WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. VSA - Andrew King

Case No. D2007-0061

1. The Parties

The Complainant is Sanofi-aventis, Gentilly, France, represented by Armfelt & Associés Selarl, France.

The Respondent is VSA - Andrew King, Cape Town, South Africa.

2. The Domain Name and Registrar

The disputed domain name <buy-acomplia-rimonabant.com> is registered with GKG.NET, INC (formerly GK Group LLC).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2007. On January 17, 2007, the Center transmitted by email to GKG.NET, INC (formerly GK Group LLC) a request for registrar verification in connection with the domain name at issue. On the same date, January 17, 2007, GKG.NET, INC (formerly GK Group LLC) 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, 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 January 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2007.

The Center appointed David Perkins as the sole panelist in this matter on February 22, 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

4.A The Complainant

4.A.1 The Complainant is Sanofi-aventis, a French pharmaceutical company. This company was formed in the Summer of 2004 when Sanofi-Synthelabo acquired Aventis. Aventis comprised the businesses formerly conducted by Hoechst Marrion Roussel [HMR] and Rhône Poulenc.

4.A.2 Sanofi-aventis is the largest pharmaceutical company in Europe and the third largest in the world. In the calendar year 2005 it achieved consolidated net sales of Euros 27,311 billion and spent Euros 4 billion on research and development.

4.A.3 Sanofi-aventis has a presence in over 100 countries worldwide. It employs some 100,000 people worldwide, including a sales force of 35,030 and a research staff of 17,600. It currently has 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development.

4.A.4 Sanofi-aventis has established positions in 7 therapeutic fields, namely cardiovascular: thrombosis: metabolism: oncology: central nervous system: internal medicine and human vaccines. It has 8 blockbuster pharmaceuticals, namely Lovenox; Plavix; Taxotere; Eloxatin; Ambien; Allegra; Lantus and Tritace. This Complaint is concerned with a new treatment in the metabolism and cardiovascular fields.

4.B. The Complainant’s ACOMPLIA product

4.B.1 In February 2004 the Complainant announced early results of two Phase III studies of an obesity treatment, Rimonabant. Rimonabant is a CB1 receptor antagonist (CB1A). The CB1 receptor – present in the brain and in other parts of the body – has been found to be associated with an over-stimulated Endocannabinoid System (EC System). The EC System plays a role in both maintaining energy balance through the regulation of food intake and energy expenditure, and also in tobacco dependence. Rimonabant works by selectively blocking CB1 receptors, thereby helping to normalize the disrupted EC System. The studies indicated that this treatment both produces weight loss in overweight/obese people and also assists people to stop smoking without suffering post-cessation weight gain.

4.B.2 The brand name for Rimonabant is Acomplia. On June 19, 2006, a Marketing Authorisation was granted by EMEA for Rimonabant/Acomplia for the treatment of obese and overweight patients with associated risk factors, such as type 2 diabetes or dyslipidaemia. Acomplia has since been sold commercially in Germany and the United Kingdom but has yet to be launched worldwide. Notwithstanding, this has already apparently spawned a number of unlicensed domain name registrations making unauthorised use of the ACOMPLIA trademark and offering unauthorised or counterfeit Acomplia products, with the attendant risk to public health through Internet users buying such products through the websites to which such domain names resolve.

4.C The Complainant’s ACOMPLIA trademarks

4.C.1 The Complainant has filed trademark applications for ACOMPLIA in more than 100 countries. The earliest of those applications appears to have been filed in France in December 2003, the remainder being filed on dates generally spanning the period January to May 2004. Application for ACOMPLIA was filed in South Africa – the Respondent’s country of residence – on April 29, 2004.

4.C.2 A number of those applications have produced registered trademarks, of which the following selection is exhibited to the Complaint.

