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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Elyssa Manis

Case No. D2007-1309

1. The Parties

The Complainant is Sanofi-aventis of France, represented by Armfelt & Associйs Selarl of France.

The Respondent is Elyssa Manis of Montreal, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <getcheapacomplia.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2007. On September 5, 2007, the Center transmitted by email to GoDaddy Software a request for registrar verification in connection with the domain name at issue. On September 5, 2007, GoDaddy 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 September 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2007.

The Center appointed John Swinson as the sole panelist in this matter on October 30, 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.

4. Factual Background

The Complainant is a multinational pharmaceutical company with its principal place of business in France.

The Complainant has developed a drug, ACOMPLIA, for the treatment of obese or overweight patients with associated risk factors, such as type 2 diabetes or dyslipidaemia.

The Complainant has registered a trademark in the United States Patent and Trademark Office for ACOMPLIA (filed January 5, 2004; registered April 19, 2005). The Complainant has also registered a community trademark in the European Union Office for Harmonization in the Internal Market (which extends trademark protection to all 27 Member States of the European Union) for ACOMPLIA (registered April 26, 2005). The Complainant has filed trademark applications for ACOMPLIA in over 100 countries worldwide, including Canada.

The Complainant has also registered numerous domain names worldwide containing the ACOMPLIA trademark, including the domain names <acomplia.com>, <acomplia.us>, <acomplia.fr>, <acomplia.net> and <acomplia.org>.

The Respondent registered the disputed domain name <getcheapacomplia.com> on April 23, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant filed a detailed and comprehensive Complaint, and makes the following submissions and arguments:

The disputed domain name is confusingly similar to the Complainant’s ACOMPLIA trademark. The disputed domain name incorporates the Complainant’s trademark in addition with the generic or descriptive words “get” and “cheap” and the gTLD “.com”. Many Panel decisions have found that the addition of generic or descriptive words such as “get” and “cheap” to a registered trademark is insufficient to avoid confusing similarity.

The Respondent has no right or legitimate interest in respect of the domain name. The Respondent has no registered trademark including the word “acomplia”. The Complainant has prior rights in the ACOMPLIA trademark, which precede the Respondent’s registration of the disputed domain name. The Complainant’s trademarks for ACOMPLIA are well-known throughout the world and are used in 100 countries, including Canada where the Respondent is located.

The Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Respondent’s website is merely a portal for the website of a third party from which the Respondent is paid a commission. The Respondent’s website leads to several online pharmacies where ACOMPLIA products, counterfeit or placebo products, or competitor products are sold.

There is no doubt that the Respondent is aware that ACOMPLIA corresponds to a medical product and therefore to a trademark in respect of the content on the Respondent’s website. However, the Respondent’s site did nothing to disclaim any relationship with the trademark owner. The Respondent registered the domain name with the intention to divert customers and to prevent the Complainant from reflecting the trademark in a corresponding domain name.

The domain name was registered and is being used in bad faith, because the Respondent had no prior right or authorization given by the Complainant concerning the ACOMPLIA trademark, and so registration of the disputed domain name has not been made with bona fide intention.

The Respondent registered the domain name knowing that the Complainant was planning to market a revolutionary drug under the name of “Acomplia”. This knowledge was obtained from Internet postings in 2004 about early results of two Phase III studies with ACOMPLIA, and from several scientific publications concerning ACOMPLIA published during 2005-2006. The Respondent registered the disputed domain name to prevent the Complainant adopting a trademark in a corresponding domain name and to disrupt the Complainant’s business.

The Respondent is intentionally attempting to attract Internet users to the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

It is also evidence of bad faith that the Respondent’s website will cause Internet users to believe that ACOMPLIA medicine products are available in all countries without medical control. ACOMPLIA has not yet been launched in all countries and can only be obtained by medical prescription.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant has a registered trademark of ACOMPLIA in the United States of America and the European Union. The Panel finds that the Complainant has trademark rights in ACOMPLIA.

The next issue is whether the disputed domain name is identical, or confusingly similar, to the ACOMPLIA mark.

The disputed domain name is comprised of the entirety of the Complainant’s ACOMPLIA trademark, preceded by the generic words “get” and “cheap” and followed by the gTLD “.com”.

The addition of the words “get” and “cheap” means that the disputed domain name is not identical to the Complainant’s trademark. The question therefore becomes whether the disputed domain name is confusingly similar to the Complainant’s trademark.

The use of generic terms together with a Complainant’s trademark will not prevent the disputed domain name from being confusingly similar to the trademark, as generic terms lack distinctiveness (Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809).

It has been consistently held that mere addition of generic words to a registered trademark is insufficient to avoid confusing similarity (Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Sanofi-Aventis v. Internet Marketing Inc. /John Bragansa, WIPO Case No. D2005-0742; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057). This is especially so where the Complainant’s trademark is the sole distinctive portion of the domain name (Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076).

In Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660, the Panel commented, “There will be words such as “buy”, “shop”, “cheap”, which by their very nature add nothing to a trademark…”

Confusing similarity has been found in cases concerning the trademark VALIUM and the domain name <cheap-valium.org> (Philip Morris Incorporated v. Eddy Fitch, WIPO Case No. D2002-0869), the trademark MARLBORO and the domain name <cheap-marlboro-cigarettes.net> (F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057), and in cases brought by Sanofi-aventis concerning the present trademark, ACOMPLIA, and the domain names <buy-cheapacomplia.com>, <buygenericacomplia.com> and <buy-acomplia.com> (among others) (see Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809). These cases are directly relevant to the present dispute concerning the domain name <getcheapacomplia.com>.

The word “cheap” in the disputed domain name may also be considered descriptive. In Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, the Panel held that:

“generally a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.”

A similar case to this one, Lilly ICOS LLC v. Lei Lu, WIPO Case No. D2005-0436, concerned the domain name <buycheapcialis.net>. The Panel in that case commented:

“In this case, the descriptive words are “buy” and “cheap” and, added to the Complainant’s CIALIS mark, may suggest that Respondent’s website is a location where a consumer may buy cheap CIALIS brand product. Far from creating a distinction, these terms actually reinforce the reliance on Complainant’s trademark.”

In the present case, the use of the words “get” and “cheap” in the disputed domain name could lead Internet users to believe that they can acquire cheap ACOMPLIA medicine products from the Respondent’s website. Internet users may be confused when they are instead taken to a website where links to competitive products are displayed.

Finally, the gTLD “.com” has no distinguishing capacity and does not alter the value of the trademark represented in the domain name (Telecom Personal, S.A., v. NAMAZERO.COM, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

For all these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. (Policy, paragraph 4(c)).

For the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainant to show a prima facie case, after which the burden of proof is shifted onto the Respondent. However, as the Respondent has failed to respond to the Complaint or participate in these proceedings, the Panel has to decide the Complaint on the basis of the statements and documents submitted by the Complainant.

The Complainant has not granted the Respondent any license or other authorisation to use its trademarks in relation to the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or by the name ACOMPLIA.

The Respondent uses the disputed domain name to provide links to websites where products in competition with ACOMPLIA are offered for sale. This cannot be considered a bona fide offering of goods or services in accordance with the Policy, paragraph 4(c)(i). It also cannot be considered a noncommercial or fair use of the domain name without intention for commercial gain, under paragraph 4(c)(iii) of the Policy (Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661).

On November 6, 2007, the Panel has visited the Respondent’s website under the disputed domain name, and found the following statement on the “Home” and “About Us” pages:

“ABC Nutrition has served the Healthtown community for more than twenty years. Licensed Nutritionists Anna Bee and Bill Cee, both graduates of the ABC University, provide diet and lifestyle counselling as well as support for smoking cessation and weight loss.”

The “Contact Us” page provides the following information:

“EMAIL: YourName@YourCompany

ABC Nutrition is located at:

123 Main Street

Healthtown, Nevada

USA 85559.”

The “About Acomplia” page merely states, “Acomplia is the new weightloss miracle pill!”

The names “ABC Nutrition”, “ABC University”, “Anna Bee” and “Bill Cee” are clearly fabricated, as is the contact address, 123 Main Street, Healthtown. The Respondent has not even bothered to complete the email address information. The Panel considers this as evidence that the Respondent is not using the domain name in connection with a bona fide offering of goods or services.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has, by not responding, failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, 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 the Respondent’s website.

It is extremely likely that the Respondent knew of the product sold under the Complainant’s ACOMPLIA trademark when it registered the disputed domain name. This conclusion can be reached by considering three factors. Firstly, the word “Acomplia” is a coined word with no independent meaning (See F. Hoffmann-La Roche AG v Bobik Marley, WIPO Case No. D2007-0057; Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440). Secondly, the use of the word “Acomplia” together with the generic words “get” and cheap” indicates that the Respondent was referring to the Complainant’s product. Finally, the Complainant’s product is a weight loss medicine and the Respondent’s website contains links to “weight loss programs” and to products that compete with the Complainant’s product.

If the Respondent knew of the Complainant’s product “Acomplia”, then it must have at least suspected that the Complainant would have registered trademark rights in the name. It is evidence of bad faith that the Respondent nevertheless used that name to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so (F. Hoffman-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066).

In F. Hoffman-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066, the Panel said, in relation to a finding of bad faith:

“The Respondent’s use of the Complainant’s trademark to sell products that compete with the Complainant’s medicine which bears the name of the mark provides further evidence of bad faith. This time, it is in the use of the domain name. It is fairly outrageous to attract customers to your site by breaching someone else’s trademark rights and then use that site to sell products that compete with the person or company whose rights you are infringing.”

In the present dispute, there is no evidence that the Respondent is selling authorized or legitimate “Acomplia” product or that the Respondent is an authorized reseller or distributor of the “Acomplia” product (contrast Gordano Limited v. NT mail server, WIPO Case No. D2002-0277; Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774).

For the above reasons, the Panel finds that paragraph 4(b)(iv) is satisfied in this case and that the registration and use of the disputed domain name has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 name <getcheapacomplia.com> be transferred to the Complainant.


John Swinson
Sole Panelist

Dated: November 13, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1309.html

 

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