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Sanofi-Aventis v. Billionaire Club [2004] GENDND 1488 (17 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Billionaire Club

Case No. D2004-0805

1. The Parties

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

The Respondent is Billionaire Club, Montreal, Quebec of Canada.

2. The Domain Name and Registrar

The disputed domain name <acompliarx.com> is 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 name 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 name in dispute is confusingly similar to the Complainant’s trademark ACOMPLIA for the following reasons:

The domain name in dispute is comprised of the Complainant’s trademark ACOMPLIA with the suffix “rx” and the gTLD “.com”.

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 in conjunction with the Complainant’s trademark ACOMPLIA does not prevent the domain name in dispute from being found confusingly similar, as the generic term is lacking in distinctiveness.

Furthermore, the addition of the gTLD “.com”. which is required for registration of the 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 (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 name in dispute is 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 name 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 name in dispute. Annex 10 to the Complaint.

Now, the disputed domain name is directly rerouted to another website, a portal promoting various websites notably in relation to “health products”. A copy of the web page showing that the disputed domain name leads to the above mentioned portal is attached at 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.

Moreover, by rerouting the URL address “www.acompliarx.com” to another website which is a portal promoting other “health products” websites, which provide in particular “weight loss drugs”, the Respondent is trying to benefit unfairly from the reputation of the ACOMPLIA trademark to promote the above mentioned portal and the related websites.

The Respondent, who has no legitimate interest in respect of the domain name <acompliarx.com>, has registered this domain name 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 name 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 name in dispute on March 25, 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 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 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.

The domain name in dispute resolves to a website that promotes health products including weight loss drugs, which is one of the intended uses of the ACOMPLIA drug.

Indeed one can read the following sentence at the Respondent’s website: “Health products – vitamins, Weight loss drugs…”. Annex 11 to the Complaint.

Therefore, the Respondent intentionally tried to benefit unfairly from the trademark ACOMPLIA to promote health websites and more particularly websites that promote “weight loss drugs” which is one of the beneficial results of the ACOMPLIA product.

And the fact that the address “www.acompliarx.com” reroutes automatically to another address, which promotes health websites, constitutes evidence of bad faith. Indeed, the use of a third party trademark without any prior consent to promote products and services that are similar to the products and services of the trademark supports a finding of bad faith.

The domain name in dispute is offered for sale which constitutes evidence of use in bad faith.

The WHOIS of the disputed domain name reveals that the Respondent intends to sell the domain name <acompliarx.com>.

Indeed, the address mentioned by the Respondent just after the fax number is “…CallMe Forit; Montreal, Quebec…”, “call Meforit” meaning that anybody should call the Respondent should it want to buy the domain name!

Therefore, to give a fake address involving the domain name and offering to sell it is another relevant element to establish the bad faith of the Respondent.

Moreover, an offer to sell a domain name that is confusingly similar to trademarks of others without prior consent, constitutes evidence of bad faith, even if the offer is not made officially to the Complainant or its competitor.

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

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 right owner.

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 name in dispute is comprised of the Complainant’s trademark ACOMPLIA with the suffix “rx” and the gTLD “.com”. The Complainant holds a number of valid registrations for the ACOMPLIA trademark.

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

Furthermore, the addition of the gTLD “.com” which is required for registration of the domain name, 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 name in dispute is 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 name in dispute following the filing of applications for the trademark ACOMPLIA by the Complainant in many countries. Further the Respondent registered the domain name in dispute 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.

The domain name in dispute currently resolves to another website, a portal promoting various websites notably in relation to “health products” including weight loss drugs, which is one of the uses of the ACOMPLIA pharmaceutical.

Using a domain name in order to divert consumers for commercial gain cannot be characterized as a fair use. (Trip.com Inc. v. Daniel Deamone, WIPO Case No. D2001-1066.

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 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 25, 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, 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.

Panels have found that the act of registering a domain name soon after the Complainant product launch with actual or constructive knowledge of Complainant’s trademark leads to an inference of bad faith. Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011.

On August 23, 2004, a cease and desist letter was forwarded to the Respondent by e-mail with confirmation by registered letter. The letter recited the Complainant’s rights in the trademark ACOMPLIA and the alleged breach of those rights as a result of the risk of confusion caused by registration of the domain name in dispute with the ACOMPLIA trademarks. The Respondent was provided with details for completing the relevant Registration Name Change Agreement. No Response to the cease and desist letter was received by the Complainant. The failure to respond to a cease and desist letter or complete the relevant Name Change Agreement, in certain circumstances, can lead to an inference of bad faith. Trip.com Inc. v. Daniel Deamone, WIPO Case No. D2001-1066.

Use of the Complainant’s entire trademark, without any prior consent, in a confusingly similar domain name can support an inference of bad faith. Cellular One Group v. Paul Brien, WIPO Case No. D2000 – 0028.

The domain name in dispute resolves to a website which promotes health products including weight loss drugs which is one of the intended uses of the ACOMPLIA drug. Indeed one can read the following sentence at the Respondent’s website: “Health products – vitamins, Weight loss drugs…”. Annex 11 to the Complaint.

The Respondent intentionally tried to benefit unfairly from the trademark ACOMPLIA to promote health websites and more particularly websites that promote “weight loss drugs” which is one of the beneficial results of the ACOMPLIA product.

By resolving the address “www.acompliarx.com” to another website, which promotes health websites, constitutes evidence of bad faith.

By using the domain name in dispute to resolve to another website selling wares similar to Complainant’s trademark ACOMPLIA, the Respondent has intentionally attempted to attract, for commercial gain, internet users to another on-line location, by creating a likelihood of confusion with the Complainant’s mark as to sponsorship, affiliation, or endorsement of its website or location. Such activity shows bad faith use of the domain name in dispute as set out in paragraph 4(b) (iv) of the Policy. Nokia Corporation v. Private, WIPO Case No. D2000-1271.

The Panel finds that the Complainant has proven that the Respondent registered and is using the domain name 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 name <acompliarx.com> be transferred to the Complainant.

Ross Carson
Sole Panelist

Dated: November 17, 2004