (See Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, WIPO Case No. D2005-1287; Societe des Hotels Meridien v. Modern Limited Cayman Web Development, WIPO Case No. D2004-0321;. See also, Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123).
6B.8 Furthermore, it is also important to underline that even if the Respondent was directly selling the genuine ACOMPLIA product (which is contested by the Complainant), the Panel also notes that the seemingon-line pharmacy related to the Respondent website, is also selling other competitive “Weight loss treatment” products, and it is well established that such use is not sufficient to give the Respondent a right or a legitimate interest to use the Complainant’s trademark in a domain name.
6B.9 In Stanley Works and Stanley logistics Inc. v. Camp Creek WIPO Case No. D2000-0113 the panel stated: “Moreover, even if the Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designated goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks.” (see also, Motorola Inc.v. NewGate Internet Inc., WIPO Case No. D2000-0079: and Amphenol v. Applied Interconnect, WIPO Case No. D2001-0296; and sanofi-aventis v. Chris, WIPO Case No. D2007-0047).
6B.10 Moreover, the Respondent’s site did nothing to disclaim any relationship with the trademark owner. It did nothing to dispel any possible suggestion that it might be the trademark owner, or that the website might be the, or a, official site of the Complainant. (See Sanofi-aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769.)
6B.11 As a result, it is clear that the Respondent, has no legitimate interest in respect of the domain name <4acomplia.com>.
C. Registered and Used in Bad Faith
6C.1 For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
6C.2 Paragraph 4(b) of the Policy states circumstances which, if found, 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 our documented out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered 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) The domain name was primarily registered 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 online 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.
6C.3 Under paragraph 4(b)(iv) of the Policy, bad faith can be shown by circumstances indicating that Respondent deliberately used the domain name for commercial gain to divert Internet users based on a likelihood of confusion with the Complainant’s mark.
6C.4 As it has been found above, the Respondent has no prior right in respect of the disputed domain name ACOMPLIA, and no authorization to use the Complainant’s ACOMPLIA trademark was granted to the Respondent. Thus, the registration of the disputed domain name has not in the Panel’s view been made with bona fide intention.
6C.5 The Panel considers that the obvious bad faith of the Respondent results from the following elements:
- the Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA trademark;
- the Respondent’s awareness that ACOMPLIA is a revolutionary drug against obesity; and
- the Respondent uses the domain name to attract for commercial gain Internet users
6C.6 Various panelists have considered that the fact of registering a domain name after a complainant’s widely publicized 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).
6C.7 Indeed, in the present case, there is no doubt in the Panel’s mind that the Respondent knowing of the launch of a new product under the trademark ACOMPLIA by the Complainant, registered the disputed domain name in order to prevent the Complainant from adopting the trademark in a corresponding domain name. It is an opportunistic act, which seeks to disrupt the Complainant’s business.
6C.8 It is also important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party, in itself, can in certain circumstances be considered as disrupting the business of the right owner.
6C.9 Paragraph 4(b)(iv) of the Policy lists as one of the typical situations evidencing bad faith the fact that” using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website or location.”
6C.10 In this Panel’s mind there can be no doubt that the Respondent knew of the product, sold under the Complainant’s trademark ACOMPLIA, when he registered the domain name. This can be deducted from the construction of the domain name, consisting of the trademark ACOMPLIA of the Complainant, with the prefix “4”, from the date of the domain name registration and from the content of the website.
6C.11 In fact, the Respondent’s website provides information and offers what may or not be genuine ACOMPLIA products related to the treatment of obesity.
6C.12 Furthermore, the Respondent intentionally links its domain name <4acomplia.com> with the website <121doc.co.uk>, which is securingly an on-line pharmacy providing information on and offering what may or may not be genuine ACOMPLIA products and other competitors’ products related to the weight loss treatment.
6C.13 By using its website under the domain name <4acomplia.com> to lead Internet users to a third party on-line pharmacy, the Respondent is intentionally attempting, for commercial purposes to attract Internet users to the Respondent’s website, and creates a likelihood of confusion with the Complainant’s trademark. One can easily assume that the Respondent does not insert for free such links which are redirecting the Internet user to a website where competitors’ products for the treatment of obesity are offered for sale. The Respondent provided these links with the clear intention of commercial gain.
6C.14 Furthermore, an Internet user who will try to connect to the above mentioned website may believe that the ACOMPLIA medicine is available in all countries without any medical control, whereas, it would appear that the ACOMPLIA medicine (i) has not been yet launched in all countries as this medicine has not been granted with all the administrative market authorization required, (ii) and in many (if not all cases) can only be obtained by medical prescription.
6C.15 Therefore, the use of the domain name <4acomplia.com>, by redirecting Internet users to an on-line pharmacy selling pharmaceuticals such as ACOMPLIA without requiring proof of a physical examination by an authorized doctor, is potentially harmful to the health of Internet users who purchase ACOMPLIA products under the mistaken impression that they are dealing with the Complainant.
6C.16 Previous WIPO Panelists have stated that selling or purchasing prescription medication without any doctor’s examination or prescription and consequently potentially in violation of Public Health regulations, can constitute evidence of the respondent’s bad faith. One example can be found in Lilly ICOS LLC v. Tudor Burden, WIPO Case No. D2004-0794, in which the panel states that: “Complainant’s Cialis14 product is available only with a physician’s prescription, and is manufactured, labelled, and sold in strict compliance with US Food and Drug Administration (FDA) and other health authority laws and regulations…[t]he products sold on respondent’s website are…illegal and potentially dangerous”.
6C.17 It is obvious to this Panel that with this behaviour the domain name is used in bad faith and the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
6C.18 It emerges from these facts that the domain name <4acomplia.com>constitutes an opportunistic registration, which has been made and 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 <4acomplia.com> be transferred to the Complainant.
Dated: September 26, 2007