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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Daichi Hoang

Case No. D2006-0363

 

1. The Parties

The Complainant is Sanofi-aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.

The Respondent is Daichi Hoang, Waitara, Australia.

 

2. The Domain Names and Registrar

The disputed domain names are <buy-acomplia.net>, <buyacomplia.net>, <discount-acomplia.net>, <discountacomplia.net>, <order-acomplia.net> and <rimonabant-acomplia.net> and are registered with NameSecure.com (a VeriSign Co.)

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 24, 2006, the Center transmitted by email to NameSecure.com (a VeriSign Co. ) a request for registrar verification in connection with the domain names at issue. On March 28, 2006, NameSecure.com (a VeriSign Co.) 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 March 30, 2006.

In view of the Respondent’s request to transfer the disputed domain name to the Complainant, the Complainant requested a suspension of the administrative proceedings on April 18, 2006. Notification of Suspension was sent on April 19, 2006. However the parties were unable to finalize an agreement and on the Complainant’s request the administrative proceedings were re-instituted on May 24, 2006.

In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2006. The Respondent did not submit any response or further communications. Accordingly, the Center notified the Respondent’s default on May 25, 2006.

The Center appointed Peter G. Nitter as the sole panelist in this matter on June 1, 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, a worldwide pharmaceutical company, announced in 2004, the early results for a new product, Acomplia, which helps patients, lose weight. These findings appeared on the Internet shortly afterwards.

The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries. In some countries, for example Spain, Mexico and Japan, the trademark ACOMPLIA is already registered.

The Complainant 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-acomplia.net>, <buyacomplia.net>, <discount-acomplia.net>, <discountacomplia.net>, <order-acomplia.net> and <rimonabant-acomplia.net>.

 

5. Parties’ Contentions

A. Complainant

The domain names <buy-acomplia.net>, <buyacomplia.net>, <discount-acomplia.net>, <discountacomplia.net>, <order-acomplia.net> and <rimonabant-acomplia.net> are confusingly similar to the ACOMPLIA trademarks in which the Complainant has rights.

The Complainant holds a number of valid registrations for the ACOMPLIA trademark and has submitted trademark applications, that are yet to be determined, for the ACOMPLIA trademark in a number of states.

The Respondent’s registration consists of the Complainant’s trademark ACOMPLIA, with the adjunction of generic words such as “discount”, “order”, “buy” or “rimonabant” and the generic top level domain denominator (gTDL) “.net”.

According to consistent UDRP practice, the adjunction of generic words such as the abovementioned, does not change the fact that a domain name is 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 Respondent should be considered as having no right or legitimate interest in respect of the domain names <buy-acomplia.net>, <buyacomplia.net>, <discount-acomplia.net>, <discountacomplia.net>, <order-acomplia.net> and <rimonabant-acomplia.net>.

The Complainant has prior rights in the ACOMPLIA trademarks, which precede the Respondent’s registration of the disputed domain names.

The fact that the Respondent registered the disputed domain names in order to use them for affiliate programs with approved pharmacies in the future, does not give the Respondent a legitimate interest in the domain names (See WIPO Case No. D2001-0903).

There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain names incorporating the Complainant’s trademark ACOMPLIA.

Since the ACOMPLIA product has not yet been marketed, the Respondent cannot have any right or legitimate interest in the domain name registrations.

Because of its lack of authorization to use the ACOMPLIA trademarks, the Respondent has made no bona fide use of the disputed domain names. Furthermore, using the domain names in order to divert consumers cannot be characterized as fair use.

The contested domain names should be considered as having been registered and used in bad faith.

The Respondent was aware of the Acomplia drug when the registration of the contested domain names took place. This leads to an inference of bad faith.

The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party can in itself be considered disrupting the business of the right owner.

The addition of generic words to the ACOMPLIA trademark misleads Internet users since it makes them believe that the products are available or that the Respondent’s website is the official website of Sanofi-Aventis.

The registration of multiple domain names including the trademarks of the Complainant, is also evidence of bad faith. See WIPO Case No. D2000-0351 and WIPO Case No. D2001-0108).

