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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Shashi c/o Dynadot Privacy

Case No. D2007-1313

1. The Parties

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

The Respondent is Shashi c/o Dynadot Privacy of Belmont, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <acompliabuy.com> is registered with Dynadot, LLC.

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 Dynadot, LLC a request for registrar verification in connection with the domain name at issue. On September 5, 2007, Dynadot, LLC 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 October 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2007.

The Center appointed John Swinson as the sole panelist in this matter on November 2, 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.

Additional Correspondence:

In an undated email prior to September 8, 2007, Dynadot Accounts, the domain name host, informed the Respondent that <acompliabuy.com> had been locked and disabled due to a pending UDRP dispute.

The Respondent replied to Dynadot Accounts with the following statement:

“If this domain is under dispute then can you transfer this domain to sanofi. I don’t wish to keep this domain name.”

On September 8, 2007, further emails were exchanged between the Respondent and the domain name host. There was some confusion regarding whether or not the domain name had been cancelled and/or deleted. The Respondent indicated again that the Respondent wanted to transfer the domain name to the Complainant.

On September 17, 2007, the WIPO Case Manager, wrote to the Respondent to inform the Respondent that if it wished to settle with the Complainant, it should contact the Complainant directly. On the same day, the Respondent emailed the Case Manager to again state his desire to transfer the domain name.

On September 18, 2007, the Case Manager informed the Respondent that the Case Manager had contacted the Complainant’s Authorized Representative and was awaiting approval for the Respondent’s request for suspension.

On September 20, 2007, the Complainant’s Authorized Representative wrote to the Case Manager:

“We inform you that our client has decided to pursue the procedure initiated before the WIPO Panel, considering the fact that in opposition with what the Respondent indicated to us the domain name has not been deleted, and is still active (see hereafter).”

The Respondent emailed the domain name host on September 20, 2007, with the following:

“Can you please delete this domain name as wipo reply me with this mail. Can you please delete the revenue parking page. I don’t need any revenue regarding this domain name. Its very urgent so do this as soon as possible.”

On September 22, 2007, the domain name host wrote to the Case Manager requesting information and advice as to whether they could allow the Respondent to change name server settings for the disputed domain so that it no longer showed advertisements and/or to delete the domain.

On September 24, 2007, the Case Manager replied to the domain name host. The email contained the following statement:

“In relation to any content and material appearing on the disputed domain name, there is no requirement that the current registrant be prevented from making changes to this information. It is essentially a matter for the Registrar as to whether it wishes to allow changes to content. Just in case, we have taken a print out sample of the website as it currently appears today (September 24, 2007) which we will include on the case file of record.”

On September 25, 2007 and again on October 1, 2007, the Respondent emailed the Complainant’s Authorized Representative, asserting that the domain had been changed from a revenue parking page to an ordinary Dynadot page, and requesting that the case be suspended. The Respondent indicated that it was ready to transfer the domain name to the Complainant.

On October 1, 2007, the Complainant’s Authorized Representative reasserted his position from the email dated September 20, 2007, and stated that on her observations, the domain name had not been deleted.

On October 1, 2007, the Respondent replied to the Complainant’s Authorized Representative:

“We are ready to transfer and when you open acompliabuy.com it shows “This domain parked for free, courtesy of Dynadot.com”.”

On October 2, 2007, the Case Manager wrote to both parties acknowledging receipt of all communications and noting that the Complainant had once again confirmed that it wished to carry on administrative proceedings.

On October 10, 2007, the Respondent requested from the Complainant a transfer agreement to transfer the domain name to the Complainant. The Respondent also requested that the case be suspended.

On October 11, 2007, the Complainant’s Authorized Representative confirmed that the Complainant had decided to pursue the procedure initiated before the WIPO Panel.

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.

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 <acompliabuy.com> on January 6, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant 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 word “buy” and the gTLD “.com”. Under previous Panel decisions, the mere addition of a generic word such as “buy” to a registered trademark has consistently been deemed insufficient to avoid confusing similarity.

The Respondent has no right or legitimate interest in respect of the domain name. 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 the United States of America 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 disputed domain name used by the Respondent leads to an active website and leads to several online pharmacies where Acomplia products or counterfeit or placebo products or other competitor products are offered for sale. Even if the Respondent was directly selling the genuine Acomplia product, previous Panels have stated that this is not sufficient to give the Respondent a right or legitimate interest to use the Complainant’s trademark in a domain name.

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. The Respondent registered the domain name with the intention to divert customers and 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 submit a formal response in accordance with the Rules, paragraph 5(a). However, in between the date that the Complaint was filed and the due date for Response under the Rules, the Respondent indicated in numerous emails to the Complainant that it was willing to transfer the domain name to the Complainant and that it wished to settle the dispute. This correspondence is detailed under the Procedural History part of this decision. The Panel will take into account the informal correspondence between the Respondent and the Complainant that is part of this case file for the purposes of this case.

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 trade mark 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, followed by the generic word “buy” and the gTLD “.com”.

The addition of the word “buy” 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.

“Buy” is a descriptive word that does not serve any distinguishing function to avoid confusion amongst Internet users. (Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372; Roche Products Inc. v. Michael Trinidad, TvForever, WIPO Case No. D2007-1259).

Furthermore, it is likely that Internet users would be confused or misled into thinking that the Respondent’s website was an authorized site operated by the Complainant where they could purchase the “Acomplia” product (See Sanofi-aventis v. Mircea Timbusan, WIPO Case No. D2007-0981; F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946; F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066).

