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Sanofi-Aventis v. Renars Jeromans [2005] GENDND 1434 (26 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Renars Jeromans

Case No. D2005-0705

1. The Parties

The Complainant is Sanofi-Aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.

The Respondent is Renars Jeromans, Riga, Latvia.

2. The Domain Name and Registrar

The disputed domain name <eccomplia.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2005. On July 5, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same day, Go Daddy Software 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 July 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2005.

On July 27, 2005, the Respondent sent an email to the Center asserting that about two months earlier he had written to the Center proposing that the Center compensate him for his domain name registration. The Center replied that it had never received any communication from the Respondent. The Respondent did not react to this information and did not submit any Response to the Complaint. Accordingly, the Center notified the Respondent’s default on August 8, 2005.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on August 15, 2005. 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

A. Complainant

The Complainant is one of the world’s largest pharmaceutical companies. It was created as of December 31, 2004, through the merger of Sanofi-Synthélabo with Aventis. It is a multinational company with presence in over 100 countries all over the world.

On February 16, 2004, during an information meeting, of which the content was dispersed on the Internet, the Complainant announced results of studies relating to a new pharmaceutical preparation, to be marketed under the trademark ACOMPLIA, which is expected to be launched in 2006, and which is considered to be revolutionary in the field of the treatment of obesity and smoking cessation. These results were also presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004.

The Complainant applied for registration in class 5 of the international classification of the trademark ACOMPLIA in France on December 3, 2003 (registered under number 33260481). During the six months priority grace period of the Paris Convention it filed an international application (registration number 825821), extending amongst other countries to Latvia, and national applications in many other countries, including the United States (application dated January 5, 2004, registered under number 2941824 on April 19, 2005).

The Complainant also registered many domain names worldwide containing the trademark ACOMPLIA, including the domain names <acomplia.com>, <acomplia.fr>, <acomplia.us> and <www.acomplia.lv>.

On April 7, 2005, the representatives of the Complainant sent a warning letter to the Respondent.

These facts are documented and not contested by the Respondent.

B. Respondent

The Respondent registered on November 10, 2004, the domain name <eccomplia.com>. The domain name leads to a website of the Registrar, where, under the heading: “Coming Soon” it is mentioned that the domain name is parked for free, as a courtesy of GoDaddy.com. The Respondent did not reply to the warning letter of the Complainant, dated April 7, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <eccomplia.com> is identical or confusingly similar to its trademark ACOMPLIA in which it has rights; it considers that the slight misspelling of the trademark ACOMPLIA is a typical case of typosquatting; (B) the Respondent has no rights ore legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <eccomplia.com> is not identical to the trademark ACOMPLIA of the Complainant. However, it is identical to the last seven letters of the trademark ACOMPLIA; only the first letter “a” has been replaced by the letters “ec”. Phonetically, in many languages such as English, French and German, the addition of a second “c” does not change the pronunciation of the domain name as compared to the trademark. Consequently, the only phonetic difference between the two words consists of the two vocals “a” respectively “e” which are very similar and are sometimes even pronounced in the same manner. The gtld “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark. Therefore, phonetically the domain name <eccomplia.com> is confusingly similar to the trademark ACOMPLIA. Also confusing similarity in writing cannot be denied. “eccomplia” is, as the Complainant rightly underlines, a misspelling of the word “acomplia”. Users may mistype the trademark ACOMPLIA of the Complainant and will be confused when being confronted with a website of the Registrar, where the Registrar has parked the domain name and is advertising its services, whilst they expected to arrive at a website of the Complainant as genuine source of the ACOMPLIA product. Furthermore, the combination of the letters “ec” may be understood as an abbreviation for “e-commerce” and other users may, faced with the domain name <eccomplia.com>, understand it as a name, chosen by the Complainant, that leads to a website, where the ACOMPLIA product of the Complainant is offered in e-commerce. Also these users will be confused when arriving at the website of the Registrar, where the domain is parked for free.

In conclusion and in the context of the present case, the Panel is satisfied that the domain name <eccomplia.com> is confusingly similar to the trademark ACOMPLIA in which the Complainant has rights.

B. Rights or Legitimate Interests

The word “acomplia” is not a descriptive word. It is known to interested circles as the trademark of the Complainant’s product, earmarked for a launch in 2006. The Complainant has not licensed or otherwise consented to the use of its trademark ACOMPLIA to the Respondent. The Respondent apparently does not use, nor has made any preparations to use, the domain name <eccomplia.com> in connection with a bona fide offering of goods or services. He cannot therefore be commonly known by that domain name. Furthermore, the Respondent does not make any noncommercial use of the domain name. The Respondent simply has parked for free the domain name on a website of the Registrar.

