ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. WhoisGuard Protected / Bogdan Mircea
Case No. D2007-0264
1. The Parties
The Complainant is Sanofi-Aventis of Paris, France, represented by Armfelt & Associйs Selarl, France.
The Respondents are WhoisGuard Protected of Westchester, California, United States of America, and Bogdan Mircea of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <rimonabant-acomplia-treatment.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2007. On February 26, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 26, 2007, eNom 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 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 22, 2007. The Response was filed with the Center on March 21, 2007.
On April 5, 2007, the Complainant filed a supplemental communication with the Center (the “Reply”). On the same day the Respondent replied to the Complainant’s communication, asking the panel not to consider it and requesting a 20 days’ period to reply if the Complainant’s supplemental communication was accepted by the Panel.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 16, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a multinational company and the largest pharmaceutical group in Europe (the third largest in the world). As such, the Complainant is present in more than 100 countries across 5 continents and employs approximately 100,000 people worldwide.
The Complainant produces inter alia a product named ACOMPLIA, composed of the active substance “Rimonabant” which is prescribed to overweight and obese patients with untreated dyslipidemia to loose weight while improving their lipid and glucose profiles, and helps smokers to quit without post cessation weight gain. First results were presented to the scientific community at the American College of Cardiology’s annual meeting in New Orleans on March 9, 2004. The European Market Authorization for ACOMPLIA was granted in June 2006. The product is currently commercialized in a few countries only, amongst them the United Kingdom of Great Britain and Northern Ireland and Germany.
The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries and is the registered owner of numerous trademark registrations, inter alia Community Trademark No. 003565678 ACOMPLIA, registered on April 26, 2005 and International Registration No. 825 821 ACOMPLIA, registered on May 7, 2004, both registered for pharmaceutical products in intl. class 05 (the “ACOMPLIA Marks”).
The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, inter alia <acomplia.com>, <acomplia.fr> and <acomplia.us>.
The disputed domain name was registered on December 1, 2006. The domain name is being used by the Respondent as an affiliate site for existing online pharmacies in order to sell ACOMPLIA.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(i) The domain name consists of the ACOMPLIA Marks in addition to the descriptive or generic word “treatment”, the descriptive term of the chemical compound of the ACOMPLIA product, i.e. “Rimonabant” (which is an International Nonproprietary Name, INN), and the gTLD “.com”. None of these elements is sufficient to avoid confusing similarity as “treatment” and “Rimonabant” are generic words with regard to the Complainant’s product, and the addition of the TLD “.com” has no distinguishing capacity in a domain name either.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has prior rights in the ACOMPLIA Marks, which precede the Respondent’s registration of the disputed domain name. 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 with the adjunction of the generic or descriptive word “treatment” and the descriptive term of the chemical compound of ACOMPLIA, “Rimonabant”. Finally, the Respondent’s use does not satisfy the test for bona fide use as the Respondent’s website does not only provide information about the ACOMPLIA product but also contains links leading to websites, where competitive products for the treatment of obesity are offered for sale.
(iii) The domain name was registered and is used in bad faith. The Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA Marks. The Respondent has registered the domain name with full knowledge of the fact that the Complainant’s ACOMPLIA product is a new drug against obesity and thus uses the domain name to attract Internet users for commercial gain.
The Respondent Bogdan Mircea admits that he is the beneficial owner of the domain name. He also concedes that he has no rights to any of the words included in the domain name and that he was aware of the Complainant’s rights in the word ACOMPLIA when the domain name was registered.
However, the Respondent alleges that he has legitimate interests in the domain name because it was registered and is being used as an affiliate site for existing online pharmacies in order to sell the Complainant’s ACOMPLIA product.
Respondent further alleges that there is no reference on his website (not even by way of metatags) to other weight loss products and that there are no sales offers there for such products either. However, the Respondent admits that he included ads from Google’s AdSense program on his website that might contain ads for other weight loss products.
Finally, the Respondent alleges that he has put a disclaimer on his website in order to point out that there is no relation between the Complainant and himself.
6. Discussion and Findings
The first point to be discussed is the admissibility the Complainant’s supplemental submission.
The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 of the Rules provides that a Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.
Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises,
WIPO Case No. D2000-0416 - <fieldofdreams.com>; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,
WIPO Case No. D2003-0921 - <qnx.info>; Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151 - <goldline.com>).
The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts or new legal authority not available at the time the Complaint was submitted. Instead, the Complainant appears to have submitted the Reply solely to reciprocate the arguments presented in the Response. Such a reply is not justified under the Rules.
