WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh
Case No. D2007-0540
1. The Parties
Complainant is Sanofi-Aventis, Paris, France, represented by Armfelt & Associés Selarl, France.
Respondents are DomainsByProxy.com, Scottsdale, Arizona, United States of America; and Ravikant Singh, New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <acompliaslim.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2007. On April 11, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 12, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent Ravikant Singh is listed as the registrant and providing the contact details for the administrative and technical contact. Complainant filed an amendment to the Complaint on April 19, 2007. 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 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2007. The Response was filed with the Center on May 9, 2007.
The Center appointed Gary J. Nelson as the sole panelist in this matter on May 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.
On May 24, 2007, the Complainant submitted a Supplemental Filing. No express provision is made under the Rules for supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. The Panel has not taken Complainant’s Supplemental Filing in consideration in reaching its decision.
4. Factual Background
Complainant owns trademark registrations and applications for ACOMPLIA in more than one hundred countries. Complainant also owns numerous ACOMPLIA-based domain names.
There have been numerous UDRP domain name decisions issued related to Complainant’s ACOMPLIA trademark. All decisions have been in favor of Complainant.
On February 16, 2004, Complainant publically announced the favorable results of its Phase III studies for its ACOMPLIA branded pharmaceutical product. Subsequent to this announcement, numerous promotional information related to the ACOMPLIA branded product has been widely distributed.
Respondent registered the <acompliaslim.com> domain name on September 28, 2005.
5. Parties’ Contentions
A. Complainant
Complainant makes the following allegations:
Complainant is a well-known pharmaceutical company established in 2004 when two other well known pharmaceutical companies merged, Sanofi and Synthelabo. Today, the Complainant is the largest pharmaceutical group in Europe and the third largest in the world, with net sales of EUR 27,311 billion in 2005 alone.
Complainant is a multi-national company with a presence in more than 100 countries across five continents. Complainant controls a large portfolio of high-growth drugs with at least eight blockbuster pharmaceutical sellers, such as LOVENOX, PLAVIX, TAXOTERE, ELOXATIN, AMBIEN, ALLEGRA, LANTUS and TRITACE. Complainant enjoys firmly established positions in seven key therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
Complainant employs approximately 100,000 people worldwide, with a sales force of 35,030 and a research staff of 17,600 working on 127 development projects.
Complainant’s “Acomplia” product is a revolutionary pharmaceutical product designed to combat obesity, the number one health epidemic of the 21st century. While the “Acomplia” product is currently only available in certain countries, Complainant anticipates a worldwide launch in the near future.
Complainant owns trademark rights in ACOMPLIA for pharmaceutical products. Complainant has prior rights in the ACOMPLIA trademark which precede Respondent’s registration of the <acompliaslim.com> domain name.
The <acompliaslim.com> domain name is confusingly similar to Complainant’s ACOMPLIA trademark.
Respondent has no right or legitimate interest in the <acompliaslim.com> domain name, and Complainant has not licensed, consented or granted any right in the ACOMPLIA trademark to Respondent.
Respondent registered and is using the <acompliaslim.com> domain name in bad faith.
B. Respondent
Respondent makes the following allegations:
Respondent operates a website at “acompliaslim.com”. The use of disclaimers stating that the website is neither affiliated with nor endorsed by Complainant is sufficient to overcome the allegation of confusing similarity between the ACOMPLIA trademark and the <acompliaslim.com> domain name.
Respondent admits to being aware that previous UDRP Panel decisions have held that the mere addition of a generic word to a registered trademark is insufficient to avoid a finding of confusing similarity.
Respondent has rights and a legitimate interest in the <acompliaslim.com> domain name because the sole purpose of acquiring the domain name was to update the interested public about the latest news and information about the ACOMPLIA branded product.
Prior to the registration of the <acompliaslim.com> domain name, Respondent was aware that the ACOMPLIA-branded product was a revolutionary drug capable of fighting obesity.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of numerous trademark registrations and pending applications for ACOMPLIA throughout the world. Therefore, Complainant has established rights in this trademark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s <acompliaslim.com> domain name is confusingly similar to Complainant’s ACOMPLIA trademark because it incorporates the entirety of Complainant’s trademark and merely adds the generic phrase “slim” and the generic top-level “.com” domain name. Neither the addition of a generic phrase to another’s trademark nor the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); See also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, Paragraph4(a)(i) is satisfied).
