The Complainant is Sanofi-aventis, Paris, France, represented by Armfelt & Associés Selarl, France.
The Respondent is Mr. Satyaveer Singh, New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <acompliatour.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2007. On July 6, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 6, 2007, eNom 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 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2007. The Respondent did not submit any Response but transmitted notification by email dated July 11, 2007 to the Center and to eNom that he did not wish a Panel to be appointed and wished to give the domain name to the Complainant. The Center forwarded this communication to the Complainant on July 12, 2007. The Center then notified the Respondent’s default on August 1, 2007.
The Center appointed Mary Vitoria, QC as the sole panelist in this matter on August 10, 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 India. One of the Complainant’s high-profile products is ACOMPLIA (the active ingredient of which is rimonabant) which is indicated for the treatment of obese patients with untreated dyslipidemia. ACOMPLIA was granted a European Marketing Authorisation in June 2006 and 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 in France and a few other countries. A list of the Complainant’s worldwide trademark applications or registrations for the ACOMPLIA trademark is annexed to the Complaint.
4.4 The Complainant and its affiliates, have registered numerous domain names worldwide containing the ACOMPLIA trademark, for example “www.acomplia.fr”; “www.acomplia.us”; “www.acomplia.co.uk”; “www.acomplia.com”. Copies of the Whois search results for a selection of those domain names is annexed to the Complaint.
4.5 The disputed domain name <acompliatour.com> resolves to a website which gives information about the Complainant’s ACOMPLIA product but also provides sponsored links to online pharmacies offering the Complainant’s ACOMPLIA product for sale and to sites offering competing products and therapies.
4.6 The Complainant requested that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
5.1 The Complainant asserted that the domain name <acompliatour.com> is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights for the following reasons:
(i) The Respondent’s registration consists of the use of the Complainant’s trademark in addition with the generic word “tour” and the gTLDs “com”. A wide variety of UDRP panelists have considered that the addition of generic words to trademarks is not sufficient to escape a finding of similarity and does not change the overall impression of the designation 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).
(ii) The disputed domain name incorporates the word “tour” which is a common word and does not act to distinguish the disputed domain name from the Complainant’s trademark. Further the disputed domain name incorporates the entirety of Complainant’s trademark leading to the presumption that the disputed domain name is confusingly similar to Complainant’s trademark (See EAuto LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
(iii) On the basis of these different WIPO UDRP cases, there is no doubt that the association in a domain name of the trademark ACOMPLIA, and the generic word “tour”, generates confusion. Indeed, persons accessing the domain name would be bound to believe that the domain name has a connection with the Complainant.
(iv) Furthermore, the addition of the gTLD “.com” 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 (Telecom Personal v. namezero.com,WIPO Case No. D2001-0015; Nokia Corporation v. Private Case,
WIPO Case No. D2000-1271).
(v) Consequently, because of the identity between the trademark ACOMPLIA and the disputed domain name, there is a high risk of confusion, since a consumer may think that the domain name directly refers to the Complainant’s product.
5.2 The Complainant asserted that the Respondent should be considered as having no right or legitimate interest in respect of the domain name <acompliatour.com>, for the following reasons:
(i) The Complainant has prior rights in the ACOMPLIA trademark, which precede the Respondent’s registration of the disputed domain name.
(ii) The Complainant’s trademark is present in 100 countries for ACOMPLIA, including India, where the Respondent is located, and importantly, 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.
(iv) There is no licence, consent or other right by which the Respondent would have been entitled to register or use the domain name with the Complainant’s trademark ACOMPLIA together with generic words such as “tour”.
(v) 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 of its website. 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 name used by the Respondent, leads to an active website where information about the ACOMPLIA product is provided and leads to on-line pharmacies where ACOMPLIA products or counterfeit products or placebo products and other competitive products are offered for sale.
(vii) The Respondent’s website is merely a portal for the website of a third party from which the Respondent is paid a commission. In such case, the Respondent’s does not actually offer any “bona fide genuine goods or services”. In such circumstances many previous Panels 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; Societe 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 is contested by the Complainant), many previous 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, for example, Stanley Works and Stanley Logistics Inc. v. Camp Creek,
WIPO Case No. D2000-0113, Motorola v. NewGate Internet,
WIPO Case No. D2000-0079, 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 & Logos Hotline,
WIPO Case No. D2001-1101; Sanofi-aventis v. VSA – Andrew King,
Case No. D2007-0061 and Amphenol .v. Applied Interconnect,
WIPO Case No. D2001-0296; and Sanofi-aventis v. Chris CaseNo. D2007-0047).
