The Complainant is Sanofi-aventis, Gentilly, France, represented internally.
The Respondent is Gigabyte Technologies, Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <buyacompliadietpills.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2008. On June 19, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 19, 2008, GoDaddy.com, Inc. 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 June 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2008.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on August 4, 2008. 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 one of the largest manufacturers of pharmaceutical products in the world, with presence in more than 100 countries across 5 continents.
On February 16, 2004, during an information meeting, the Complainant announced, as result of two Phase III studies, a new revolutionary medicine, called Acomplia, a weight-loss product.
The new product was presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004 and during 2005-2006 in several scientific publications. A large communication was made on this revolutionary product, notably on the Internet.
The European Market Authorization for the product was granted in June 2006, and the product is now commercialized in several countries like the United Kingdom of Great Britain and Northern Ireland and Germany.
The Complainant has a large number of worldwide trademark registrations for ACOMPLIA, evidence of which has been submitted by the Complainant and annexed to the Complaint.
The ACOMPLIA trademark was registered in more than 100 countries, including India. Indeed, the Complainant owns an Indian trademark registration for ACOMPLIA No. 1278673 filed on April 15, 2004 and registered on January 21, 2006 for the goods included in the international class 5.
The Complainant has also a large number of domain name registrations that reflect the ACOMPLIA trademark, including <acomplia.com>, <acomplia.fr>, and <acomplia.us>. Those domain names resolve to websites containing official information on the Acomplia product.
The disputed domain name was registered on January 16, 2007.
The disputed domain name leads to an active web site where information about the Acomplia product is provided and resolves to several on-line pharmacies where the Acomplia products or counterfeit products or placebo products and/or other competitor products are offered for sale.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name <buyacompliadietpills.com> is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights because it incorporates the entirety of the Complainant's trademark with the addition of the generic word “buy”, the generic words used in the medical market “Dietpills” and the gTLDs “com”. The addition of generic or descriptive words to trademarks is not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant.
Furthermore, the addition of the gTLDs “.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.
The Complainant contends to have prior rights in the ACOMPLIA trademark, which precede the Respondent's registration of the disputed domain name. Moreover, the Complainant contends that ACOMPLIA trademarks are well-known throughout the world.
The Complainant contends that there is no license, consent, or other right by which the Respondent would have been entitled to register or use the disputed domain name incorporating the Complainant's ACOMPLIA trademark.
There is no doubt that the Respondent is aware that ACOMPLIA corresponds to a revolutionary drug against the obesity and, therefore, to a trademark in respect of the content of its website. Therefore, the Respondent's use cannot be considered as a basis for a bona fide offering of goods or services. The disputed domain name leads to an active website where information about the Acomplia product is provided and leads to several on-line pharmacies where the Acomplia products or counterfeit products or placebo products and/or other competitor products are offered for sale. Thus, the Respondent's website is merely a portal for the websites of a third party from which the Respondent is paid a commission.
The Complainant contends that the Respondent has registered the disputed domain name with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith since the Respondent knew of the Complainant's widely-known Acomplia product, and, by registering and using the disputed domain name <buyacompliadietpills.com>, 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.
Then, the domain name <buyacompliadietpills.com> constitutes an opportunistic registration, which has been made and used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the domain name registered by the Respondent 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 registered by the Respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's ACOMPLIA trademark, which may be considered a strong, distinctive, and widely-known mark, on the basis of the worldwide announcement concerning the launch of the product distinguished by said trademark, the fact that the Acomplia product is a revolutionary drug against obesity, and the reputation and goodwill in connection with the high quality medical goods and services offered by the Complainant.
Moreover, the Complainant has provided documentation that the Complainant holds a large number of valid registrations for the ACOMPLIA trademark.
The domain name at issue incorporates in its entirety the Complainant's trademark ACOMPLIA; the only differences are the mere adjunction of the terms “buy”, “dietpills”, and the suffix “.com”.
