|Respondent||Rx World, Nils Bor|
|Panelist||Harris, Matthew S.|
|Date of Decision||01.02.2008|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Rx World, Nils Bor
Case No. D2007-1773
1. The Parties
The Complainant is Sanofi-aventis, Gentilly Cedex, France, represented by Armfelt & Associs of Paris, France.
The Respondent is Rx World, Nils Bor, Nashville, Tennessee, United States of America.
2. The Domain Names and Registrars
The disputed domain names <best-acomplia.com> and <1-acomplia.com> (the “Domain Names”) are both registered with eNom (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 4, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On December 5, 2007 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.
3.2 On December 6, 2007, the Center notified the Complainant that the Complaint was formally deficient in that it incorrectly identified the registrar of the Domain Names. On the same day the Complainant’s representative filed an amendment to the Complainant in this respect. The Center then verified that the Complaint, as amended, 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”).
3.3 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 December 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2008.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 18, 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
4.1 The Complainant was formed in 2004 as a result of merger between Aventis SA and Sanaofi-Synthelabo. It is the largest pharmaceutical group in Europe and the third largest in the world. It is present in more than 100 countries across 5 continents.
4.2 The Complainant offers a wide range of drugs, many of which could be described as “blockbusters”. “Acomplia” is one of the Complainant’s products and its active substance is “Rimonabant”. This drug has applications in the field of weight loss and in assisting those who are attempting to cease smoking.
4.3 Early results of two Phase III studies of this product under the “Acomplia” name were announced to the world in February 2004 and since that date the product has been widely publicised. Acomplia was granted a European Market Authorisation in June 2006.
4.4 Various trademarks have been registered around the world that incorporate the “Acomplia” name. These include Community Trade Mark No. 3565678 filed on December 2, 2003 for the word “Acomplia” in class 5 for “Pharmaceutical preparations”. Some of these trademarks appear to be in the name of Sanofi-Sythelabo.
4.5 The Complainant is the owner of various domain names that incorporate the mark ACOMLPIA, including <acomplia.com>, <acomplia.fr> and <acomplia.us> (although again the registrations for these appear to be in the name of Sanofi-Sythelabo).
4.6 The exact legal status of the Respondent is unclear, although it appears to be associated with one “Nils Bor”. The Respondent registered both of the Domain Names on May 15, 2007.
4.7 Since the registration, or shortly thereafter, the Domain Names have resolved to websites that have homepages that, although slightly different in style, nevertheless follow the same basic format. Each has a heading which incorporates a prominent reference to Acomplia. One reads “Acomplia Online”, whilst the other reads “Acomplia. Buy Acomplia (Rimonabant) Online”.
4.8 Underneath these headings is a description (in one case very brief) as to what is Acomplia. In the case of the website operating from the <1-acomplia.com> Domain Name, the website describes Acomplia as “a weight-loss medication developed by Sanofi-Aventis, a French pharmaceutical firm”. The website operating from the <best-acomplia.com> Domain Name contains no such prominent reference to the Complainant, (although the Complainant is identified as the manufacturer of Acomplia on a different page of the website).
4.9 Underneath these descriptions is to be found identical (in terms of content) “price lists”. These price lists each take the form of a table with the headings “Medication”, “Quantity”, “Price”, “Consult Fee” and “Secure online Order form”. In these price lists, the “Medication” is always described as “Acomplia 20mg”, the “Quantity” and “Price” vary and the “Consult Fee” is always described as “Free!”. The “Secure online order form” entry in each case takes the form of a link to one of a number of online pharmacies (which currently include “Simple OP”, “PillSmile” and “Rapid RX”). When a link is clicked upon, one is taken to the relevant online pharmacy’s website and a page that gives further information on, and prices for, Acomplia. From there it is possible to order the product.
4.10 Neither website operating from the Domain Names gives any indication as to who it is who is responsible for that website’s operation beyond unrevealing copyright notices at the bottom of each page in the form “Copyright www.best-acomplia.com” and “Copyright 2006 www.1-accoplia.com”.