As expressed by the Panel in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629:

“Indeed, the addition of a promotional word such as “buy” tends only to reinforce the (false) association between the Complainant’s mark and the Domain Name.”

Numerous Panels have held that the addition of the descriptive word “buy” to a Complainant’s trademark is not sufficient to avoid confusing similarity. These include Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372, concerning <buyambien.info>; Sanofi-aventis v. Mircea Timbusan, WIPO Case No. D2007-0981, concerning <buy-rimonabant-acomplia.com>; Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2006-0363, concerning <buy-acomplia.net> and <buyacomplia.net>; and F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946, concerning <buyxenical.com>. These cases are directly relevant to the present dispute concerning the domain name <acompliabuy.com>.

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 trade mark 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 trade mark 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 formally respond to the Complaint, 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 authorization 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 Panel visited the website at the disputed domain name on November 13, 2007, and found that the domain had been changed to a generic parking page. The website now contains the badge, “This domain parked for free, courtesy of Dynadot.com”.

In the exhibits attached to the Complaint, the Complainant included screenshots from the website at the disputed domain name, dated August 10, 2007. At that time, the website was still active. From the screenshots provided by the Complainant, it is clear that the Respondent’s website and the dispute domain name were intended to refer to the Complainant’s product, “Acomplia”. The website states that “Acomplia” is a weight loss medication developed “by a French drug maker, Sanofi-Aventis”. It also describes the active ingredient in “Acomplia” (Rimonabant) and the way “Acomplia” works, lists the countries in which “Acomplia” has been made saleable, and states that “20mg “Acomplia” is the usual dosage”.

First impressions of the Respondent’s website might cause Internet users to believe that the website is created or endorsed by the Complainant. However, the Panel notes that the website contains the following statement, intended to disclaim a relationship with the trademark owner of ACOMPLIA:

“Note: THIS WEBSITE IS INDEPENDENT AND UNBIASED. IT IS NOT AFFILIATED WITH OR ENDORSED BY SANOFI-AVENTIS, NOTHING ON THIS SITE IS INTENDED TO INFRINGE ON THAT TRADEMARK. THE INFORMATION PROVIDED HERE IS FOR INFORMATIONAL PURPOSES ONLY.”

This is followed by:

“www.acompliabuy.com is an independent information site reporting on various diet drugs like Acomplia, Xenical, Reductil and other Diet pills. We are an independent online advertising medium. We have no ability to operate as a pharmacy and hence, have no ability to take orders for prescription drugs and processing of orders. Our site provides referral links to merchants running an Affiliate Program and claiming to be legitimate Pharmacy Merchants eligible to dispense medicines under the specified countries rules and regulations. It is the responsibility of the patient to determine the accuracy and authenticity of the Pharmacy while placing an order with the pharmacy. We make no warranties or representations or any endorsement about the services of the pharmacy listed on the site. We are neither liable nor responsible for any claim, loss, damage, or lawsuit resulting from any medication use whether purchased on their website or any other website with which this website may associate. Nothing on this site is intended as medical advice. The information provided here is for informational purposes only. Always consult a doctor or medical professional with questions you may have regarding a medical condition.”

The first disclaimer notice is intended to disclaim a relationship with the trademark owner of ACOMPLIA. In determining whether a disclaimer is sufficient to have the intended effect, regard must be had to the content, size, context and positioning of the disclaimer in question (Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316).

In the present dispute, the Panel considers that the disclaimer is not effective because although it is in bold, capital print, the disclaimer appears at the bottom of the page after a full page of marketing and well below the links leading to websites selling Acomplia products or counterfeit or competitor products (See Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316). Further, by the time Internet users read the disclaimer, the domain name has already diverted them from the Complainant’s legitimate websites (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

As stated in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698:

“Having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the Website, however explicit, nor to “tasteful content”, to clothe the domain name with legitimacy. See Estйe Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, ( WIPO Case No. D2000-0869, September 25, 2000): “The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion”.”

The Panel considers that the second disclaimer notice provides evidence that, despite the domain name referring only to Acomplia, the Respondent used the website to provide information to Internet users about other (competitor) dietary products. The second disclaimer notice also provides evidence that the Respondent’s website linked to the websites of “Pharmacy Merchants” purporting to sell “Acomplia” medication and other, possibly competing, medications. If the Respondent’s website was in fact an “independent information site” as claimed in the second disclaimer notice, then this should have been reflected in a more independent and appropriate domain name.

In all likelihood, the Respondent derived revenue from the websites that it linked to (for example, through pay-per-click arrangements). 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. Mircea Timbusan, WIPO Case No. D2007-0981; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057).

The fact that the Respondent, only after the Complaint had been filed, repeatedly requested that the disputed domain name be transferred to the Complainant is evidence that the Respondent did not have a legitimate interest in the domain name.

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 formally 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-inclusive, 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.

There is no doubt that the Respondent knew of the Complainant’s product, “Acomplia”. The first disclaimer notice (above) also makes clear that the Respondent was aware of the Complainant’s trademark rights in the name, ACOMPLIA. 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. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066).

On this point, the Panel reaches the same conclusion as that drawn by the Panel in Sanofi-aventis v. Mircea Timbusan, WIPO Case No. D2007-0981:

“The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to associate himself and his business with that of the Complainant and to profit from the reputation of the Complainant’s trade mark and thereby to attract Internet users to his website.”

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).

The evidence of bad faith is not mitigated by the Respondent’s repeated requests to settle the dispute and transfer the domain name to the Complainant.

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, <acompliabuy.com> be transferred to the Complainant.


John Swinson
Sole Panelist

Dated: November 16, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1313.html

 

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