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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Venture Electronics / Glen Snaychuk

Case No. D2007-1071

 

1. The Parties

The Complainant is Sanofi-Aventis of Gentilly Cedex, France, represented by Armfelt & Associйs Selarl, France.

The Respondent is Venture Electronics / Glen Snaychuk of Vancouver, BC, Canada.

2. The Domain Names and Registrar

The disputed domain names <acomplia-dietaid.com>, <acomplia-dieting.com>, <acomplia-dietmeds.com>, <acomplia-dietpill.com>, <acomplia-medical.com>, <acompliameds.com>, <acomplia-prescription.com>, <acomplia-rxmed.com>, <acomplia-stopsmoking.com>, <zimulti-dieting.biz> and <zimulti-dieting.net> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2007. On July 23, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 23, 2007, 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. 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 July 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2007.

The Center appointed Mary Vitoria, Q.C. as the sole panelist in this matter on August 29, 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 the Rules, paragraph 7.

The language of the proceedings is English.

 

4. Factual Background

4.1 Because there has been no response, the following facts are taken from the Complaint and are accepted as true in the circumstances of this case.

4.2 The Complainant is a multi-national pharmaceutical company present in more than 100 countries, including the United States and Canada. One of the Complainant’s high-profile products is ACOMPLIA (the active ingredient of which is rimonabant). Studies with ACOMPLIA have shown that overweight and obese patients with untreated dyslipidemia lost weight in one year while improving their lipid and glucose profiles, and that smokers who had previously unsuccessfully tried to stop smoking, were able to stop within ten weeks without post-cessation weight gain. The Complainant also uses the trademark ZIMULTI in connection with its rimonabant product. ACOMPLIA/ZIMULTI was granted an European Marketing Authorisation in June 2006. ACOMPLIA is commercialized in the United Kingdom and Germany. Information concerning rimonabant and ACOMPLIA has been widely disseminated on the Internet and has attracted much public attention.

4.3 The Complainant has filed trademark applications for ACOMPLIA in over 100 countries and has registrations, inter alia, in the United States and France, as well as a Community Trademark registration. A list of the Complainant’s worldwide trademark applications or registrations for the ACOMPLIA trademark was annexed to the Complaint. The Complainant has registrations and applications for registration of its ZIMULTI mark in a number of countries including the United States, France and the United Kingdom as well as a Community Trademark registration. A list of the Complainant’s worldwide trademark applications or registrations for the ZIMULTI trademark was submitted by email to the Center as it was inadvertently omitted from the Complaint.

4.4 The Complainant has registered numerous domain names worldwide containing the ACOMPLIA trademark and the ZIMULTI trademark, for example <acomplia.fr>; <acomplia.us>; <acomplia.co.uk>; <acomplia.com>; <zimulti.com>; <zimulti.us> and <zimulti.fr>. Copies of the WHOis search results for a selection of those domain names were annexed to the Complaint.

4.5 The disputed domain names were created between December 4, 2006 and January 14, 2007. Each of the disputed domain names <acomplia-dietaid.com>, <acomplia-dieting.com>, <acomplia-dietmeds.com>, <acomplia-dietpill.com>, <acompliameds.com>, <acomplia-prescription.com>, <acomplia-stopsmoking.com>, <zimulti-dieting.biz> and <zimulti-dieting.net> appears to resolve to a website which provides sponsored links to sites offering what appear to be competing products and therapies and sometimes to on-line pharmacies. The disputed domain name <acomplia-medical.com> appears to resolve to a website which provides sponsored links for employment-opportunity sites in the clinical research and other sectors. The disputed domain name <acomplia-rxmed.com> appears to resolve to a website which provides information about ACOMPLIA, an on-line purchasing source and appears to provide links to other sites offering what appear to be competing products and therapies.

