The Complainant is Sanofi-aventis of France, represented by Armfelt & Associés Selarl of France.
The Respondent is Jack Chu of United States of America.
2. The Domain Names and Registrar
The disputed domain names <acomplia-discount.com>, <acomplia-here.com>, <easy-acomplia.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2009. On March 25, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 26, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent was 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” or “UDRP”), 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 April 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2009. Due to uncertainty of status delivery the electronic Notification of Complaint and in the view of apparent non-delivery of the hard copies of the Notification, the Respondent was granted a further 7 (seven) days to indicate whether it intended to submit a Response and/or take any active part in the proceedings. The Response due date was extended to April 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 4, 2009.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on May 7, 2009. 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 sanofi-aventis is a multinational pharmaceutical company present in more than 100 countries across 5 continents. “Acomplia” is the name of Complainant's invented product for the treatment of overweight and obese patients. The Complainant has been using ACOMPLIA as the trademark on the products and acquired a number of trademark registrations in various countries or regions since 2004.
The Respondent registered the disputed domain names <acomplia-discount.com> on May 5, 2008, <easy-acomplia.com> on May 5, 2008 and <acomplia-here.com> on June 22, 2008.
5. Parties' Contentions
A. Complainant
The Complainant states that it is the largest pharmaceutical group in Europe and fourth largest in the world with presence in more than 100 countries across 5 continents.
The Complainant states that ACOMPLIA – a new product for treatment of overweight and obesity – was announced in February 2004 and registered as a trademark in many countries and regions, including France and the United States.
The Complainant contends that the disputed domain names <acomplia-discount.com>, <easy-acomplia.com>, and <acomplia-here.com> are confusingly similar to the ACOMPLIA trademark in which the Complainant has rights.
The Complainant contends that the Respondent had no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Complainant requested that the Panel issue an order that the disputed domain names <acomplia-discount.com>, <easy-acomplia.com>, <acomplia-here.com> be cancelled.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Expiry of Domain Name Registration in the Proceeding
One of the disputed domain names, <easy-acomplia.com>, was registered by the Respondent on May 5, 2008. The registration period expired on May 6, 2009, as verified by the Registrar. On March 26, 2008, the Registrar, GoDaddy.com, Inc., after receiving the notification from the Center, confirmed that the domain name would remain locked during the pending administrative proceeding until it received an order dismissing or suspending of the case. On May 4, 2009, the Center transmitted by email to GoDaddy.com, Inc. a communication noting that the Complainant would appear to have the option, according to paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy (http://www.icann.org/en/registrars/eddp.htm), to renew or restore the disputed domain name that was going to expire under the same commercial terms as the registrant. On May 4, 2009, GoDaddy.com, Inc. transmitted by email to the Center its response that the Complainant should bear the burden of ensuring the domain name not to expire. On May 5, 2009, the Center transmitted by email the communications from the Registrar to the Complainant. On May 5, 2009, the Complainant transmitted by email its response that it would not wish to renew the registration of the domain name <easy-acomplia.com>. The Panel however notes that the registrars publicly-available WhoIs shows an expiration date of May 5, 2010.
Although the ICANN Expired Domain Deletion Policy grants the Complainant's the option to renew or restore the disputed domain name that was going to expire in the proceeding, the Complainant's refusal to renew or restore does not hinder the ongoing process. The disputed domain name <easy-acomplia.com> is still subject to the proceeding.
B. Identical or Confusingly Similar
According to the Policy, paragraph 4 (a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the identity or confusing similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain names the Complainant has acquired the trademark right over the mark ACOMPLIA through registrations in a number of countries and regions, including the United States which is the Respondent's country of residence.
The disputed domain names are <acomplia-discount.com>, <easy-acomplia.com> and <acomplia-here.com>. Apart from the generic top-level domain suffix “.com”, the disputed domain names consist of “acomplia-discount”, “easy-acomplia” and “acomplia-here”. Compared with the Complainant's mark ACOMPLIA, descriptive words “discount”, “easy” or “here” are added. It is established by numerous decisions made under the Policy that adding such a descriptive word to a complainant's mark will usually not preclude a finding of confusing similarity (seeExperian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans),
WIPO Case No. D2002-0367). The Panel finds that the disputed domain names comprising of the Complainant's registered trademark ACOMPLIA in its entirety and other descriptive words are confusingly similar to the Complainant's mark.
The Complaint has proven the first element required by paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Complainant asserted that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain names.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. The Respondent did not rebut the Complainant's contention that the disputed domain names were not used in connection with any bona fide offering of goods or services. The lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complaint has proven the second element required by paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Complainant contended the Respondent had registered and is using the disputed domain names in bad faith. The Respondent did not respond.
Through examining the evidence submitted, the Panel notes that the disputed domain names are being used for a website of “www.bestliferx.com”, on which the Complainant's ACOMPLIA products, counterfeit ACOMPLIA products and other pharmaceutical products directly competing with ACOMPLIA are being sold. Since the disputed domain names were registered and are fully controlled by the Respondent, the Respondent is responsible for any use of them. The use of the disputed domain names to set up portals and then redirect to the website that is selling counterfeit or competing pharmaceutical products to ACOMPLIA is highly likely to attract and confuse the consumers with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the disputed domain names' website or of the products on the website.
The Panel finds that it is adequate to conclude that the Respondent has registered and is using the disputed domain names in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complaint successfully proves the third element required by paragraph 4(a) of the Policy.
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 names <acomplia-discount.com>, <easy-acomplia.com> and <acomplia-here.com> be cancelled.
Dr. Hong Xue Sole Panelist
Dated: May 22, 2009
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