Complainant is Sanofi-aventis, Paris, France; represented by Armfelt & Associés Selarl, France.
Respondent is Iqbal Hans, Sherman Oaks, California, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <buy-acomplia-online.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2007. On April 10, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the Disputed Domain Name. On April 11, 2007, Tucows transmitted by email to the Center its verification response informing that “Hans, Iqbal” was listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed on April 19, 2007 an amendment to the Complaint (in particular, the identity of Respondent and contact details). The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 25, 2007.
Respondent, by email dated April 25, 2007, sent to the Center a proposal to resolve the proceeding by transferring the Disputed Domain Name (the entire contents of the email are set out in Section 5B below).
The Center sent the proposal to Complainant on April 26, 2007, asking it decide whether to suspend the proceeding in view of the Response or to continue with the proceeding. Complainant responded on April 27, 2007, declining to settle and requesting that the proceeding continue.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2007. By Respondent’s online response of April 27, 2007, Respondent requested that the Disputed Domain Name be transferred to Complainant and provided no evidence or argument.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on June 7, 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
Complainant has trademark applications for the trademark ACOMPLIA (hereinafter, “Trademark”) pending in more than 100 countries including Canada and the United States of America, the locations of Respondent and its contact details.
Complainant has domain names reflecting the Trademark, and among them, are <acomplia.com>, <acomplia.fr>, and <acomplia.us>.
The Disputed Domain Name was registered on January 27, 2006 (according to the Whois printout provided with the Complaint).
5. Parties’ Contentions
A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar with the Trademark in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name and that Respondent registered and uses the Disputed Domain Name in bad faith. Particulars of Complainant’s contentions are set out in Sections 6A, 6B and 6C below.
B. Respondent
Respondent has submitted the following communications: (1) its email of April 25, 2007 (“I’d be happy to save everyone the trouble of this proceeding and transfer the name to the Complainant. It has been abandoned, and is unfortunately locked and I no longer have the login info. The registrar can unlock and transfer once they receive official notice of cancellation of this complaint from WIPO. Thanks you. Iqbal Hans.”; and (2) its online response of April 27, 2007 (“Respondent requests domain to be transferred to Complainant”). The Panel considers those responses to be silent on the issues of Sections 6A, 6B and 6C below.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish any meaningful response to the issues raised by the Complaint, is not due to any omission by the Center.
Although Respondent is not technically in default, the Panel is proceeding on the basis that Respondent submitted no response (i.e. no evidence or argument on the relevant issues before this Panel) and so the Panel will be guided, by analogy, by: paragraph 14(a) of the Rules (“the Panel shall proceed to a decision on the complaint”), and paragraph 14(b) of the Rules (“the Panel shall draw such inferences [from the default] as it considers appropriate”). Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence or argument, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant. Panel notes that its decision (see Section 7 below) is aligned with Respondent’s repeated requests to transfer the disputed domain name to Complainant (see Section 5B above).
In accordance with paragraph 4(a) of the Policy, to succeed in this UDRP proceeding, Complainant must meet three requirements that will be considered in turn below.
A. Identical or Confusingly Similar
Complainant contends (and the Panel accepts as uncontroverted) the following (excerpted from the Complaint):
“… SANOFI-SYNTHELABO, a French pharmaceutical company….announced the success of its offer for AVENTIS shares. AVENTIS was also a well-known pharmaceutical company…The name of the parent company resulting from this operation adopted in August 20, 2004, is sanofi-aventis…Completion of the transaction created the no. 1 pharmaceutical group in Europe, no. 3 in the world, with consolidated net sales of € 27,311 billion in 2005, in the core business and a strong direct presence on all major world markets, and € 4 billion Research and Development expenditure….The Complainant sanofi-aventis is a multinational company present in more than 100 countries across 5 continents.”
“On February 16, 2004…Complainant announced early results of two Phase III studies with new Acomplia product (Complainant trademark)…indicating 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 quit smoking, were able to quit in 10 weeks without post cessation weight gain….These results were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004….During 2005-2006 (i) several scientific publications have been published concerning Acomplia, (as the RIO-Lipids study published in The New England Journal of Medicine) and (ii) a .large communication has been made on this revolutionary product notably on internet….As obesity is becoming the number one health epidemic of the 21st century, there is no doubt that ACOMPLIA can be considered as a revolutionary medicine. The European Market Authorization concerning ACOMPLIA has been granted in June 2006. The product is now commercialized only in few countries like the UK, and the Germany.”
