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Sanofi-Aventis v. Direct Response Marketing aka DRM [2005] GENDND 1452 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Direct Response Marketing aka DRM

Case No. D2005-0661

1. The Parties

The Complainant is Sanofi-Aventis, Mrs. Carole Tricoire, Gentilly, France, represented by Bird & Bird Solicitors, France.

The Respondent is Direct Response Marketing aka DRM, Jersey, British Channel Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain name <acomplia-information.com> is registered with In2net Network Inc. and the domain name <acomplia-sales.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2005. On June 23, 2005, the Center transmitted by email to In2net Network Inc and Tucows a request for registrar verification in connection with the domain names at issue. On June 23, 2005, Tucows, who is also acting for In2net Network Inc., 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 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2005.

The Center appointed Gerd F. Kunze as the Sole Panelist in this matter on July 29, 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, and markets its products in the United Kingdom through a number of channels. 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 6 months priority grace period of the Paris Convention it filed an international application, registered on May 7, 2004, under number 825821, and covering amongst others the United Kingdom, and national applications in numerous 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.co.uk>, <acomplia.fr>, <acomplia.us> and <acomplia.com>.

These facts are documented and not contested by the Respondent.

B. Respondent

The Respondent registered on August 31,2004, the domain name <acomplia-sales.com> and on September 27, 2004, the domain name <acomplia-information.com>. The Complainant submitted evidence that the domain name <acomplia-information.com> was leading to a website “doteasy.com” stating that this would be the future home of “acomplia-information.com”. However, at present the domain name leads to a website “www.acompliareport.com”, which provides a collection of information about the ACOMPLIA product of the Complainant, but also links to websites where competitive products are offered for sale. The domain name <acomplia-sales.com> leads to a website providing a mail order service for the supply of prescription of medical and health products. The website offers amongst others also competitive products for weight loss treatment.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain names <acomplia-information.com> and <acomplia-sales.com> are identical or confusingly similar to its trademark ACOMPLIA in which it has rights, pointing out in this connection that many Panel decisions have considered that the addition of terms such as “information” and “sales” to the Complainant’s trademark cannot exclude confusing similarity; (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 names <acomplia-information.com> and <acomplia-sales.com> consist of the trademark ACOMPLIA of the Complainant, combined with the generic terms “information”, respectively “sales”, and the gTLD “.com”. The distinctive part of the domain names is identical with the Complainant’s trademark. The text of the domain name <acomplia-information.com>, as composed of the trademark ACOMPLIA and the word “information” makes Internet users believe that it leads to a website of the Complainant, providing information about the product, ACOMPLIA. The text of the domain name <acomplica-sales.com> invites the Internet users to purchase the ACOMPLIA product online. The gTLD “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark. Therefore there can be no doubt that the domain names are confusingly similar to the Complainant’s trademark. Internet users, typing the Respondent’s domain names will expect to arrive at a website of the Complainant as genuine source of the ACOMPLIA product and will be confused when being confronted with websites, where amongst others, links to competitive products are offered.

B. Rights or Legitimate Interests

ACOMPLIA is not a descriptive word, which the Respondent might have an interest to use in its generic sense. The Complainant has not licensed or otherwise consented to the use of its trademark by the Respondent. The Respondent uses both domain names for links to websites, where competitive products are offered for sale. This cannot be considered to be a bona fide offering of goods or services. The Respondent is no doubt not commonly known under one of the domain names in dispute. The links to websites, where competitive products are offered, cannot be considered to be a noncommercial or fair use of the domain name without intent for commercial gain:

The domain name <acomplia-information.com> is linked to a website that is not published by the Respondent but by the holder of the website “www.acompliareport.com” who provides information about the ACOMPLIA product of the Complainant, but also provides links to websites, where competitive products are offered for sale. In addition to this fact, and in the absence of any submission of the Respondent to the contrary, the Panel is satisfied that this link is not provided for free.

As concerns the domain name <acomplia-sales.com> the Respondent links the domain name to a website that is providing mail order services for the supply of prescription of medical and health products. Not only is the Respondent offering on this website competitive products, it also has created and continues to create with the wording of the domain name the impression that the ACOMPLIA product is available, despite the fact that it is not yet on the market and will not be available before 2006.

In conclusion the Panel is satisfied that the Respondent has no right and no legitimate interest in the domain names <acomplia-information.com> and <acomplia-sales.com>.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy lists as one of the typical situations as evidence of bad faith that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

The Complainant has submitted facts and evidence that the Respondent has fulfilled the conditions set out in paragraph 4(b)(iv). There can be no doubt that the Respondent knew the product, sold under the Complainant’s trademark ACOMPLIA, when it registered the domain name. This can be deducted from the construction of the domain names, consisting of the trademark ACOMPLIA of the Complainant, a coined word, and the generic terms “information” respectively “sales”. Furthermore, the Respondent links intentionally its domain name <acomplia-information.com> with a website “www.acompliareport.com”, on which information about the ACOMPLIA product of the Complainant is provided.

The domain name <acomplia-sales.com> links the user to “drm, Direct Response Marketing”, an online Pharmacy, where ACOMPLIA is not mentioned; instead under the heading “Weight loss treatment” competitive products to the ACOMPLIA product are offered for sale. Users typing the domain name <acomplia-sales.com> and expecting to arrive at a website of the Complainant or at least at a website somehow related to the Complainant, will be confused to arrive at the site of an online Pharmacy, where not ACOMPLIA is advertised, but instead competitive products are offered for sale. The Panel is satisfied that with this pattern the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

By providing with the domain name <acomplia-information.com> a link to the website “AcompliaReport” the Respondent also creates confusion of users who are typing that domain name, and are expecting to arrive at a website, where the Complainant or somebody related to it, provides information about the ACOMPLIA product. Even if the user, when arriving at that website, will be informed that the website has no relation to the Complainant, he will be attracted by the wealth of information provided on the website, but at the same time he will be exposed to the links which will lead him to websites where products in competition to the ACOMPLIA product are offered for sale.

In the absence of any submission of the Respondent there cannot be any doubt for the Panelist that the Respondent does not provide the link to the AcompliaReport Site for free.

Taking all these circumstances together, the Panel is satisfied that the Respondent registered and is using the domain names <acomplia-information> and <acomplia-sales> 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-information> and <acomplia-sales> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: August 12, 2005