4.6 The Complainant requested that the disputed domain names be transferred to the Complainant.

4.7 The Panel notes that in relation to all of the disputed domain names except <acomplia-prescription.com>, the listed registrant of record is Venture Electronics. In relation to the domain name <acomplia-prescription.com>, the listed registrant of record is Glen Snaychuk. In all cases, the administrative and billing contacts are listed as Glen Snaychuk. The same contact email address is listed for all of the above domain names. Moreover, the same street address in Vancouver, BC, Canada is listed for all of the above domain names (some listing different zip codes). The Panel is satisfied on balance that it is appropriate in this case to refer to Venture Electronics and Glen Snaychuk collectively as the Respondent.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserted that the disputed domain names are confusingly similar to the ACOMPLIA and ZIMULTI trademarks in which it has rights for the following reasons:

(i) The Respondent’s registrations consist of the use of the Complainant’s trademarks in addition either with (i) generic words used in the medical market such as “prescription”; “meds”; “dietmeds”; “dietpill”; “rxmed”; “medical”; or (ii) common words related to weight loss treatment such as “dieting”; “dietaid”; and (iii) descriptive words such as “stopsmoking” (iv) and the several gTLDs “.com”; “.net”; “.biz”.

(ii) A wide variety of UDRP panelists have held that the addition of generic or descriptive words to trademarks is not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant (See Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).

(iii) Each of the disputed domain names consist of the Complainant’s trademarks (ACOMPLIA or ZIMULTI), together with a word or conventional abbreviation which does nothing to dispel a connection in the public mind between the pharmaceutical name ACOMPLIA or ZIMULTI and its owner, the Complainant.

(iv) The use of generic terms in conjunction with the Complainant’s trademarks ACOMPLIA or ZIMULTI does not prevent the domain names in dispute from being confusingly similar, as the generic terms lack distinctiveness. (See, Sanofi-aventis v. Conceirgebrain.com, WIPO Case No. D2005-0660; and Sanofi-aventis v. US.Meds.com, WIPO Case No. D2004-0809.

(v) Given the precedent established in these selected WIPO cases, there is no doubt that the association in a domain name of the trademarks ACOMPLIA or ZIMULTI and generic terms, which lack distinctiveness, generates consumer confusion. Indeed, persons accessing the domain names at issue may be likely to believe that a particular domain name has a connection with the Complainant.

(vi) The addition of the gTLDs “.com”, “.net”, or “.biz”. which is required for registration of a domain name, has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name (Sanofi-aventis v. Link, WIPO Case No. D2004-0810).

(vii) Because of the identity between the Complainant’s ACOMPLIA and ZIMULTI trademarks and the disputed domain names, there is a risk of confusion, since a consumer may think that any of the disputed domain names refer directly to either of the Complainant’s products.

5.2 The Complainant asserted that the Respondent should be considered as having no right or legitimate interest in respect of the disputed domain names for the following reasons:

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

(ii) The Complainant’s ACOMPLIA trademark is present in 100 countries for ACOMPLIA, including Canada, where the Respondent is located, and moreover, the Complainant’s trademarks are well-known throughout the world.

(iii) A worldwide communication, notably by the way of Internet has been made about the results of ACOMPLIA by the Complainant.

(iv) There is no licence, consent or other right from the Complainant by which the Respondent would have been entitled to register or use the domain names with the Complainant’s trademarks ACOMPLIA and ZIMULTI.

(v) There is little doubt that the Respondent is aware that ACOMPLIA and ZIMULTI corresponds to a medical product and therefore to trademarks in respect of the content of its website. The Respondent would not have registered the disputed domain names if he was not aware that ACOMPLIA/ZIMULTI is a revolutionary drug against obesity, and was ready to be put on the market. The Respondent’s use does not satisfy the test for bona fide use established in prior WIPO decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

(vi) The Respondent does not use the domain name in connection with the bona fide offering of goods or services. The disputed domain names used by the Respondent, appear to lead to active websites where information about ACOMPLIA products is provided and appear to lead to on-line pharmacies where it appears that ACOMPLIA products or counterfeit products or placebo products and other competitive products are offered for sale.

(vii) The Respondent’s websites appear to be portals for the website of a third party from which the Respondent is paid a commission. In such cases, the Respondent does not actually offer any “bona fide goods or services”. In such circumstances many previous UDRP Panel decisions have stated that the respondent does not have any rights or legitimate interests in respect of the Complainant’s trademark (See, Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, WIPO Case No. D2005-1287; Sociйtй des Hotels Meridien v. Modern Limited Cayman Web Development, WIPO Case No. D2004-0321. See also, Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123).

