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Sanofi-Aventis v. Healthcare Online [2004] GENDND 1476 (21 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Healthcare Online

Case No. D2004-0806

1. The Parties

The Complainant is Sanofi-Aventis, Paris of France, represented by Bird & Bird Solicitors, France.

The Respondent is Healthcare Online, Memphis, Tennessee of United States of America.

2. The Domain Names and Registrar

The disputed domain names <acomplia-news.com>, <acomplianews.com>, <acomplianews.net> and <acomplianews.org> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2004. On October 5, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On October 5, 2004, eNom 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, billing, 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 October 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2004.

The Center appointed Ross Carson as the sole panelist in this matter on November 15, 2004. 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 company was created by Sanofi-Synthelabo’s 2004 acquisition of Aventis’ shares.

Completion of the transaction created the No. 1 pharmaceutical group in Europe, No. 3 in the world, with pro forma 2002, consolidated sales of 25 billion Euro in its core business, and a strong direct presence in all major world markets.

The new group benefits from a large portfolio of high-growth drugs, with 9 products that individually generated annual sales of over Euro 500 million in 2003. It enjoys firmly established positions in key fast-growth therapeutic fields such as cardiovascular, thrombosis, oncology, diabetes, central nervous system, urology, internal medicine and human vaccines.

A true copy of the Complainant’s 2003 Annual Report is attached to the Complaint. Annex 3 to the Complaint.

The Complainant’s products are marketed in the United States through a number of channels: the affiliate, Sanofi-Synthelabo Inc.; an alliance with Bristol-Myers Squibb for Plavix® and Avapro®, the sales of which are not consolidated by Sanofi-Synthelabo; a 50/50 alliance with Organon on Arixtra® in 2003, with Sanofi-Synthelabo taking full control of Arixtra® in 2004; license agreements in particular on Cordarone®, Depakine® and Ticlid®.

A website specifically dedicated to US is accessible at the following address: “www.sanofi-synthelabo.us”. Annex 4 to the Complaint.

On February 16, 2004, during an information meeting, the content of which was released on the Internet, the Complainant announced early results of two Phase III studies for the new Acomplia drug, indicating that overweight and obese patients with untreated dyslipidemia lost weight in one year while improving their lipid and glucose profiles, and that smokers who had previously unsuccessfully tried to quit smoking, were able to quit in 10 weeks without post cessation weight gain. Annex 5 to the Complaint.

These results were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004. Annex 6 to the Complainant.

The ACOMPLIA pharmaceutical is expected to be launched in 2006.

As obesity is currently being recognized as a major health problem the ACOMPLIA product announcements and scientific papers relating to Phase III studies of a pharmaceutical for the treatment of overweight and obese patients created substantial interest in the medical area. Numerous domain name registrants registered over forty domain names for or including the Complainant’s trademark ACOMPLIA in the days and months immediately following the release of information and scientific papers relating to the Phase III studies for the ACOMPLIA drug.

The Complainant has filed trademark applications for ACOMPLIA in more that 100 countries including the US. A list of the Complainant’s worldwide trade mark applications or registrations for the ACOMPLIA trade mark is attached at Annex 7 to the Complaint and copies of some of the Complainant’s worldwide registration certificates for the trade mark ACOMPLIA are attached at Annex 8 to the Complaint. The United States trademark application for ACOMPLIA was filed on January 5, 2004, claiming a priority date of December 3, 2003.

The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example “www.acomplia.fr”, “www.acomplia.us” etc. Copies of the WHOIS search results for a selection of those domain names are attached at Annex 9 to the Complaint. The Complainant registered the domain name <acomplia.com> on December 18, 2003. The Complainant registered the domain name <acomplia.net> on December 18, 2003.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The Complainant submits that the domain names in dispute are confusingly similar to the Complainant’s trademark ACOMPLIA for the following reasons:

The domain names in dispute are comprised of the Complainant’s trademark ACOMPLIA with the suffix “news” and the gTLDs “.com”, “.net” or “.org”.

Many panels have held that the use of a Complainant’s trademark as the distinctive portion of a domain name in dispute is a confusingly similar use of the Complainant’s trademark. Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076.

The use of a generic term “ news” in conjunction with the Complainant’s trademark ACOMPLIA does not prevent the domain names in dispute from being found confusingly similar, as the generic term is lacking in distinctiveness.

Furthermore, the addition of the gTLDs “.com”, “.net” or “.org” which are required for registration of the domain names, has no distinguishing capacity in the context of the domain names and does not alter the value of the trademark represented in the domain names (Telecom Personal v. Namezero.com Inc., WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

The Complainant concludes that the domain names in dispute are confusingly similar to the Complainant’s trademark ACOMPLIA.

No Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names in dispute for the following reasons:

The Complainant has prior rights in the trademark ACOMPLIA, which precedes Respondent’s registration of the domain name in dispute.