B. Respondent

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 a confusing similarity between the domain names at issue and Complainant’s trademark.

Previous Panel decisions under the UDRP have concluded that the generic top level domain denominator (gLTD) is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark. Regarding the present case the addition of the gLTD “.net” to the contested domain names can thus be disregarded.

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 UDRP similar to the present case. One example can be found in WIPO Case No. D2005-1043 where the Panel stated:

“The Panel finds that adding generic words to a domain name such as “new”, “best” and “buy” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “new, “best” and “buy” do not serve any distinguishing function but rather describe the nature of the service offered on the relevant website.”

The Complainant has provided documentation that Complainant holds a number of valid registrations for the ACOMPLIA trademark.

The contested domain names <buy-acomplia.net>, <buyacomplia.net>, <discount-acomplia.net>, <discountacomplia.net>, <order-acomplia.net> and <rimonabant-acomplia.net> all comprise of the ACOMPLIA trademark and a generic term.

Hence, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.

B. Rights or Legitimate Interests

The Panel has considered the allegation made by Complainant that Respondent lacks any rights or legitimate interests in the contested domain names. Respondent is in default, and has therefore not contested these allegations.

It is generally difficult for the Complainant to prove the negative that Respondent does not have any rights or legitimate interests in the domain names at issue; on the other hand, it would be fairly simple for Respondent to demonstrate that he has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have therefore found it sufficient for Complainant to make a prima facie showing of its assertion in the event of a Respondent’s default.

The domain names at issue resolve to Complainant’s web site. The Respondent is not itself 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, or to redirect domain names registered by Respondent to its own official web page. The Respondent has not asserted any rights or legitimate interests in the name. It is in the opinion of the Panel unlikely that Respondent would have any right or legitimate interest in the use of the ACOMPLIA trademark in the disputed domain names.

Therefore the Panel concludes that the Respondent has made a prima facie showing that Respondent lacks any rights or legitimate interests in the contested domain names. In the absence of a rebuttal by the Respondent, the Panel deems the second element of the Policy established.

C. Registered and Used in Bad Faith

There are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of his registration of the domain names at issue. This can inter alia be deducted from the construction of the domain names, consisting of the trademark ACOMPLIA and the generic words “discount”, “order” and “rimonabant”. It seems unlikely that the Respondent should have used the trademark ACOMPLIA by chance when he registered the disputed domain names.

Further, the registration of multiple domain names containing the Complainant’s trademark suggests of bad faith. This follows from UDRP practice, see for example WIPO Case No. D2000-0351.

Thus, the Panel finds that the domain names at issue were registered in bad faith.

The question that remains is whether the Respondent has used the contested domain names in bad faith.

By registering several domain names that are confusingly similar to Complainant’s trademarks, Respondent has prevented Complainant from reflecting its marks in corresponding domain names. The registration of several names corresponding to Complainant’s trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii), see WIPO Case No. D2000-0452.

The fact that the disputed domain names at the present time all lead to the Complainant’s web sites, does not diminish the fact that the domain names are being used in bad faith. There is a clear risk that Internet users connecting to the above mentioned web sites through the disputed domain names, will believe that the Acomplia medicine is available, whereas the Complainant is only expecting to launch such product in the following months. By holding the domain names and linking to the Complainant’s websites, the Respondent is thus preventing the Complainant from determining when and how the ACOMPLIA trademark is going to be advertised to consumers and thus disrupting the business of the Complainant.

The Complainant has successfully presented evidence which demonstrates that the Respondent’s intention with the registration of the contested domain names was to join affiliated pharmacy programs in the future for the purpose of promoting Acomplia.

Therefore, the Panel finds that the Respondent is also using the disputed domain names in bad faith.

 

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 names, <buy-acomplia.net>, <buyacomplia.net>, <discount-acomplia.net>, <discountacomplia.net>, <order-acomplia.net> and <rimonabant-acomplia.net> be transferred to the Complainant.


Peter G. Nitter
Sole Panelist

Dated: June 15, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0363.html

 

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