* The Madrid Agreement (Marks) countries comprise: Albania; Algeria; Armenia; Austria; Azerbaijan; Belarus; Belgium; Bhutan; Bosnia and Herzegovina; Bulgaria; China; Croatia; Cuba; Cyprus; Czech Republic; Democratic People’s Republic of Korea; Egypt; France; Germany; Hungary; Iran (Islamic Republic of); Italy; Kazakhstan; Kenya; Kyrgyzstan; Latvia; Lesotho; Liberia; Liechtenstein; Luxembourg; Moldova; Monaco; Mongolia; Montenegro; Morocco; Mozambique; Namibia; Netherlands; Poland; Portugal; Romania; Russian Federation; San Marino; Serbia; Sierra Leone; Slovakia; Slovenia; Spain; Sudan; Swaziland; Switzerland; Syrian Arab Republic; Tajikistan; The former Yugoslav Republic of Macedonia; Ukraine; Uzbekistan; Viet Nam.

4.D The Complainant’s Acomplia domain names

Annexed to the Complaint is a schedule of domain names registered by the Complainant which contain the ACOMPLIA trademark. There are some 77 such domain names listed. Those domain names include <acomplia.com>, <acomplia.net> and <acomplia.org> all registered December 18, 2003: <acomplia.fr> registered July 30, 2004 and <acomplia.us> registered February 16, 2004.

4.E UDRP Decisions relating to the ACOMPLIA trademark

The Complaint schedules 19 decisions under the Policy ordering transfer to the Complainant of some 90 domain names incorporating the ACOMPLIA trademark. By way of example, 2 of those Decision are exhibited.

Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2005-0363.

This involved the transfer of 6 domain names, including <rimonabant-acomplia.net> Sanofi-aventis v. Link, WIPO Case No. D2004-0810.

This involved the transfer of 8 domain names, including <acomplia-rimonabant-online.com> and <rimonabant-acomplia-online.com>.

No Response was submitted in either of these cases.

4.F The Respondent

In the absence of a Response, all that is known of the Respondent appears from the Complainant’s investigations referred to in paragraph 5 below.

5. Parties’ Contentions

A. Complainant

5.A.1 The Complaint asserts that the domain name in issue is confusingly similar to the ACOMPLIA trademark in which the Complainant has rights. The domain name <buy-acomplia-rimonabant.com> comprises the International Non-Proprietary Name [INN] “Rimonabant”, the trademark ACOMPLIA and the generic word “buy”.

5.A.2 The Complaint cites a number of cases decided under the Policy where the addition of a generic / descriptive word to the Complainant’s trademark has been found not to avoid a finding of confusing similarity. Those Decisions include Sanofi-aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661, and Sanofi-aventis v. Elizabeth and Andrew Riegel, WIPO Case No. D2005-1045, both of which involved the ACOMPLIA trademark. The first involved the transfer of the domain names <acomplia-information.com> and <acomplia-sales.com>. The second involved the transfer of 15 domain names, including <acompliablog.com>; <acompliasamples.com> and <generic-acomplia.net>.

Also cited is a URDP WIPO Decision involving another Sanofi-aventis trademark, AMBIEN a short term treatment of insomnia, where the domain names ordered to be transferred were <best-buy-ambien.com> and <new-ambien.com>: Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043.

5.A.3 As to combining the INN “Rimonabant” with the trademark ACOMPLIA, the Complaint quotes the following passage from the Decision in , Sanofi-aventis v. V. Link, WIPO Case No. D2004-0810 (referred to above).

“the association in a domain name of the trademark ACOMPLIA and the generic terminology “rimonabant”, is also confusingly similar, since the latter is an INN (International Nonproprietary Name) for pharmaceutical substances. Such INN, which is one of the components of Complainant’s product ACOMPLIA, has a chemical description and molecular/graphic formulas used by the health and pharmaceutical industries and professionals. Consequently, the Respondent adds nothing of distinction to the Complainant’s trademark in the domain names <acomplia-rimonabant-online.com> and <rimonabant-acomplia-online.com>, both of which generate high confusion.”

The same decision was reached in another case involving the ACOMPLIA trademark, Sanofi-aventis v. John Adams, WIPO Case D2006-0688, which involved the domain name <acomplia-rimonabant.net>.