(ix) The Respondent has inserted links provided by the “Adsense” program from Google Inc, for which he automatically receives fees and commissions. Those links lead to several websites where competitor products are provided related to weight loss treatment. As of the filling of the Complaint, those links are: “www.rxsliming.com” “www.ukmedix.co.uk”; “www.onlineclinic.co.uk”; “www.theonlineclinic.co.uk”; “www.healthexpress.co.uk”; “www.121doc.co.uk”.
(x) Regarding the use of the Adsense Program, previous WIPO Panels have considered that such use was not relevant in determining whether the respondent has any legitimate interest in the use of the complainant’s trademark. However, they have considered that use of the Adsense Program constitutes evidence of the respondent’s bad faith. See Lilly ICOS LLC v. Brian Focker,
WIPO Case No. D2005-0729.
(xi) The Respondent would not have registered the disputed domain name if he was not aware that ACOMPLIA is a revolutionary drug against obesity, and was ready to be put on the market.
(xii) It is clear that the Respondent, who has no legitimate interest in respect of the domain name <acompliatour.com>, has registered this domain name with the intention of diverting consumers and preventing the Complainant from reflecting the trademark in a corresponding domain name.
(xiii) The Respondent has not made bona fide use of the disputed domain name because of his lack of authorization to use the ACOMPLIA trademark and sell the ACOMPLIA medicine. 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 andused inbad faith, for the following reasons:
(i) The obvious bad faith of the Respondent results from the following elements:
(a) the Respondent has no prior right and no authorization given by the Complainant concerning the ACOMPLIA trademark;
(b) the Respondent’s awareness that ACOMPLIA is a revolutionary drug against obesity;
(c) the Respondent’s use of the domain name 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 Market Authorization concerning ACOMPLIA was granted in June 2006. On October 2006, the Acomplia medicine has been put, for the first time on the market in the United Kingdom
(iii) The Respondent, knowing the Complainant was planning to market a revolutionary drug in several territories under the name of ACOMPLIA, registered the disputed domain name on December 23, 2006.
(iv) Various panelists have considered 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; 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 trademark ACOMPLIA by the Complainant, registered the disputed domain name in order to prevent the Complainant from adopting the trademark in a corresponding domain name. It is 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, may 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website”.
(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 name. This can be deduced from the construction of the domain name, consisting of the trademark ACOMPLIA of the Complainant, with the generic word “tour”, from the date of the domain name registration and from the content of the website.
(ix) The Respondent’s website provides information and offers opportunities to buy ACOMPLIA products or counterfeit products or placebo products related to the treatment of obesity. By using his website under the domain name <acompliatour.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 website, and creates a likelihood of confusion with the Complainant’s trademark.
(x) The Respondent intentionally links the disputed domain name <acompliatour.com> with on-line pharmacies providing information on and offering opportunities to buy ACOMPLIA products or counterfeit products or placebo products and other competitors’ products related to the weight loss treatment. By using the website under the domain name <acompliatour.com> to lead Internet users to third party on-line pharmacies, the Respondent is intentionally attempting, for commercial purposes to attract internet users to the Respondent’s website, and creates a likelihood of confusion with the Complainant’s trademark. One can assume that the Respondent provided these links with the clear intention of commercial gain.
(xi) Any Internet user who accesses the Respondent’s website 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 all the administrative market authorizations required, (ii) and can only be obtained by medical prescription. The use of the domain name <acompliatour.com>, 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 UDRP Panels 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, for example, Lilly ICOS LLC v. Tudor Burden,WIPO Case No. D2004-0794.
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 concludes 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 name <acompliatour.com> is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights.
6.6 The disputed domain name <acompliatour.com> is a combination of the ordinary English word “tour” together with the coined word “acomplia”. The addition of the ordinary non-distinctive word “tour” to the word “acomplia” is not sufficient to avoid a finding of confusing similarity. The Complainant’s ACOMPLIA mark has been appropriated in its entirety. It is likely that persons familiar with the Complainant’s ACOMPLIA products and marks would be confused or misled into thinking that the website <acompliatour.com> was an authorized site operated by the Complainant to provide information about its ACOMPLIA product because the use of the word “tour” in connection with the provision of information about a product or services is widespread.