4.11 These websites continue to operate at the date of this decision.
5. Parties’ Contentions
The Complainant’s Trademarks
5.1 The Complainant contends that the Domain Names consist of the Complainant’s ACOMPLIA trademark combined with the “generic or descriptive” words “best” or “1”. It refers to numerous UDRP cases which are said to support the proposition that “the addition of generic or descriptive words to trademarks [are] not sufficient to escape [a] finding of similarity”. These include Pfizer Inc. v. David Lavery, WIPO Case No. D2004-0581 and Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043.
5.2 The Complainant also refers to a number of UDRP cases in support of the proposition that the addition of the gTLD “.com” “has no distinguishing capacity”.
5.3 The Complainant then goes on to contend that there is “identity between the trademark ‘ACOMPLIA” and the [Domain Names]” and that the Domain Names “generate confusion with the Complainant’s trademark”.
No Rights or Legitimate Interests
5.4 The Complainant asserts that is has “prior rights in the ACOMPLIA trademark, which precede the Respondent’s registration”. The Complainant maintains that “there is no license, consent or other right by which the Respondent would have been entitled to register or use the [Domain Names]”. It also claims that its trademark is well known and that there “is no doubt that the Respondent is aware that ACOMPLIA corresponds to a medicinal product”. Therefore, it is said that the Respondent’s use does not satisfy the test for bona fide use
5.5 The Complainant also makes reference to the Oki Data Americas Inc v ASD Inc, WIPO Case No. D2001-0903 and appears to be asserting that the Respondent’s use of the ACOMPLIA mark in the Domain Names does not satisfy the conditions for bona fide use laid down in this case.
5.6 Instead, the Complainant claims that “the Respondent’s website can be considered a portal for the website of a third party from which the Respondent is paid a commission” and that in such cases the Respondent does not actually offer any “bona fide genuine goods or services”. In support of that proposition it cites a number of cases including Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, WIPO Case No. D2005-1287; Socit des Htels Mridien v. Modern Limited Cayman Web Development, WIPO Case No. D2004-0321; Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099; and Lilly ICOS LLC v. Cybernet Marketing v. Antoine Tardifi, WIPO Case No. D2006-1123.
5.7 Further, it contends that even if the Respondent is directly selling the genuine Acomplia product (which is contested) the products are being sold alongside competing weight loss treatments (and provides evidence in this respect that comprises print outs from the “Pills With Care” and “Canadian Pharmacy” websites online pharmacies). In this respect it cites a passage from The Stanley Works and Stanley Logistics Inc. v. Camp Creek, Co Inc., WIPO Case No. D2000-0113.
5.8 The Complainant states that the bad faith of the Respondent is “obvious” because of the following:
(i) the fact that the Respondent has no prior right, and no authorization has been given to it by the Complainant in relation to the ACOMPLIA trademark; and
(ii) the Respondent’s supposed awareness that Acomplia is a “revolutionary drug against obesity”; and
(iii) the Respondent used the Domain Names to attract for commercial gain internet users.
5.9 So far as the second point is concerned, the Complainant makes various statements in support of the contention that Acomplia is revolutionary and then goes on to assert:
“in the present case, there is no doubt that the Respondent knowing of the launch of a new product under the trademark ACOMPLIA by the Complainant, registered the disputed domain names 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.”
5.10 So far as its third point is concerned, it refers to the wording of paragraph 4(b) of the Policy. By linking the Domain Names to on-line pharmacies and:
“providing information on and offering to [sell]1 Acomplia products or counterfeit products or placebo products and other competitors’ products related to the weight loss treatment, the Respondent is intentionally attempting for a commercial purpose to attract internet users to the Respondent’s websites, and creates a likelihood of confusion with the Complainant’s trademark.”
5.11 The Complainant then goes on to state:
“any internet user who will try to connect to the above mentioned websites will believe that the Acomplia medicine is available in all countries without any medical control, whereas, 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 can only be obtained by medical prescription.