Moreover, the Complainant is present in over 100 countries including USA and is well known throughout the world.

Furthermore the results of the ACOMPLIA trials were communicated worldwide, through the Internet before the registration date of the domain names in dispute. Annex 10 to the Complaint.

The disputed domain names do not appear to have been used by the Respondent at all and lead to websites which are under construction. Annex 11 to the Complaint.

There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant’s trademark ACOMPLIA.

The Respondent is not commonly known by the domain name.

There is no doubt that the Respondent is aware that ACOMPLIA corresponds to a trademark.

Indeed, the Respondent would have not registered the domain name in dispute if it had not known that a revolutionary drug will be soon marketed under the name ACOMPLIA by the Complainant.

The Respondent, who has no legitimate interest in respect of the domain names in dispute, registered the domain names with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.

Indeed, the Respondent has made no bona fide use of the domain names in dispute because of his lack of authorization to use the trademark ACOMPLIA. Furthermore, using a domain name in order to divert consumers for commercial gain cannot be characterized as a fair use. (Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066.

Registered and Used in Bad Faith

The Respondent registered the domain names in dispute on March 12, 2004, a short time after the Complainant publicly announced the early results of two Phase III studies on the drug ACOMPLIA through an information meeting, which was communicated worldwide through the Internet. Annex 5 to the Complaint. The registration of the domain names in dispute also followed the presentation of the two Phase III studies on the drug ACOMPLIA to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004. Annex 6 to the Complaint.

The registration shortly after a product launch announcement is an example of opportunistic cyber squatting.

Various panelists considered that the act of registering a domain name soon after the Complainant product launch leads to an inference of bad faith. Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011.

As far as this case is concerned, a comparison can also be made with cyber squatting cases with respect to merger or rumor of merger announcements. Pharmacia & Upjohn AB v. Monsantopharmacia.com. Inc., WIPO Case No. D2000-0446. Such an opportunistic combination of two well-known trademarks made shortly after the announcement of a merger by someone having no connection with either of the merging companies amounts to use in bad faith.

These decisions and the argument adopted are completely transposable to the present case.

There is no doubt that the Respondent, knowing of the internet reports of a new product under development to be sold under the mark ACOMPLIA by the Complainant, has registered the domain names in dispute in order to prevent the Complainant from reflecting the mark in a corresponding domain name. It is an opportunistic act which seeks to disrupt the Complainant’s business.

The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party in itself can be considered disrupting the business of the trademark owner.

The Respondent, through his web pages, offers to sell the domain names in dispute.

Indeed, even if the websites corresponding to the disputed domain names appear to be under construction, one can read the following sentence: “You may contact the owner of this domain name here if you wish to make an offer to purchase this name.” Annex 11 to the Complaint. Therefore, it is possible to make an offer to purchase any of the domain names in dispute. .

Offering to sell domain names that are confusingly similar to trademarks of others without their consent, constitute evidence of bad faith, even if the offer is not made specifically to the Complainant or its competitor.

Indeed, the offer to sell a domain name, even to a third party, supports a finding of bad faith. Trip.com Inc v. Daniel Deamone, WIPO Case No. D2001-1066.

Finally, on August 23, 2004, the Complainant wrote to the Respondent demanding the disputed domain names be transferred to the Complainant within ten days. A copy of the letter of demand is attached at Annex 12 to the Complaint. The Respondent has failed to reply and has therefore refused to transfer the disputed domain names to its legitimate owner, the Complainant.

It emerges from these facts that the domain names <acomplia-news.com>, <acomplianews.com>, <acomplianews.net>, <acomplianews.org> constitute opportunistic registrations which have been registered and used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for the Complaint to succeed, the Complainant must establish that:

i) the Respondents’ Domain Name(s) is (are) identical or confusingly similar to a trademark in which the Complainant has rights; and

ii) the Respondents’ have no rights or legitimate interests in respect to the Domain Name(s); and

iii) the Respondents’ Domain Name(s) has (have) been registered and is (are) being used in bad faith.

The Panel in Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140 notes that under the Policy, even if the respondent is in default,

“…the complainant must prove that each of these three elements are present.”

Paragraph 5(b)(i) of the Rules requires a Respondent to submit a response that shall:

“Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under paragraph (14)(b) of the Rules:

“…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.

“Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”

In the instant administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no evidence to rebut the assertions of the Complainant.

A. Identical or Confusingly Similar

The domain names in dispute are comprised of the Complainant’s trademark ACOMPLIA with the suffixes “news” and the gTLDs “.com”, “.net” or “.org” The Complainant holds a number of valid registrations for the ACOMPLIA trademark.

The use of the generic term “news” in conjunction with the Complainant’s trademark ACOMPLIA does not remove the domain names in dispute from being confusingly similar, the generic term lacking in distinctiveness.