5.A.4 As to rights or legitimate interest, the Complainant points to its worldwide trademark applications and registrations for Acomplia and to the items relating to the Acomplia product which have been disseminated on the Internet, examples of which in March and April 2005 are exhibited to the Complaint. From this the Complainant says there can be no doubt that the Respondent would have been fully aware of the Acomplia product when registering the domain name in issue in August 2006.

5.A.5 The Complainant confirms that the Respondent has not been licensed or otherwise authorised to use the ACOMPLIA trademark.

5.A.6 As to use of the domain name in connection with the bona fide offering of goods and services, the Complainant sets out why the Respondent’s use cannot meet the requirements of paragraph 4(c)(i) of the Policy as those requirements have been proposed in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The domain name resolves to an active website providing information about and offering to sell Sanofi-aventis’ Acomplia product. The domain name also links to websites, which offer Acomplia together with competitive products, for example: Acarbose; DietPro; Metformin and other weight loss products available at the Biogenesis AntiAging website.

5.A.6 Furthermore, the Respondent’s site fails to disclaim any relationship to Sanofi-aventis, the trademark owner. In that respect, the Complaint cites Sanofi-aventis v. Clickstream Marketing LLC, WIPO Case No. D2005-0769. There the domain name in issue was <ambien-sleep.com>. The Panel held there was no bona fide use of the AMBIEN trademark by reason, inter alia, of the fact that the Respondent’s site did nothing to disclaim any relationship with the trademark owner. Still further, the Complainant cites Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066, for the proposition that where the Respondent has not been authorized to use or register the domain name, there cannot be bona fide use.

5.A.7 As to registration in bad faith, the Complainant asserts that having regard to the worldwide publicity in relation to Acomplia which predated registration of the domain name in issue in August 2006, the Respondent must have registered that domain name in bad faith. In addition, the ACOMPLIA trademark had been filed, published and in many cases granted before the domain name was registered: see, paragraph 4.C.1 above.

5.A.8 In this respect the Complaint cites three Decision under the Policy where registration of a domain name incorporating a product trademark after product launch was held to be evidence of registration in bad faith. These are Medestea Internationale S.rl. v. Chris Gaunt, WIPO Case No. D2003-0011, which involved a cellulite reduction product, Cellasene Gold, launched in 2001 with the domain name in issue being registered shortly thereafter in April 2002. In Guardant, Inc v. youngcho kim, WIPO Case No. D2001-0043, the trademark was SKYTEAM for the global airline alliance which included Delta: AirFrance; AeroMexico and Korean Airlines. Within a month from the announcement of the Skyteam Alliance in June 2000, the Respondent registered <skyteamcargo.com> and <cargoskyteam.cm> in July 2000. The Panelist held that this led to an inference of bad faith. In America Online, Inc v. Chan Chunkwong, WIPO Case No. D2001-1043, the “aol” trademark was registered in 1996 and the Respondent’s <china-aol.com> domain name was registered on November 1, 1999 some two (2) months after America Online’s media release in September 1999 promoting the launch of its Hong Kong services. This was also held to point to an indication of a bad faith registration.

5.A.9 As to use in bad faith, the Complainant relies on paragraph 4(b)(iv) of the Policy. The domain name in issue links to the following websites:

- “www.antiaging-systems.com”; and

- “www.biogensis-antiaging.com”.

Extracts from these websites are scheduled to the Complaint.

5.A.10 The Complaint says that these websites offer not only Acomplia but also counterfeit products, placebo products and competitor products for the treatment of obesity. For example, the diet products listed in paragraph 5.A.6 above.

5.A.11 This use of the domain name in issue to link to these websites is clearly, the Complainant says, use for commercial gain to attract Internet users to the websites which offer obesity products including not only Acomplia but also quite unconnected third party products. This creates both a likelihood of confusion for Internet users and, in many cases, also serious misinformation to consumers. That is because Acomplia is not yet authorized worldwide and can only be obtained by medical prescription.

B. Respondent

In the absence of a Response, nothing is known of the Respondent except for the examples of the websites to which the domain name resolves and those other websites to which it links (as detailed above).

