The Complainant is Sanofi-aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Hang Sum Cheung, Santa Fe Springs, California, United States
of America.
2. The Domain Name and Registrar
The disputed domain name <nutracomplia.com> is registered with Go Daddy
Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2006. On April 28, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 28, 2006, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2006.
The Center appointed Arne Ringnes as the sole panelist in this matter on June 28, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On June 7, 2006, the Respondent filed a reply to the
Complaint. The Panel has decided to take the late reply into consideration.
4. Factual Background
The disputed domain name was created August 8, 2005.
The Complainant is a company active in the pharmaceutical market and one of the largest pharmaceutical companies in the world.
On February 16, 2004, the Complainant announced early results of Phase II studies of the new Acomplia product, indicating that i.e. overweight and obese patients with untreated dyslipidemia lost weight in one year while improving their lipid and glucose profiles. The new product, Acomplia, is expected to be launched in 2006.
The Complainant has filed trademark application for ACOMPLIA in more than 100 countries. In addition, the Complainant has registered trademark at least in France, registered May 7, 2004.
Further, the Complainant has registered a number of
domain names worldwide containing ACOMPLIA, including <acomplia.us> and
<acomplia.fr>.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark ACOMPLIA. According to the Complainant, the addition of the term “nutr”, relating to “nutrition” - being precised that the Complainant’s trademark lies in aspects of overweight and obese patients -and the gTLD “.com” does not change the overall impression of the disputed domain name as being connected to the Complainant.
The Complainant alleges that the Respondent has no bona fide use of the disputed domain name and does not have any rights or legitimate interest in respect of the disputed domain name. The Complainant further alleges that there exists no license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant’s ACOMPLIA trademark.
Furthermore, the Complainant submits that the disputed domain name leads to a portal website where various medicine and vitamins product businesses are promoted. According to the Complainant such use does not represent a bona fide offering of goods or services.
According to the Complainant the disputed domain name is registered and used in bad faith, for i.e. the following reasons:
(i) the Respondent has no prior rights and no authorization given by the Complainant concerning the ACOMPLIA trademark; and
(ii) the Respondent’s awareness that ACOMPLIA is a revolutionary drug against obesity; and
(iii) the composition of “nutr” and ACOMPLIA misleads Internet users to believe that the disputed domain name contain the official websites of the Complainant.
B. Respondent
The Respondent submits that the disputed domain name is not confusingly similar to the ACOMPLIA trademark. According to the Respondent the previous decisions under the Policy invoked by the Complainant, do not correspond to this case.
The Respondent further alleges that he has rights to and legitimate interest in the disputed domain name as it has registered the trademark NUTRA-SLIM. In addition, the disputed domain name has been used to bona fide sale of trademarked goods.
Furthermore, the Respondent submits that the Complainant
has failed to establish that the Respondent was aware that “the Complainant
will market within the next few months the ACOMPLIA product”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights to the ACOMPLIA trademark that precede the Respondent’s registration of the disputed domain name.
The Panel further finds that the disputed domain name is confusingly similar
to the Complainant’s trademark ACOMPLIA. The disputed domain name incorporates
the Complainant’s trademark completely. The addition of the term “nutr”,
the abbreviation of “nutrition”, does not imply that the domain
name is distinguished from the trademark ACOMPLIA with the effect that confusion
is avoided. On this point the Panel refers to previous decisions under the Policy,
i.e. the panel’s observations in Sanofi-Aventis, v. US-Meds.com,
WIPO Case No. D2004-0809:
“The domain names in dispute are comprised of the Complainant’s trademark ACOMPLIA preceded or followed by generic words used in the trade such as “buy,” “store,” or “online” or common words used in the medical market such as “pills”, “drug”, “generic” and “pharmacy” and the gTLDs “.com” or “.net”. The Complainant holds a number of valid registrations for the ACOMPLIA trademark.
The use of the above noted generic terms in conjunction with the Complainant’s trademark ACOMPLIA does not remove the domain names in dispute from being confusingly similar, as the generic terms lack distinctiveness.”
In conclusion, the Panel finds that the Complainant has proved that the condition under the Rules, paragraph 4(a)(i) is fulfilled with respect to the disputed domain name.
B. Rights or Legitimate Interests
The Respondent has not documented that it has registered NUTRA-SLIM as a trademark. Anyhow, the Panel finds that a possible registration of NUTRA-SLIM does not give the Respondent any rights to or legitimate interest in the disputed domain name.
Further, the Panel does not find it documented that the disputed domain name has been used in a bona fide offering of goods. The Complainant’s documentation that the disputed domain name leads to a portal website which promotes various medicine and vitamins product businesses, is not an indication of a bona fide offering of goods. On the contrary, the Panel sees this as an indication of bad faith, cf Section 6 C below.
On the background of this, the Panel finds that the Respondent has failed to demonstrate that it has rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy.
It is generally difficult for a complainant to prove that a respondent does not have any rights to or legitimate interests ina domain name. On the other side it would be fairly simple for the respondent to demonstrate if it had such rights. Previous decisions under the Policy have therefore found it sufficient for a complainant to make a prima facie showing of its assertion when the Respondent fails to demonstrate its rights.
The basis for the Panel’s conclusion is that the Complainant has not granted the Respondent any rights to use its mark, and that the Respondent is in no way affiliated with the Complainant. The Panel finds that the circumstances mentioned and evidenced by the Complainant are sufficient to establish a prima facie showing that the Respondent has no rights to or legitimate interests in the domain name at issue.
As the Panel cannot find any indications of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy or any other circumstances indicating such rights or legitimate interests in the case file, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
As a result of the publicity connected to the Complainant’s trademark
ACOMPLIA, the Panel finds it unlikely that the Respondent should not have been
aware of the Complainant’s rights to ACOMPLIA when registering the domain
name at issue. This is especially so, as ACOMPLIA, as far as the Panel is aware
of, is a term without any meaning in everyday language. In addition, the Panel
finds that the fact that the disputed domain name leads to a portal website
which promotes various medicine and vitamins product businesses, indicates that
the Respondent was aware of the Complaint’s rights when registering the
disputed domain name.
On the foregoing reasons, the Panel finds that the Respondent most likely was aware that the registration of the disputed domain name might infringe upon the Complainants’ rights.
As the disputed domain name is parked, the Panel further observes that bad
faith inaction, resulting from failure to provide an active website, amounts
to use in bad faith when all the surrounding circumstances point to registration
and use in bad faith (Revlon Consumer Products Corporation v. Domain Manager,
PageUp Communications, WIPO Case No. D2003-0602;
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003).
For the various reasons discussed above, the Panel finds that the Respondent
has registered and used the domain name in dispute in 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 name <nutracomplia.com>, be transferred to the Complainant.
Arne Ringnes
Sole Panelist
Date: July 12, 2006
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