6.7 The Respondent’s domain name incorporates the whole of the Complainant’s trademark ACOMPLIA. The addition of a ccTLD or gTLD to the mark does not avoid confusing similarity. See, for example, 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 the cases referred to in paragraph 5.1(i) above. 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.
6.8 The incorporation of the entirety of the Complainant’s trademark ACOMPLIA into the Respondent’s domain name <acompliatour.com> is bound to lead consumers familiar with the Complainant’s ACOMPLIA product and trademark into the belief that the domain name is one belonging to the Complainant or that the Complainant has authorized or licensed the use of its trademark to the Respondent. Consumers are thus likely to be confused as to the origin or sponsorship of the website “www.acompliatour.com” because the domain name is virtually identical and is thus confusingly similar to the Complainant’s trademark ACOMPLIA in which the Complainant has rights.
6.9 The Panel accepts the Complainant’s submissions in relation to the disputed domain name <acompliatour.com> and finds for the Complainant on the first element.
B. Rights or Legitimate Interests
6.10 There is no evidence of any rights or legitimate interest of the Respondent in the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trademark ACOMPLIA or to apply for any domain name including this trademark. The Complainant has prior rights in the trademark ACOMPLIA which precede the Respondent’s registration of the domain name in dispute.
6.11 It is highly unlikely that the Respondent devised the disputed domain name independently of and without knowledge of the Complainant’s ACOMPLIA product. Prior to registration of the disputed domain name, 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 is information about the Complainant’s ACOMPLIA product thus evidencing that the Respondent was well aware of the Complainant’s product and the trademark by which it was known world-wide.
6.12 The Respondent currently operates a website at “www.acompliatour.com”. This website contains a number of sponsored links to a variety of sites including some which appear to offer the Complainant’s ACOMPLIA product for sale while others link to sites which sell the products of the Complainant’s competitors as well as other non-competing 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 name <acompliatour.com>, being a name which is confusingly similar to the Complainant’s mark, is not fair use.
6.13 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, for example: Hoffman-La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2003-0793 and Motorola, Inc. v. NewGate Internet, Inc.,
WIPO Case No. D2000-0079 and the cases referred to in paragraph 5.2 (vii) above.
6.14 The Panel accepts the Complainant’s submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element.
C. Registered and Used in Bad Faith
6.15 The Panel has already found that it is likely that the Respondent selected the domain name in dispute knowing of the reputation of the ACOMPLIA trademark. Accordingly, the disputed domain name was registered in bad faith: America Online Inc v. Anson Chan,
WIPO Case No. D2001-0004. In the present case, as various UDRP Panelists have found registration of a confusingly similar domain name after the Complainant’s product launch gives rise to an inference of bad faith: Medestea Internazionale S.r.l. v. Chris Gaunt,WIPO Case No. D2003-0011; America online Inc v. Chan Chunkwong;
WIPO Case No. D2001-1043,
WIPO Case No. D2001-0043 Guardant Inc v. youngcho kim).
6.16 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 suggests that the business of the Respondent is the operation of a website for his own commercial gain and that he is using the Complainant’s trademark to attract Internet users to his site.
6.17 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.
6.18 The Panel is satisfied on the evidence that the Respondent knew of the ACOMPLIA product and trademark of the Complainant when he registered and used the disputed domain name. There is no apparent connection between the mark ACOMPLIA and the Respondent. 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 trademark and thereby to attract Internet users to his website.
6.19 The Panel concludes that by registering and using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s ACOMPLIA trademark as to the source, sponsorship, affiliation, or endorsement of the business through the use of the disputed domain name <acompliatour.com>. The Panel concludes that the Respondent registered and has used the disputed domain name in bad faith.
6.20 Furthermore, it is likely that some Internet users who access the Respondent’s website 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 on medical prescription. The use of the domain name <acompliatour.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 UDRP Panels 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: Lilly ICOS LLC v. Tudor Burden,
WIPO Case No. D2004-0794.
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 <acompliatour.com> be transferred to the Complainant.
Mary Vitoria, QC
Sole Panelist
Dated: August 24, 2007
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