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

A. Identical or Confusingly Similar

6.4 The dominant component of the disputed domain name is the Complainant’s ACOMPLIA trademark. Use in juxtaposition with the INN “Rimonabant” merely serves to emphasise dominance of the brand name. Addition of the generic word “buy” does nothing to eliminate confusing similarity. The Panel has no hesitation in finding that the first requirement of paragraph 4(a) of the Policy is met. The Decisions under the Policy cited by the Complainant are entirely consistent with this finding. Indeed, the Panel cannot conceive of a situation where a domain name comprising the trademark of a medicinal product, used either singly or in combination with the INN for such product, plus a generic or descriptive word, could ever be other than confusingly similar to the trademark.

B. Rights or Legitimate Interests

6.5 Here, the Complainant trademark owner has neither licensed nor authorised use of the ACOMPLIA trademark by the Respondent. Absent such license it is for the Respondent to bring himself within any of the circumstances set out in paragraph 4(c) of the Policy or otherwise to establish rights or legitimate interest in each of the domain names in issue.

6.6 Given the widespread knowledge of the Complainant’s Acomplia product and the status of its trademark applications and registrations prior to the date in August 2006 when the domain name in issue was registered, plainly paragraph 4(c)(i) cannot apply. Nor is there any evidence that paragraph 4(c)(ii) could apply.

6.7 Accordingly, the issue is whether selling genuine Acomplia products through the website to which the domain name resolves and/or to which it links can be regarded as a fair use of that domain nameGuidance as to what can be regarded as “fair use” is given in Oki Data Americas, Inc v. ASD Inc, WIPO Case No. D2001-0903. Whilst guidelines may have their place and the so-called “Oki-Data Requirements” have been applied in many cases under the Policy since that Decision was handed down in November 2001, the Panelist in this case does not subscribe to the view that if the four (4) Oki Data requirements are met then bona fide has been established.

6.8 Rather, in this Panels view the European case law approach following the Court of Justice Decision in BMW v. Deenig [Case C-63/97 1999 / CMLR 1099] is to be preferred. That case established that fair use of a third party trademark will only apply where the trademark is used to describe the goods or service being offered. For example, it is not bona fide for a domain name to comprise the trademarks PORSCHE or BMW merely because it resolves to a website selling genuine Porsche or BMW cars. In the same way, even if the Rimonabant containing products offered on the website to which the domain name in issue resolves are genuine Acomplia 20mg tablets, that fact does not give the Respondent any rights or legitimate interest in the ACOMPLIA trademark.

6.9 This approach to use of a third party trademark in a domain name which resolves to a site offering the third party’s branded goods has been applied in a number of Decisions under the Policy. For example, from an early stage in application of the Policy, the preferred approach of panelists was to follow and apply the reasoning in The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113. That case involved the Respondent’s use of the Complainant’s ‘Stanley’ and ‘Bostitch’ trademarks in a number of StanleyBostitch domain names and other domain names including the Bostitch mark. The Respondent sought to justify these domain names on the basis that the sole purpose of the website to which the domain names in issue resolved was to promote the sale of Stanley Bostitch products. Finding that this gave the Respondent no rights or legitimate interests to use the Complainant’s trademarks in a domain name, Panelist Foster said:

“Moreover, even if the Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademark designated goods (that) are manufactured and sold through numerous retail stores. But this, without something more such as authorisation in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks.”

6.10 The rationale behind Decisions under the Policy applying the Stanley Works approach is that the right to resell or market a product does not create the right to use a trademark more extensively than required to advertise and sell the product.

“Respondent argues that CFR (the Respondent’s predecessor) had the right to sell Motorola’s products. This assertion is not disputed by Motorola, but is irrelevant, since the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products.” Motorola v. NewGate Internet, WIPO Case No. D2000-0079.

6.11 Of particular relevance to the circumstances of this Complaint are the facts in Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296, where the respondent was selling both genuine Amphenol cables and also cable assemblies comprised of parts from the complainant and parts from other companies at the website to which the domain name in issue, <amphenolcables.com>, resolved. Held, this did not give the respondent rights or legitimate interests to that domain name.

