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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. One Star Global

Case No. D2006-0583

 

1. The Parties

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

The Respondent is One Star Global, Midland, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <acompliaovernight.com> and <prescriptionacomplia.com> are registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2006. On May 9, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On May 10, 2006, Wild West Domains, Inc. 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 May 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2006.

The Center appointed Peter G. Nitter as the sole panelist in this matter on June 6, 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, and a major player on the pharmaceutical marked in the United States.

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 Compliant has registered the trademark ACOMPLIA in several countries, for example Spain, Japan and Mexico. The Complainant has also filed trademark applications for ACOMPLIA in more than 100 countries, including the United States.

The Complainant has also registered numerous domain names under ccTLD’s worldwide containing the ACOMPLIA trademark, for example <acomplia.fr> and <acomplia.us>.

The Respondent has registered the domain names <acompliaovernight.com> and <prescriptionacomplia.com>.

 

5. Parties’ Contentions

A. Complainant

The domain names <acompliaovernight.com> and <prescriptionacomplia.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 “overnight” and “prescription” and the gTLD “.com”.

The addition of the extra words does not change the fact that the 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 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 the United States, where the Complainant is located and are well-known around the world.

The disputed domain names are used by the Respondent to promote medical products manufactured by competitors of the Complainant and not the ACOMPLIA product, since such product is not yet on the marked. This can not be seen as having rights 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 trademark is also evidence of bad faith.

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 confusing similarity between the domain names and Complainant’s 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 UDRP similar to the present case.

As the panel stated in Sanofi-aventis v. Internet Marketing Inc. John Bragansa, WIPO Case No. D2005-0742:

“The addition of the descriptive words “discount” and “online” to the mark does nothing to dispel a connection in the public’s mind the pharmaceutical name and its owner, the Complainant”.

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 confusingly similarity under the Policy is confined to a comparison of the disputed domain name and the trademark, assesses independently of 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”, in 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 trademark. 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 the above 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.

As it is generally difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in the domain names at issue and on the other hand, it would be fairly simple for the 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 which have found it sufficient for the complainant to make a prima facie showing of its assertion in the event of a respondent’s default.

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. Complainant is a major manufacturer of pharmaceuticals, and its product and registered trademark ACOMPLIA is undoubtedly of great value. Respondent’s web sites to which the domain names at issue resolve are not related to Complainant or 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 trademark.

The Respondent is not known by the name ACOMPLIA and does not appear to trade under such 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 name. In the absence of a rebuttal by the Respondent, the Panel finds, based on the record, that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy lists as one of the situations which demonstrate 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 showing that the elements set out in paragraph 4(b)(iv) of the Policy are present in this matter. 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 be deducted from the construction of the domain names, consisting of the trademark ACOMPLIA and the generic words “overnight” and “prescription”.

There is a clear risk that Internet users connecting to the websites to which the disputed domain names resolve, will believe that the ACOMPLIA medicine is available at the web sites, whereas the Complainant is only expecting to launch such product in the next following months. As the Respondent offers other commercial products through the same web sites, the Respondent will gain commercially from such mislead Internet users.

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.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <acompliaovernight.com> and <prescriptionacomplia.com> be transferred to the Complainant.


Peter G. Nitter
Sole Panelist

Date: June 14, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0583.html

 

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