|Panelist||Nitter, Peter G.|
|Date of Decision||09.06.2006|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. BH Marketing
Case No. D2006-0440
1. The Parties
The Complainant is Sanofi-aventis, Gentilly, France, represented by Bird & Bird Solicitors, France.
The Respondent is BH Marketing, Kelowna, British Columbia, Canada.
2. The Domain Names and Registrar
The disputed domain names <buy-cheapacomplia.com>, <buygenericacomplia.com>, <generic-acomplia.net>, <rxacomplia.com>, <1acomplia.com> and <1acompliaonline.com> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2006. On April 10, 2006, the Center transmitted by email to GoDaddy Software a request for registrar verification in connection with the domain names at issue. On April 11, 2006, 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 for the administrative, billing, and technical contact. The Center verified that 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 April 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2006.
The Center appointed Peter G. Nitter as the sole panelist in this matter on May26,2006. 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 major worldwide pharmaceutical company.
In 2004, the Complainant announced the early results for a new product, ACOMPLIA, which helps patients lose weight. These findings appeared on the Internet shortly afterwards.
The Complainant is a major player on the pharmaceutical market in Canada, as in the United States.
The Complainant has filed trademark applications for ACOMPLIA in more than 100countries. In Canada, the application was filed in 2004. In some countries, for example Spain, Mexico and Japan, the trademark ACOMPLIA is already registered.
The Complainant has also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example <acomplia.fr> and <acomplia.us>.
The Respondent has registered the domain names <buy-cheapacomplia.com>, <buygenericacomplia.com>, <generic-acomplia.net>, <1acomplia.com> and <1acompliaonline.com>.
5. Parties’ Contentions
The domain names <generic-acomplia.net>, <1acomplia.com>, <1acompliaonline.com>, <buy-cheapacomplia.com>, <buygenericacomplia.com> and <rxacomplia.com> are confusingly similar to the ACOMPLIA trademarks in which the Complainant has rights.
The Respondent’s registration consists of the Complainant’s trademarks with the adjunction of generic words such as “generic”, “1”, “online”, “buy”, “cheap” or “rx” and the gTLDs “.com” and “.net”.
The addition of the extra words does not change the fact that the domain names are confusingly similar to the Complainant’s trademark.
Because of this identity, there is a high risk of confusion, since a consumer may think that the domain names directly refer to the Complainant’s products.
The Complainant has prior rights in the ACOMPLIA trademarks, which precede the Respondent’s registration of the disputed domain names.
The Complainant’s trademarks are present in 100 countries for ACOMPLIA, including Canada and the United States, where the Complainant is located, and are well-known throughout the world.
The disputed domain names are used by the Respondent and lead to a portal website that promotes various websites, notably to sites specialized in medicine and vitamins products business, and not the ACOMPLIA product, since such product is not yet on the market. This can not be seen as having a right or legitimate interest in the domain names.
The Complainant has not licensed the Respondent to use the trademarks concerned or to register or use the disputed domain names.
The Respondent has registered the domain names at issue with the intention to divert consumers and to prevent the Complainant from reflecting its mark in corresponding domain names.
The Respondent has made no bona fide use of the contentious domain names because of its lack of authorization to use the ACOMPLIA trademarks. Furthermore, using domain names in order to divert costumers cannot be characterized as a fair use.
The registration of multiple domain names including the Complainant’s trademarks is also evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain names at issue are not identical to the Complainant’s trademark, and the question is therefore whether there is confusing similarity between the domain names and the Complainant trademark.
The Complainant has registered trademarks for ACOMPLIA. The mere addition of a generic word to a registered trademark has consistently been deemed insufficient to avoid confusing similarity under previous Panel decisions under the similar to the present case.
As the panel stated in Sanofi-Aventis v. Internet Marketing Inc. John Bragansa, WIPO Case No. D2005-0742:
“[T]he addition of the descriptive words “discount” and “online” to the mark does nothing to dispel a connection in the public’s mind between the pharmaceutical name and its owner, the Complainant”.
Considering the term “generic”, a UDRP panel has previously ordered the transfer of the domain names <generic-accomplia.com> and <genericaccomplia.net> to the Complainant. See Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045.
In Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660, the panel stated that it:
“follows what it regards as a consensus view that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark, assessed independently of extraneous marketing or use considerations. That is to say, extraneous of the circumstances and ways in which the mark and the domain name are put to use. Nevertheless, it is true that a great many trade marks create their own context and so it follows that other words or signs used in association with a trade mark will be understood in the atmosphere of that mark. 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.
“In this case, the disputed domain names each consist of the Complainant’s trade mark, plus a word or number or conventional shorthand which does nothing to dispel a connection in the public mind between the pharmaceutical name and its owner, the Complainant”.
For all these reasons, the Panel concludes that the domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel has considered the allegation made by the Complainant that the Respondent lacks any rights or legitimate interests in the contested domain names. The Respondent is in default, and has therefore not contested these allegations.
It is generally difficult for the Complainant to prove the negative that the Respondent does not have any rights or legitimate interests in the domain name at issue; on the other hand, it would be less difficult for the Respondent to demonstrate that it has any such rights or legitimate interests pursuant to paragraph4(c) of the Policy. Previous decisions under the Policy have found it sufficient for the Complainant to make a prima facie showing of its assertion in the event of the Respondent’s default.
The Complainant has held that it has not in any way granted Respondent rights to use its mark, and that it in no way is affiliated with Respondent. The Complainant is a major manufacturer of pharmaceuticals, and its product and trade mark ACOMPLIA is undoubtedly of great value. Respondent’s web sites resolving to the domain names at issue are not related to the Complainant or the Complainant’s products, and it is in the opinion of the Panel unlikely that Respondent would have any right or legitimate interest in the use of the trade mark which takes place.
The Respondent is not known by the name ACOMPLIA and does not appear to trade under that name. There is no evidence that the owner of the trademark in question has authorized the Respondent to use the trademark. The Respondent has not asserted any rights or legitimate interests in the name.
On this background, the Panel concludes that the Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the contested domain names, which the Respondent has not rebutted. The Panel therefore finds that paragraph4(a)(ii) of the Policy satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists as one of the typical situations as evidence of bad faith that, by using the domain names, 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.
The Complainant has submitted facts and evidence that the Respondent has fulfilled the conditions set out in paragraph 4(b)(iv). There are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of its registration of the domain names at issue. This can be deducted from the construction of the domain names, consisting of the trademark ACOMPLIA and the generic words “generic”, “online”, “1”, “buy”, “cheap” and “rx”.
There is a clear risk that Internet users connecting to the above mentioned websites, will believe that the ACOMPLIA medicine is available, whereas the Complainant is only expecting to launch such product in the next following months.
Hence, on the background of the facts and documentation presented to the Panel, the Panel is satisfied that the Respondent has registered and is using the disputed domain names intentionally to attempt 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.
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 names, <buy-cheapacomplia.com>, <buygenericacomplia.com>, <generic-acomplia.net>, >rxacomplia.com>, <1acompliaonline.com> and <1acompliaonline.com>, be transferred to the Complainant.
Peter G. Nitter
Dated: June 9, 2006