The Panel is able to decide this case on the facts submitted in the Complaint and the Response. Therefore, the Panel elects not to accept the supplemental submission and has not relied on it in reaching this decision.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the highly distinctive ACOMPLIA Marks in which the Complainant has exclusive rights.
The addition of the generic word “treatment” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name, as “treatment” is a descriptive component of the disputed domain name without any significance. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of descriptive words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,
WIPO Case No. D2005-0829 - <drgrandel-online.com>; Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493 - <4microsoft2000.com>; Quixtar Investments, Inc. V. Dennis Hoffman,
WIPO Case No. D2000-0253 - <quixtarmortgage.com>).
Furthermore, the use of the ACOMPLIA Marks together with the generic term “Rimonabant” does not rule out similarity between the Complainant’s marks and the domain name either, because “Rimonabant” constitutes an INN (International Nonproprietary Name) for pharmaceutical substances. Such an INN is not only one of the components of the Complainant’s ACOMPLIA product, but also has a chemical description and molecular/graphic formulas used by the health and pharmaceuticals industry and professionals. Consequently, this disputed domain name is both confusingly similar to a component of the Complainant’s product and also replicates a chemical formula attributable to pharmaceutical products used by pharmaceutical manufacturers like the Complainant (cf. Sanofi-Aventis v. John Adams,
WIPO Case No. D2006-0688 - <acomplia-rimonabant.net> et al.; Sanofi-aventis v. Chris,
WIPO Case No. D2007-0047 - <buy-rimonabant-acomplia.org>).
Finally, it is well established that the specific top level domain is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2005-1525 - <magnumpiering.com> et al.; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374 - <moor-huhn.com>).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
The Respondent wishes to rely on paragraph 4(c)(i) of the Policy, arguing that he used the website under the disputed domain name as an affiliate site for existing online pharmacies in order to sell the Complainant’s ACOMPLIA product before any notice of the dispute.
Such bona fide offering of goods and services could be based on the right of the Respondent as a reseller or distributor of the Complainant’s products to promote the ACOMPLIA product. It is well established under the principle of exhaustion that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. In particular, the reseller must use the website to exclusively sell the trademarked goods (cf. Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 - <okidataparts.com>; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Case No. FA94392 - <mariahboats.net>; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,
WIPO Case No. D2000-1774 - <nikondealer.com> et al; Experian Information Solutions, Inc. v. Credit Research, Inc.,
WIPO Case No. D2002-0095 - <experiancredit.com> et al).
In the present case, the Respondent has been using the domain name to provide information about and to sell Complainant’s ACOMPLIA product. However, the Complainant submitted printouts to the Panel dated January 9, 2007, showing that the website available at the disputed domain name included advertisements and offers for sale of third parties’ products as well. The Respondent admitted that he included ads from Google’s AdSense program on his website, which might include ads to other weight loss products. Therefore, the Panel finds that the Respondent cannot rely on rights or legitimate interests under paragraphs 4(a)(ii) and 4(c)(i) of the Policy.
As the Respondent has alleged neither being commonly known by the domain name nor making a legitimate non-commercial or fair use of the domain name, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name and the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the domain name in bad faith, including
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668 - <oicq.com>, <oicq.net>; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,
WIPO Case No. D2005-0694 - <bestcialisnow.com> et al.; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,
WIPO Case No. D2004-1101 - <cialis-buy.com>; Lilly ICOS LLC v. Redzone,
WIPO Case No. D2005-0534 - <cialisprescrips.com>).
The Complainant’s mark ACOMPLIA is well-known as a pharmaceutical. The Respondent admits that he has registered the domain name in order to sell the Complainant’s products as an affiliate. The Respondent therefore registered the domain name <rimonabant-acomplia-treatment.com> with full knowledge of the ACOMPLIA marks and thus in bad faith.
Furthermore, by fully incorporating the ACOMPLIA mark into the domain name, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to his own for the purpose of selling ACOMPLIA and products of the Complainant’s direct competitors to Internet users searching for the Complainant’s website because the Respondent does not only market the Complainant’s products on his website but also provides ads containing competitor links.
As a result, the Panel finds that the Respondent has registered the domain name with knowledge of the Complainant’s trademarks and has used the domain name in bad faith under paragraph 4(b)(iv) of the Policy, as he attempts to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <rimonabant-acomplia-treatment.com> be transferred to the Complainant.
Dated: April 30, 2007