(viii) Even if the Respondent was directly selling the genuine ACOMPLIA product (which fact is contested by the Complainant), many previous UDRP Panels have stated that it was not sufficient to give the Respondent a right or a legitimate interest to use the Complainant’s trademark in a domain name. See, e.g., Stanley Works and Stanley Logistics Inc. v. Camp Creek, WIPO Case No. D2000-0113; Motorola v. NewGate Internet, WIPO Case No. D2000-0079 (transfer with dissenting opinion); General Electric Company v. Japan, Inc., WIPO Case No. D2001-0410; Dr. Ing. H.c.F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649; Nokia Corporation v. Nokia Ringtones & Logo Hotline, WIPO Case No. D2001-1101; Sanofi-aventis v. VSA - Andrew King, WIPO Case No. D2007-0061; Amphenol Corporation v. Applied Interconnect, WIPO Case No. D2001-0296; and Sanofi-aventis v. Chris WIPO Case No. D2007-0047).

(xi) It is clear that the Respondent, who has no legitimate interest in respect of the disputed domain names has registered these domain names with the intention of diverting consumers looking for the Complainant’s products and of preventing the Complainant from reflecting the trademarks in corresponding domain names.

(x) The Respondent has not made bona fide use of the disputed domain names because of his lack of authorization to use the ACOMPLIA and ZIMULTI trademarks. Using domain names in order to divert consumers cannot be characterized as a fair use. (Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066).

5.3 The Complainant asserted that the disputed domain name should be considered as having been registered and used in bad faith, for the following reasons:

(i) The obvious bad faith of the Respondent resulting from the following elements:

(a) the Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA and ZIMULTI trademarks;

(b) the Respondent’s awareness that ACOMPLIA (ZIMULTI) is a revolutionary drug against obesity;

(c) the Respondent uses the disputed domain names to attract for commercial gain Internet users.

(ii) On February 16, 2004, the Complainant announced publicly the early results of two Phase III studies with ACOMPLIA through an information meeting, the contents of which were disseminated, the same day, on the Internet. On March 9, 2004, these results were presented for the first time to the scientific community at the American College of Cardiology annual meeting in New Orleans. During 2005-2006 (i) several scientific publications were published concerning ACOMPLIA, (such as the RIO-Lipids study published in The New England Journal of Medicine) and (ii) substantial information was made available on this revolutionary product notably on the Internet. The European Marketing Authorization concerning ACOMPLIA was granted in June 2006. On the same day, the Complainant obtained an European Marketing Authorization for ZIMULTI which, like ACOMPLIA, has rimonabant as the active substance. On October 2006, the ACOMPLIA medicine was put, for the first time on the market, in the UK.

(iii) The Respondent, knowing the Complainant was planning to market a revolutionary drug under the name of ACOMPLIA and/or ZIMULTI, registered the disputed domain names between December 2006 and January 2007.

(iv) Various UDRP panelists have held that the fact of registering a domain name after the Complainant’s product launch leads to an inference of bad faith (See Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011; America Online Inc v. Chan Chunkwong, WIPO Case No. D2001-1043; and Guardant Inc. v. youngcho kim, WIPO Case No. D2001-0043).

(v) There is no doubt that the Respondent knowing of the launch of a new product under the trademarks ACOMPLIA and ZIMULTI by the Complainant, registered the disputed domain names in order to prevent the Complainant from adopting the trademarks in corresponding domain names. It was an opportunistic act, which seeks to disrupt the Complainant’s business.

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

(vii) Paragraph 4(b)(iv) of the Policy lists as one of the typical situations evidencing bad faith the fact that:

using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or of a product or service on [its] website or location.

(viii) There can be no doubt that the Respondent knew of the product, sold under the Complainant’s trademark ACOMPLIA, when he registered the domain names. This can be deduced from the construction of the disputed domain names, consisting of the trademarks ACOMPLIA and ZIMULTI registered by the Complainant for the same product and (i) generic words used in the medical market (ii) common words related to weight loss treatment and (iii) descriptive words, from the date of the domain name registrations and from the content of the corresponding websites.

(ix) In fact, the Respondent’s websites provide information and offer opportunities to buy ACOMPLIA products or counterfeit products or placebo products related to the treatment of obesity. By using his websites under the disputed domain names, and in particular under the domain name <acomplia-rxmed.com> to sell ACOMPLIA medicine without any authorization, 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 trademarks.