Confusing similarity is especially acute in this case where the generic phrase “slim” has been tagged onto Complainant’s ACOMPLIA trademark and relates to the products provided by Complainant. Specifically, the term “slim” describes the alleged effect on members of the general public who elect to consume Complainant’s ACOMPLIA branded pharmaceutical product, in that the product is a weight loss treatment. See Accor v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by respondent is descriptive of the complainant’s goods or services marketed in relation to the trademark”). In this case, the Panel concludes the consuming public will understand that the addition of the word “slim” to the ACOMPLIA trademark is merely the addition of a descriptive/generic term describing the desired result of taking Complainant’s product.
Further, in the Response submitted by Respondent, the Respondent acknowledges understanding that “the mere addition of a generic word to a registered trademark has consistently been deemed insufficient to avoid confusing similarity under previous Panel decisions”. In light of this admission, the Panel does not believe the Respondent will be surprised that the Panel finds confusing similarity between the <acompliaslim.com> domain name and Complainant’s ACOMPLIA trademark.
Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the <acompliaslim.com> domain name.
B. Rights or Legitimate Interests
The Panel finds that Respondent does not own any rights or have legitimate interests in the <acompliaslim.com> domain name.
Complainant alleges, and Respondent does not deny, that Respondent is operating a website that is merely a portal for the websites of third parties by whom Respondent is paid a commission. This use of a website tied to a complainant’s trademark is not a bona fide use of the domain name. See Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”). Other UDRP Panel decisions have held the same in similar factual scenarios. See Société des Hotels Meridien v. Modern Limited Cayman Web Development, WIPO Case No. D2004-0321; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123.
Respondent claims that the Respondent has a legitimate right and interest in the contested domain name because the Respondent is offering genuine “Acomplia” products on the corresponding website. Even if this allegation is true, this fact does not establish that Respondent is making a bona fide use of the contested domain name.
The incorporation of someone else’s trademark into a domain name, designed to attract Internet users to Respondent’s website where Respondent is selling genuine product branded with that trademark, does not provide the Respondent with the right to use that trademark in the corresponding domain name. The mere fact that the owner of a website is selling another’s branded product on the Internet does not give the owner of the website the right to register a domain name incorporating another’s trademark. See Stanley Works and Stanley Logistics, Inc. v. Camp Creek, WIPO Case No. D2000-0113 (“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 trademarks designated goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks”).
Complainant has proven the requirement of Policy, paragraph 4(a)(ii) for the <acompliaslim.com> domain name and Respondent has failed to prove rights or legitimate interests in this same domain name.
C. Registered and Used in Bad Faith
The Panel finds the Respondent registered and is using the <acompliaslim.com> domain name in bad faith.
At the time Respondent registered the <acompliaslim.com> domain name, Respondent admits to being aware of Complainant’s trademark rights in ACOMPLIA and that Complainant was in the process of launching the product on a worldwide basis. This fact is sufficient to create 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.
Respondent acknowledges the “Acomplia” product is a treatment for obesity and an important weight loss drug. In this context, the combination of the word “slim” with a trademark for a weight loss drug is sufficient to find Registrant registered and is using the domain name in bad faith. See F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717 (“the mere fact that the suffix ‘weightlosswith’, chosen by the Respondent, describes the sought effect of the products marketed by the Complainant under the trademark XENICAL is, according to this Panel, an uncontestable proof of that registration of the disputed domain name was made in bad faith”).
Further, the Panel concludes the operation of the website corresponding to <acompliaslim.com> is the use of a domain name by the Respondent with the intent to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s ACOMPLIA trademark in direct violation of Paragraph 4(b)(iv) of the Policy.
Complainant has proven the requirement of Policy, paragraph 4(a)(iii) in regard to the <acompliaslim.com> domain name.
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 <acompliaslim.com> be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Dated: June 5, 2007