The mere addition of a generic word to a registered trademark has consistently been deemed insufficient to avoid confusing similarity under previous Panel decisions under the UDRP, similarly to the present case (see 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 services offered on the relevant website.”; see also America Online, Inc. v. YetecK Communication, Inc.,
WIPO Case No. D2001-0055, GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195, Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987, for the addition of a geographical indicator, see Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709, PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865).
Furthermore, the Panel finds that the addition of the generic term “dietpills” used in the medical market (the Complainant's business activity) and related to weight loss treatment is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with, or connected to the Complainant.
The Panel believes that people viewing the disputed domain name without awareness of its content may think that the domain name is in some way connected to and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206, CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul,
WIPO Case No. D2004-0988).
With regards to the suffix “.com” (which indicates that the domain name is registered in the .com gTLD), as it was established in many previous decisions (see A.P. Møller v.Web Society,
WIPO Case No. D2000-0135,Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / [email protected],WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed, the suffix is a necessary component of the domain name and does not give any distinctiveness.
Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported with evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the domain name, such as
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the domain name (as an individual, business or other organization), even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial 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.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.
The Respondent is not generally known by the ACOMPLIA mark or the disputed domain name, and it has not acquired any trademark or service mark rights in that name or mark. Moreover, the Respondent was not licensed or otherwise authorized to use the Complainant's trademark and to register it as a domain name.
Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the domain name at issue, the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant's trademark ACOMPLIA, diverting Internet users to websites where the Acomplia products or counterfeit products or placebo products and/or other competitors products are offered for sale, generating gain for the Respondent.
It has to be added that, even if the Respondent is directly selling the genuine Acomplia product, it is not sufficient here to give the Respondent a right or a legitimate interest to use the Complainant's trademark in the domain name (see The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc.,
WIPO Case No. D2000-0113 and Sanofi-aventis v. Chris,
WIPO Case No. D2007-0047).
Therefore, the Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the domain name was registered and is being used in bad faith.
The Complainant's ACOMPLIA trademark and products are very widely-known throughout the world. Moreover, considering the widespread diffusion over the Internet that Acomplia is a revolutionary drug against obesity and the Complainant's prior trademark registrations (including a registration in India where the Respondent seems to reside), the Respondent most likely was aware of the trademark when it registered the domain name at issue.
The choice of the disputed domain name by the Respondent in the Panel's view could not result from a mere coincidence. Indeed, the Respondent's awareness of the Complainant's products and rights is suggested by the fact that the Respondent registered a domain name just consisting of the Complainant's mark ACOMPLIA with the adding of the generic words “buy” and “dietpills”, which clearly relates to the Complainant's products (drugs against obesity) (see Sanofi-aventis v. Debra Cook,WIPO Case No. D2007-1941, Sanofi-aventis v. BAZ,WIPO Case No. D2007-1940).
In line with other prior decisions (Ferrero S.p.A. v. Publinord S.r.l.,
WIPO Case No. D2002-0395, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,
WIPO Case No. D2000-0226), the Panel believes that, in the absence of any right or legitimate interest and any contrary evidence by the Respondent, the Respondent's registration of a domain name confusingly similar to the Complainant's widely-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,
WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc.,
WIPO Case No. D2007-1411 mentioned in the Complaint).
Concerning the use of the domain name, the Complainant has proven that the disputed domain name resolves to a web page containing links to various on-line pharmacies providing information on and offering to buy the Acomplia products or counterfeit products or placebo products and other competitors' products related to the weight loss treatment.
In the Panel's opinion, the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach a website corresponding to the Complainant and to obtain information or to buy the Complainant's product, to on-line pharmacies by creating a likelihood of confusion with the Complainant's trademark and products.
By exploiting the renown of the ACOMPLIA trademark, the Respondent diverts Internet users looking for the Complainant's website and seeks to gain profit out of the domain name by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (see MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,
WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).
In light of the above circumstances, the Panel is satisfied that the third element is met and that the domain name <buyacompliadietpills.com> was registered and is being used 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 <buyacompliadietpills.com> be cancelled.
Alessandra Ferreri Sole Panelist
Dated: August 18, 2008
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