(x) By using the disputed domain names to lead Internet users to on-line pharmacies and to third parties’ on-line shops or pharmacies, the Respondent is intentionally attempting, for commercial purposes to attract Internet users to his websites, and creates a likelihood of confusion with the Complainant’s trademarks. One can easily assume that the Respondent does not insert for free such links which are redirecting Internet users to websites where competitors’ products for the treatment of obesity are offered for sale. The Respondent provided these links with the clear intention of commercial gain.

(xi) Any Internet user who accesses the Respondent’s 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 authorizations required, (ii) and can only be obtained by medical prescription. The use of the disputed domain names by redirecting 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 who purchase ACOMPLIA products under the mistaken impression that they are dealing with the Complainant.

(xii) Previous WIPO Panelists have stated that selling or purchasing prescription medication without any doctor’s examination or prescription and consequently in violation of Public health regulations, can constitute evidence of the respondent’s bad faith. See, e.g., Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.

(xiii) It is obvious from the Respondent’s behaviour that the disputed domain names are used in bad faith and the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on his websites.

(xiv) Following receipt of a cease and desist letter dated February 28, 2007 from the Complainant and relating to the disputed ACOMPLIA websites, the Respondent replied on the same day that he was willing to sell these sites. The fact that he offered these disputed domain names for sale is another element demonstrating bad faith.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

6.1 According to paragraph 15(a) of the Rules, the Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

6.2 In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the 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.

6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.

6.4 Since the Respondent failed to respond substantively to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:

A. Identical or Confusingly Similar

6.5 The disputed domain names <acomplia-dietaid.com>, <acomplia-dieting.com>, <acomplia-dietmeds.com>, <acomplia-dietpill.com>, <acomplia-medical.com>, <acompliameds.com>, <acomplia-prescription.com>, <acomplia-rxmed.com> and <acomplia-stopsmoking.com> are confusingly similar to the ACOMPLIA trademark in which the Complainant has rights. The disputed domain names <zimulti-dieting.biz> and <zimulti-dieting.net> are confusingly similar to the ZIMULTI trademark in which the Complainant has rights.

6.6 The disputed domain names <acomplia-dietaid.com>, <acomplia-dieting.com>, <acomplia-dietmeds.com>, <acomplia-dietpill.com>, <acomplia-medical.com>, <acompliameds.com>, <acomplia-prescription.com>, <acomplia-rxmed.com> and <acomplia-stopsmoking.com> each comprise a combination of ordinary English words or phrases or abbreviations and the Complainant’s trademark, the coined word ACOMPLIA. The addition of ordinary non-distinctive words to the Complainant’s ACOMPLIA trademark is not sufficient to avoid a finding of confusing similarity. The Complainant’s ACOMPLIA trademark has been appropriated in its entirety in each of these disputed domain names. It is also likely that persons familiar with the Complainant’s ACOMPLIA product and mark would be confused or misled into thinking that the websites corresponding to these disputed domain names were authorized sites operated by the Complainant to provide information about its ACOMPLIA product because the non-distinctive words and abbreviations chosen by the Respondent as part of the disputed domain names all clearly relate to or are descriptive of medical products and, in particular, slimming and dieting products and stop-smoking products.

6.7 The disputed domain names <zimulti-dieting.net> and <zimulti-dieting.biz> each comprise a combination of the ordinary English word “dieting” and the Complainant’s trademark, the coined word ZIMULTI. The addition of an ordinary non-distinctive word to the Complainant’s ZIMULTI trademark is not sufficient to avoid a finding of confusing similarity. The Complainant’s ZIMULTI mark has likewise been appropriated in its entirety in each of these disputed domain names. It is also likely that persons familiar with the Complainant’s ZIMULTI products and mark would be confused or misled into thinking that the websites corresponding to these disputed domain names were authorized sites operated by the Complainant to provide information about its ZIMULTI product because the non-distinctive word “dieting” chosen by the Respondent as part of the disputed domain names clearly relates to and is descriptive of slimming and dieting products.

6.8 The Respondent’s domain names incorporate the whole of the Complainant’s trademarks ACOMPLIA and ZIMULTI. The addition of a ccTLD or gTLD to the mark does not avoid confusing similarity. See, e.g., F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Sanofi-aventis v Link, WIPO Case No. D2004-0810. The generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider or enterprise as a source of goods or services. The same considerations apply to the use of the gTLDs “.biz” and “.net”.