Therefore, the use of the [Domain Names], by redirecting internet users to other on-line pharmacies 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.”
5.12 It is claimed that previous WIPO panelists have stated that this can constitute evidence of bad faith and the Complainant in this respect cites Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.
5.14 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.5 The Panel accepts that the Complainant has relevant rights in the trademark ACOMPLIA. There is a slight complication here in that many of the relevant trademarks are not in the name of the Complainant but in the name of “Sanaofi-Synthelabo”, i.e. the company that “merged” with Aventis to create the Complainant. Exactly what form that “merger” took is not explained. As a consequence it is unclear whether as a matter of relevant local law the Complainant can be treated as the same as “Sanaofi-Synthelabo” or whether “Sanaofi-Synthelabo” remains a separate legal entity within the Complainant’s group. However, the Panel does not think it matters. The Complainant, whether directly or indirectly, clearly controls the “Sanaofi-Synthelabo” trademarks and there is, in any event, at least one trademark (i.e. Community Trade Mark No. 3565678) that is registered in the Complainant’s own name.
6.6 The Panel does not accept that the Domain Names are identical to the Complainant’s trademarks, but it does accept that they are “confusingly similar”. Neither the word “best” or the number “1” that have been added as pre-fixes to the word “Acomplia” to create the Domain Names prevents the Domain Names from having the necessary degree of similarity for the purposes of the Policy.
6.7 Accordingly, the Panel concludes that the Complainant has made out paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.8 The Panel accepts the Complainant’s claims that the Respondent has not been authorised by the Complainant to use the “Acomplia” name. The Panel also accepts for the purposes of these proceedings that the Complainant is right in its assertion that the Respondent has chosen and is using the Domain Names for websites that operate as portals to the websites of third parties that purport to sell the Acomplia products. Similarly, the Panel accepts that it is likely that the Respondent receives payment (either directly or indirectly) from the operators of those third party websites. However, whether this takes the form of a commission on sales achieved, click through payments based upon the number of internet users funnelled to the third party website or otherwise is unknown.
6.9 The key question then is whether such usage of a domain name that incorporates a trademark provides rights or legitimate interests within the meaning of the Policy. The Panel notes that the Complainant asserts, in the context of its contentions on the issue of bad faith, that the products in question may be “counterfeit or placebo” products, although there is no evidence put forward in this respect. Therefore, the Panel assumes for the purposes of this question, that the products in question are genuine.
6.10 The Complainant refers to the decision in Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903. Oki Data was a case that addressed the issue of in what circumstances a genuine retailer of products bearing a trademark could use that trademark in a domain name. As paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions explains this has been an issue of some debate. Nevertheless, the majority view among panellists, for which Oki Data is cited as authority, is that if such use is ever to give rise to a right or legitimate interest then the use of the domain name must comply with a number of minimal requirements. These include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
6.11 It is questionable whether a respondent such as the Respondent in this case could claim Oki Data type “rights or legitimate interests”. It is one thing to use a trademark in a domain name to directly sell the goods in question. It is a somewhat different thing to use the trademark to redirect users to a number of different retailers that sell these products. However, the Panel accepts that it would make little sense to place a lesser burden on the operator of a mere portal site than upon a retailer of genuine products. Also this Panel notes that an Oki Data type analysis has been adopted before by other panels when faced by portal websites of this type (see, for example, Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099, Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123).
6.12 In this case it is clear the Respondent cannot satisfy the Oki Data requirements. The most obvious failure here is the fact that the Respondent does not disclose the nature of its relationship with the trademark owner. Indeed, as has already been noted, the Respondent does not even reveal its own identity. There is a reference in both websites (albeit with differing degrees of prominence) to the fact that the manufacturer of Acomplia is the Complainant, but this goes no where near enough in providing the level of explanation of the relationship (or lack of relationship) that is required.