In recognition of the very large and recognized position of Complainant in the worldwide drug marketplace, of the legal status of the Trademarks (see Section 4 above), and of the considerable (“revolutionary” in Complainant’s view) impact created by the successful testing of ACOMPLIA drugs, the Panel accepts that Complainant has rights in the Trademark.
The Disputed Domain Name consists of Complainant’s Trademark with (i) the generic word “buy” and (ii) the suffix “online” and (iii) the gTLDs “com”.
Extensive UDRP jurisprudence establishes that the addition of generic words to a trademark is not sufficient to avoid confusing similarity and does not change the overall impression as being connected to Complainant. In the context of electronic commerce, the mere addition of a generic word, “buy”, to a trademark has consistently been found insufficient to avoid confusing similarity. One example involving Complainant is Sanofi-aventis v. Ju Dehua,WIPO Case No. D2005-1043, where the Panel stated: “The Panel finds that adding generic words to a domain name such as “new”, “best” and “buy” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “new, “best” and “buy” do not serve any distinguishing function but rather describe the nature of the service offered on the relevant website.”
The effect of the suffix “online” is similar. For example, in a decision involving the addition of “online” to “playboy” the panel held that the domain name was confusingly similar to the trademark “playboy”, stating: “there is broad consensus in cases under the Policy regarding words such as “online” that are merely descriptive or generic in the context of the Internet. “Online” is a common way of saying certain things can be found on the Internet. Thus the Respondent has added nothing of distinction to the Complainant’s famous mark.” Playboy Enterprises International Inc., v. Tonya FlyntFoundation,
WIPO Case No. D2001–1002.
The same conclusion was reached concerning the domain name <acompliaonline.com> in the Sanofi-aventis v. SD Shep Dog,WIPO Case No. D2004-0807, in which the Panel stated: “The use of the generic term “online” in conjunction with the Complainant’s trademark ACOMPLIA does not remove the domain name in dispute from being confusingly similar, the generic term lacking in distinctiveness.”
The presence of the gTLD “.com” has no distinguishing capacity in the context of a domain name.
The Panel finds that Complainant convincingly argues that the combination of the Trademark and the generic words “buy” and “online”, in the Disputed Domain Name makes it confusingly similar to the Trademark.
The Panel accepts Complainant’s contentions that it has rights in the Trademark and that the Disputed Domain Name is confusingly similar to the Trademark, and so concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends (and the Panel accepts as uncontroverted) that Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, Complainant contends that there is no license, consent or other right by which Respondent would have been entitled to register or use the Disputed Domain Name being Complainant’s Trademark with the generic words “buy” and “online”.
Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal status of the Trademark (see Section 4 above), and Complainant’s contentions about its major presence in the worldwide drug marketplace, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any arguments from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of legitimate interest by Respondent in the Disputed Domain Name, likely do not exist.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
UDRP jurisprudence has considered that the fact of registration of a domain name after the Complainant 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; Guardant Inc v. youngcho kim, WIPO Case No. D2001-0043).
Here, the Panel does not doubt that Respondent was well aware of Complainant’s launch of a new product under the Trademark when it registered the Disputed Domain Name, and that it possibly did so to prevent Complainant from reflecting its Trademark in a corresponding domain name in an opportunistic act to disrupt Complainant’s business.
Furthermore, paragraph 4(b)(iv) of the Policy lists as one of the typical situation as evidence of bad faith, the fact of “…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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.”
Complainant contends (and the Panel accepts as uncontroverted) that Respondent links intentionally its domain name <buy-acomplia-online.com> to websites “www.newmagrecesim.com”, “www.oligosante.com”, “www.robertmcmanus.com”, “www.loseweightloss.com”, “www.le-moins-cher.org”, which have sold counterfeit products or placebo products and others competitors’ products all related to the treatment of the obesity in competition to Complainant’s ACOMPLIA products to Respondent’s commercial advantage.
The Panel concludes that the third requirement of the Policy is met.
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 Disputed Domain Name <buy-acomplia-online.com> be transferred to Complainant.
Mark Ming-Jen Yang
Sole Panelist
Dated: June 21, 2007
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