Furthermore, the addition of the gTLDs “.com”, “.net” or “.org” which are required for registration of the domain names, has no distinguishing capacity in the context of 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, WIPO Case No. D2000-1271).

Many panels have held that the use of a Complainant’s trademark as the sole distinctive portion of a domain name in dispute is a confusingly similar use of the Complainant’s trademark. Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076.

The Panel finds that the Complainant has proven that the domain names in dispute are confusingly similar to the Complainant’s trademark ACOMPLIA.

B. Rights or Legitimate Interests

The Respondent is not commonly known by the name ACOMPLIA. The Respondent has never been authorized by the Complainant to use the trademark ACOMPLIA. The Respondent registered the domain names in dispute following the filing of applications for the trademark ACOMPLIA by the Complainant in many countries. Further, the Respondent registered the domain names in dispute immediately following the Complainant’s worldwide announcements of the results of the Phase III studies of the pharmaceutical ACOMPLIA. Annex 5, Annex 6 to the Complaint.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said disputed domain name by showing:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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.”

The Respondent chose not to file a Response demonstrating its rights and interests in the domain name in dispute.

Upon considering the evidence filed by the Complainant and the failure of the Respondent to file evidence demonstrating its rights and interests in the domain names in dispute, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

The Respondent registered the domain name in dispute on March 12, 2004, within a month after the Complainant publicly announced the early results of two Phase III studies on the drug ACOMPLIA through an information meeting, results of which were communicated the same day on the Internet. Annex 5 to the Complaint. The registration of the domain name in dispute also followed the presentation of the two Phase III studies on the drug ACOMPLIA to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004. Annex 6 to the Complaint.

The Panel infers from the Respondent’s name Healthcare Online that the Respondent is involved in reporting on selling healthcare products over the Internet. The Respondent is not related to the Complainant and has not been authorized by the Complainant to use the trademark ACOMPLIA alone or in combination as a trademark or as a domain name. The four domain names in issue are each confusingly similar to the Complainant’s registered trademark ACOMPLIA. Many trademark applications for ACOMPLIA had been filed by the Complainant throughout the world before the Respondent registered the domain name in dispute.

The Respondent’s websites associated with each of the domain names in issue are under construction. The websites include a notice that the owner may be contacted if the visitor wishes to make an offer to purchase this name. The Panel is of the view that as soon as the websites featuring one of the domain names in dispute are activated, persons using the Internet will be directed to one or more of the Respondent’s websites associated with the domain names in dispute. The domain names in dispute will create a likelihood of confusion with the Complainant’s trademark ACOMPLIA as to source, sponsorship, affiliation or endorsement of Respondent’s websites in dispute or of a product or service on the website.

In Aventis Pharma S.A. and Merrill Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002–0290, the Respondent had registered domain names comprised of the trademarked names of two pharmaceuticals each used in conjunction with the gTLD “.net”. The Panel in the Aventis case held that the use of the domain names was clearly in bad faith stating:

“By, admittedly, having knowledge of the Complainant’s mark, Respondent can be assumed to have been aware of the risk of deception and confusion that would inevitably follow if it registered and used the Domain Name under the “.net” gTLD since this could give the impression that the site and thus the Respondent was somehow endorsed by the Complainant: See Ullfrotte AB v. Bollnas Imports, WIPO Case No. D2000–1176. Not only was the Respondent not endorsed by the Complainant, it had no consensual relationship with Complaint at all. Any representation, such as here, to the contrary is clearly bad faith.”

A similar conclusion was reached by the Panel in Gorstew Limited & Unique Vacations, Inc. v. Satin Leaf, Inc. FA 000800009514. In the Gorstew Case neither of the two domains in question had been developed yet.

The Complainant states the announcements and reports carried over the Internet of the results of Two Phase III studies for the new ACOMPLIA drug created substantial interest in the medical field. The Respondent registered the domain name in dispute within weeks of the announcements and presentation of the results of scientific studies. The Respondent was positioning itself to benefit from further reports and ultimately from sale of the ACOMPLIA pharmaceutical if and when the necessary government approvals are received. Previous Panels have held that registration of a domain name incorporating a trademark so obviously connected with a Complainant immediately following an announcement or rumors of an event suggest opportunistic bad faith. Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446.

Many Panels have held that bad faith inaction, resulting from failure to provide an active website, amounts to use in bad faith when all the surrounding circumstances point to registration and use in bad faith. Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

For the various reasons discussed above, the Panel finds that the Respondent has registered and used the domain names in dispute 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 names <acomplia-news.com>, <acomplianews.com>, <acomplianews.net> and <acomplianews.org> be transferred to the Complainant.

Ross Carson
Sole Panelist

Dated: November 21, 2004