6.13 Further, the Respondent does not offer the products itself but via third parties and although the internet user is taken to a page on the third party online pharmacy websites that is primarily directed to the sale of Acomplia, those pages (as the Complainant’s evidence demonstrates) also include references to competing products.
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.15 There can be no doubt that the Respondent in this case registered the Domain Names in full knowledge of the Complainant’s use of the “Acomplia” name for one of its products. There is the fact that “Acomplia” is an unusual name that (as far as the Panel is aware) exclusively refers to this product, the extensive reputation that this product had achieved worldwide prior to the date that the Domain Names were registered, and the fact that the website operating from the Domain Name refers directly to that product.
6.16 For the reasons that have already been explained under the heading of “Rights and Legitimate interests”, the Panel has also formed the view that there is little doubt that the Domain Names were registered with the intention of using them for portal websites of the sort that continue to operate from the Domain Names to this day.
6.17 Further, given the degree of similarity between the Domain Name and the Complainant’s trademarks (and in the absence of any argument or evidence to the contrary from the Respondent), the Panel is also of the view that the Domain Names were registered by the Respondent in the knowledge, hope and belief that internet users would type the Domain Names into their internet browsers with the intention of reaching a website that was either operated or authorised by the Complainant.
6.18 The Panel, therefore agrees with the Complainant, that the activities of the Respondent in this case fall within the scope fall within the scope of paragraph 4(b)(iv) of the Policy which states that the following shall be evidence of bad faith registration and use:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
6.19 There is one other factor in this case that points to a finding of bad faith registration and use. That is the failure on the part of the Respondent on the website to identify who it is. If the Respondent is engaged in a use of the Complainant’s trademark that it believes to be legitimate, this immediately raises the question as to why the Respondent seems to be so coy about revealing (at least to internet users using the website) who it is. The Complainant has not put any evidence before the Panel to the effect that the registration details provided by the Respondent in relation to the Domain Names are positively false or misleading. Nevertheless, not to include details as to who one is on a prima facie commercial website, is suspicious. Whilst by itself not sufficient to justify a finding of bad faith, it is a factor that weighs in the Complainant’s favour.
6.20 Accordingly, the Panel concludes that the Complainant has made out paragraph 4(a)(iii) of the Policy.
6.21 In coming to this conclusion the Panel has not taken notice of the assertions by the Complainant that those reaching the website will believe that “Acomplia medicine is available in all countries without any medical control” and that “the redirection of internet users to on-line pharmacies 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”.
6.22 It might be said that this is not much more than assertion on the part of the Complainant. However, there is a far more fundamental point here. The UDRP procedure is not a procedure that is intended generally to police alleged wrong doing on the internet. It is instead primarily directed at the misuse of a name or mark in which a complainant has developed or acquired rights. It is not designed for, or well equipped to deal with, broader disputes. There may perhaps be cases where the activity operating form a domain name is so obviously unlawful that this is a factor that may be taken into account when assessing bad faith. However, this Panel suspects that in most cases it will be possible to reach a finding of bad faith without the need to rely upon such reasoning.
6.23 The issue of the sale of prescription medicines on the internet and the extent to which individuals should be allowed to directly purchase such products is one that raises a range of policy issues that include the imposition of suitable measures for the protection of public heath, the protection of intellectual property rights, and drug company pricing practices. It is an area where national laws can vary. This Panel would suggest that this is a debate in which UDRP panels should be reluctant to become involved, even if that involvement is only peripheral.
6.24 This Panel notes that compliance with US Food and Drug Administration and other health authority laws and regulations seems to have been a factor that was taken into account in the decision in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794. However, when one reads this decision, it is clear that the panel was both prepared and able to come to a finding of bad faith quite independently of the issue of regulatory compliance. This is also so with the case currently before this Panel.
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 <best-acomplia.com> and <1-acomplia.com> be transferred to the Complainant.
Matthew S. Harris
Dated: February 1, 2008
1 The Complainant uses the word “buy” in the Complaint, but since there is no evidence that the Respondent is offering to buy Acomplia products, this seems to be simply a typographical error.