6.9 The incorporation of the entirety of the Complainant’s trademarks ACOMPLIA and ZIMULTI into the Respondent’s domain names is likely to lead consumers familiar with the Complainant’s ACOMPLIA/ZIMULTI product and trademarks into the belief that the disputed domain names belong to the Complainant or that the Complainant has authorized or licensed the use of its trademarks to the Respondent. Consumers are also likely to be confused as to the origin or sponsorship of the Respondent’s websites because the disputed domain names are virtually identical and are thus confusingly similar to the Complainant’s trademarks ACOMPLIA and ZIMULTI in which the Complainant has rights.

6.10 The Panel accepts the Complainant’s submissions in relation to the disputed domain names and finds for the Complainant on the first element.

B. Rights or Legitimate Interests

6.11 There is no evidence of any rights or legitimate interest of the Respondent in the disputed domain names. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trademarks ACOMPLIA or ZIMULTI or to apply for any domain name including these trademarks. The Complainant has prior rights in the trademarks ACOMPLIA and ZIMULTI which precede the Respondent’s registration of the domain names in dispute.

6.12 It is inconceivable that the Respondent devised the disputed domain names independently of and without knowledge of the Complainant’s ACOMPLIA or ZIMULTI products. Prior to registration of the disputed domain names, there had been widespread dissemination over the Internet about the Complainant’s ACOMPLIA product and the fact that it was used in the treatment of obesity generated public interest in it. Indeed, a major feature of the Respondent’s website <acomplia-rxmed.com> is information about the Complainant’s ACOMPLIA product thus evidencing that the Respondent was well aware of the Complainant’s ACOMPLIA product and the trademark by which it was known world-wide. The association by the Respondent of the descriptive word “dieting” with the Complainant’s ZIMULTI trademark, used by the Complainant as a trademark for a product for treating obese patients, indicates that the Respondent was aware of the connection between ZIMULTI and dieting and, hence, of the Complainant’s product and trademark. The contents of the Respondent’s websites are also evidence that the Respondent was well aware of the existence and medical nature of ACOMPLIA and ZIMULTI products.

6.13 The Respondent appears to operate the websites <acomplia-dietaid.com>, <acomplia-dieting.com>, <acomplia-dietmeds.com>, <acomplia-dietpill.com>, <acompliameds.com>, <acomplia-prescription.com>, <acomplia-stopsmoking.com>, <zimulti-dieting.net> and <zimulti-dieting.biz>. These websites appear to contain a number of sponsored links to a variety of sites which appear to sell products of the Complainant’s competitors as well as other non-competing products. The Respondent also appears to operate the website <acomplia-medical.com>, which appears to resolve to a website which appears to provide sponsored links for employment-opportunity sites in the clinical research and other sectors. Similarly, the Respondent also appears to operate the website <acomplia-rxmed.com> which appears to contain a number of sponsored links to on-line pharmacies which offer ACOMPLIA for sale and to other sites which appear to sell competing and other products. It is likely that the Respondent derives revenue from those websites which appear in the Respondent’s list of links. If the Respondent had provided these links without intent for commercial gain, the Panel would have expected him to have provided evidence of this. The Respondent does not appear to offer any goods or services of his own. The use of the disputed domain names being names which are confusingly similar to the Complainant’s mark, is not fair use. See, e.g., the cases cited in paragraph 5.2(vii) above.

6.14 The use of a name which is confusingly similar to the Complainant’s mark as a domain name clearly extends beyond what is required to indicate the goods of the Complainant where these are legitimately being promoted and sold. Previous UDRP Panels have consistently held that persons who use marks in connection with what may be the genuine goods and services of the trademark owner are not entitled on that basis alone to register and use domain names containing the trademark, and particularly not where the domain name is used in connection with the promotion of goods or services other than those of the Complainant. See, e.g., Hoffman-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079(transfer with dissenting opinion), and the cases cited in paragraph 5.2(viii) above.