Even if the domain name is not identical to the trademark of the Complainant, the Panel is satisfied that the Respondent knew the Acomplia product when, in November 2004, some month after the presentation of the product considered to be revolutionary in the field of obesity and smoking cessation, he registered the domain name. First of all, the similarity between the domain name and the trademark is so apparent that it cannot be imagined that the Respondent invented the word “eccomplia” without being aware of ACOMPLIA. Secondly, the Respondent has parked the domain name for more than nine months, and apparently he has made no preparations for using it. Finally, the Panel is convinced that the Respondent would have submitted a Response with plausible explications if he had not known the ACOMPLIA product and trademark and if he had any bona fide intentions to use that domain name.

Failing any submission of the Respondent, the Panel therefore is satisfied that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Respondent does not actively use his domain name and the Respondent did not offer the domain name to the Complainant for sale in excess of his out of pocket expenses. It has therefore to be considered whether the simple registration and stockpiling of the domain name, taking into account all circumstances of the case, as submitted and evidenced by the Complainant, may be considered to be registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.

(i) Registration in bad faith

As said before, the Respondent cannot have ignored the trademark ACOMPLIA. He registered it only a few months after the publication of the results of a study about the new revolutionary drug Acomplia and the representation of these results at the American College of Cardiology annual meeting in New Orleans, dated March 9, 2004. In view of these facts, it cannot reasonably be imagined that the Respondent constructed the domain name <eccomplia.com>, as an invitation for Internet users to buy a product named Acomplia, without knowing the product of the Complainant.

Under these circumstances it is difficult to conceive that the Respondent had any good faith intention to use the domain name <eccomplia.com> when registering it.

In the absence of any submission of the Respondent, and taking into account these findings, together with the findings under section 6(B) that the Respondent has no rights or interests in the domain name, the Panel is therefore satisfied that the domain name <eccomplia.com> has been registered in bad faith.

(ii) Use in bad faith

For the Complainant to succeed, he also has to prove that the Respondent is using the domain name in bad faith.

The administrative panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 has convincingly argued that the provisions of the Uniform Domain Name Dispute Resolution Policy in paragraph 4(b) support the assumption that inaction is within the concept of a domain name being registered and used in bad faith (paragraph 4(a)(iii) of the Policy). It depends therefore on all circumstances of the case whether it can be said that the Respondent is acting in bad faith.

The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b)(i)-(iii) of the Policy can constitute that the domain name is being used by the Respondent in bad faith.

The Panel considers that the sum of the following circumstances justifies such a conclusion:

- The Complainant’s product to be sold under the trademark ACOMPLIA has been presented as a revolutionary drug in the field of the treatment of obesity and smoking cessation;

- The Respondent has submitted no evidence whatsoever of any good faith use of the domain name <eccomplia.com>, or any plan for a bona fide use of his domain name;

- In contrast to the Telstra decision, the Respondent, after registration of the domain name <eccomplia.com>, did not remain totally inactive. He profited from the possibility offered by the Registrar to park for free his domain name, using the slogan “Coming soon”, on a website provided by the Registrar, where the services of the Registrar are offered;

- The Respondent did not reply to the April 7, 2005 warning letter of the Complainant, instead he asserted in an email addressed to the Center on July 21, 2005, that he had written about two months earlier to the Center and had proposed to the Center to compensate his domain registration expenses, calculated by him at about 8$. He continued to write: “It seems going to arbitration and spending Aventis money is way more interesting for you”. The Center replied that it had never received such mail from the Respondent. This message should even more have been a reason for the Respondent to respond to the Complaint. It is difficult to understand why the Respondent wrote to the Center, which by no means is competent to compensate him for his out of pocket expenses with his Registrar (and this cannot have escaped his attention), instead of replying to the Complainant’s warning letter or at least to respond to the Complaint. When reading further in the Respondent’s email to the Center that he threatens to publish the decision of the Panel on his website, he overlooks that he himself is at the origin of this procedure since he registered the domain name <eccomplia.com>; The Panel takes this behavior of the Respondent as another sign of his acting in bad faith;

- at the same time, the existence of the domain name furnishes the Respondent with an instrument that allows him to activate a website in such a manner as to divert Complainant’s customers to his website where they would expect to be able to buy the Complainant’s product Acomplia online, whilst the launch of the product is earmarked for 2006, only;

- absent any submission of the Respondent, it is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being trademark infringement or an infringement of consumer protection legislation.

Taking into account all these particular circumstances, the Panel concludes that the Respondent’s passive holding of the domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered and is being used 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, <eccomplia.com>, be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: August 26, 2005