6.12 As to the right to make use of the proprietor’s trademark when reselling trademarked goods under US law – the US being the respondent’s address in that case - a three member panel in General Electric Company v. Japan, Inc, WIPO Case No. D2001-0410 said:

“A reseller of trademarked goods that is unaffiliated with or unauthorised by a trademark holder may well have certain fair use rights regarding the mark, depending upon the specific context of the use. If resellers were unable to refer to marks they would not be able to properly identify their resale goods to the public. There is a substantial body of judicial authority in the United States and elsewhere that establishes this fair use right. And the Respondent has cited some of that authority to the Panel. … However, this fair use right is carefully bounded by the requirement that a reseller not make use of the mark in a way that is likely to confuse consumers as to an affiliation between the trademark holder and the reseller. … Courts have generally disallowed the use by an unaffiliated reseller of another party’s trademark on a sign identifying a business, unless the signage expressly includes language sufficient to notify the consumer that the business is not affiliated with or authorised by the trademark holder …”

6.13 Considering the approach taken by the US Federal Courts and the European Court of Justice, a three member panel in Dr. Ing. H.c.F. Porsche AG v. Limex, LLC, WIPO Case No. 2003-0649, referring to the BMW case (supra), said of European case law:

“This approach seems also consistent with trademark case law of the European Union. See for instance the Decision of the European Court of Justice in BMW v. Deenik [Case c-63/97 1999 1 CMLR 1099] of February 1999. This concerned a mechanic and trader in second-hand / used BMW automobiles, who was not a part of BMW’s authorised Dealer Network. He was also involved with the repair / servicing of BMW vehicles. Was the respondent entitled to promote his activities using the name descriptor ‘BMW Specialist?’ Held, that a party can make use of a third party trademark only where necessary to indicate the origin of the goods or services. Such was fair use. It was not fair use to advertise the business as ‘BMW Specialist’ when this was not necessary and could well be understood as indicating the respondent was an authorised BMW Distributor / Repairer, which he was not.”

6.14 Citing, inter alia, the Decisions in Stanley Works and Motorola (referred to above) the panel in Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 held:

“… a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. It follows that Respondent in this case would only have a right to the domain name <worldnokia.com> if Complainant had specifically granted that right. Respondent has not contested that Complainant has not licensed or otherwise permitted Respondent to use the trademark NOKIA. The mere fact that Respondent sells logos and ringtones compatible with NOKIA mobile phones is not sufficient for Respondent to claim a legitimate interest.”

6.15 Accordingly, applying the rationale of these Decisions under the Policy, taken together with the approach to “fair use” taken in both Europe and the United States, the Panel finds that the Complaint satisfies the second leg of paragraph 4(a) of the Policy.

6.16 Further, even if the Oki-Data Requirements are applied to the facts of this case, on the basis of the evidence set out in paragraphs 5.A.6 and 5.A.10 to 5.A.11 above, the Panel finds that the Respondent cannot show bona fides. This is because the websites to which the domain name in issue links do not sell only the ACOMPLIA branded product. Accordingly, whether or not the Oki-Data Requirements are applied, on the facts of this case the Respondent cannot establish rights or legitimate interests to the domain name in issue.

C. Registered and Used in Bad Faith

6.17 Here, on the evidence it is abundantly clear that the domain name was registered in bad faith for the reasons set out in paragraphs 5.A.9 and 5.A.10.

6.18 As to use in bad faith, again the evidence of bad faith use is compelling – see, paragraphs 5.A.10 to 5.A.12 above. Quite apart from the Respondent’s activities falling within paragraph 4(b)(iv) of the Policy, it follows from the Panel’s decision that the Respondent cannot show rights or legitimate interests in the domain name that use of that domain name will necessarily be in bad faith. Accordingly, the Complaint meets the twin requirements of paragraph 4(a)(iii) 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 name, <buy-acomplia-rimonabant.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: March 8, 2007