6.15 Users who for the first time typed any of the disputed domain names would expect to arrive at a website of the Complainant or at least at a website related to it in some way. Having accessed the website they might then appreciate that the website was independent of the Complainant but by that time they might well be attracted by the links to other sites and, in the case of the website <acomplia-rxmed.com> by the amount of information provided by the Respondent about the ACOMPLIA product and by the links to other sites. The Respondent is thus using the reputation and goodwill attached to the marks ACOMPLIA and ZIMULTI to attract users to his websites and is thus riding on the repute of the Complainant’s trademarks for commercial gain. This conduct does not amount to exercising a right or legitimate interest in the disputed domain names. (See Sanofi-Aventis v. Milton R. Benjamin, WIPO Case No. D2005-0544).

6.16 The Panel accepts the Complainant’s submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names. The Panel finds for the Complainant on the second element.

C. Registered and Used in Bad Faith

6.17 The Panel has already found that it is likely that the Respondent selected the domain names in dispute knowing of the reputation of the ACOMPLIA and ZIMULTI trademarks. The prospect for confusion between the disputed domain names and Complainant’s trademarks is clear. Accordingly, the Panel finds that the disputed domain names were registered in bad faith. See, e.g., America Online Inc v. Anson Chan, WIPO Case No. D2001-0004. In the present case, as other UDRP Panels have found, registration of a confusingly similar domain name after the Complainant’s product launch gives rise to an inference of bad faith. See, e.g., Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011; America Online Inc v. Chan Chunkwong, WIPO Case No. 2001-1043; and Guardant Inc v. youngcho kim, WIPO Case No. D2001-0043).

6.18 Under paragraph 4(b)(iii) of the Policy the registration of a domain name primarily for disrupting the business of a competitor is regarded as evidence of bad faith. There is no evidence that the Respondent is a competitor of the Complainant. Even if the Complainant and the Respondent were to be regarded as competitors, there is no evidence from which the Panel could infer that the primary purpose of registration was to disrupt the Complainant’s business. Instead, the evidence before the Panel suggests that the business of the Respondent is the operation of websites for his own commercial gain and that he is using the Complainant’s trademark to attract Internet users to his sites.

6.19 According to paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the disputed website or location or of a product or service on said website or location is regarded as evidence of bad faith.

6.20 The Panel is satisfied on the evidence that the Respondent knew of the ACOMPLIA and ZIMULTI products and of the Complainant’s trademarks when he registered and used the disputed domain names. There is no apparent connection between the marks ACOMPLIA and ZIMULTI and the Respondent. The Panel draws the conclusion that the most likely reason the Respondent chose the domain names was to associate himself and his business with that of the Complainant and to profit from the reputation and goodwill of the Complainant’s trademarks and thereby to attract Internet users to his websites.

6.21 The Panel concludes that by registering and using the disputed domain names, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant’s ACOMPLIA and ZIMULTI trademarks as to the source, sponsorship, affiliation, or endorsement of the business through the use of the disputed domain names. The Panel concludes that the Respondent registered and has used the disputed domain names in bad faith.

6.22 Furthermore, it is likely that some Internet users who access the Respondent’s website <acomplia-rxmed.com> will believe that the ACOMPLIA product is available in all countries without any medical control, whereas it has not been yet launched in all countries and can only be obtained by medical prescription. The use of the domain name <acomplia-rxmed.com>, by redirecting such 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 such Internet users who purchase ACOMPLIA products under the mistaken impression that they are dealing with the Complainant. Previous WIPO Panelists have stated that selling or purchasing prescription medication without any doctor’s examination or prescription and consequently in violation of public health regulations, can constitute evidence of the respondent’s bad faith. See, e.g., Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.

6.23 On receipt of a cease and desist letter from the Complainant’s legal representatives concerning the disputed domain names containing the ACOMPLIA trademark, the Respondent indicated that he was willing to sell these disputed domain names. There is no evidence, however, that the Respondent registered these domain names primarily for the purpose of selling them to the Complainant. The Respondent’s offer to sell cannot be regarded, on its own, as evidence of 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 <acomplia-dietaid.com>, <acomplia-dieting.com>, <acomplia-dietmeds.com>, <acomplia-dietpill.com>, <acomplia-medical.com>, <acompliameds.com>, <acomplia-prescription.com>, <acomplia-rxmed.com>, <acomplia-stopsmoking.com>, <zimulti-dieting.biz> and <zimulti-dieting.net> be transferred to the Complainant.


Mary Vitoria, Q.C.
Sole Panelist

Dated: September 12, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1071.html

 

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