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Sanofi-aventis v. Milton R. Benjamin [2005] GENDND 1453 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Milton R. Benjamin

Case No. D2005-0544

1. The Parties

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

The Respondent is Milton R. Benjamin, Vero Beach, Florida, United States of America, represented by Fred von Lohmann, United States of America.

2. The Domain Name and Registrar

The disputed domain name <acompliareport.com> is registered with R&K Global Business Services, Inc. d/b/a 000Domains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2005. On May 20, 2005, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000Domains.com a request for registrar verification in connection with the domain name at issue. On the same day, R&K Global Business Services, Inc. d/b/a 000Domains.com 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 June 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2005. The Response was filed with the Center on June 27, 2005.

The Center appointed Gerd F. Kunze as the Sole Panelist in this matter on July 20, 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.

In its Response, the Respondent did not submit arguments or evidence in reply to the arguments and evidence of the Complainant. Instead he requested the Panel to stay the proceedings, referring to the fact that, on June 5, 2004, he had initiated court proceedings (Complaint for declaratory judgment, seeking declaratory relief of non-infringement of trademarks) in the United States District Court for the Northern District of California concerning the right to use the domain name. The Respondent furthermore requested that the Panel extend the time to file a response to the specific statements and allegations made in the Complaint until the Panel rules on the foregoing request to stay the proceeding.

The Panel granted the extension of time, requested by the Respondent. However, in his “Surreply”, submitted within the granted time limit, the Respondent repeated his request to stay the proceedings and declined to respond to the merits of the case.

4. Factual Background

A. The 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. 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 (registration number 825821) 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.fr>, <acomplia.us> and <acomplia.com>.

These facts are documented and not contested by the Respondent.

B. The Respondent

The Respondent registered on March 30, 2004, the domain name <acompliareport.com> which leads to a website bearing the heading “AcompliaNews” and the subheading “Independent source of news and reviews about the new drug Acomplia”.

The website is constructed as follows: The middle column of the website contains an enormous number of links to articles, news and reports about the Complainant’s ACOPMPLIA product, whilst the left hand column and the right hand column are used for links to other websites. On the right hand column a link to the website “www.obesityweek.org” is provided. The Respondent is President of Medical Week News Inc, the Co-Complainant in the court action, initiated by the Respondent. In this Court action it is submitted that Medical Week News Inc. is a health news network that operates several websites, including “www.acompliareport.com”. Since not only the website contains that link to the website “www.obesityweek.org”, but also the latter website contains at the same upper right hand location a corresponding link to the disputed website “www.acompliareport.com”, the Panel concludes that both websites are published by Medical Week News Inc. The discussed link in the right hand column is followed by links to websites, where products in the field of obesity treatment are offered for sale by Internet pharmacies. On the left hand column also a number of links to websites are provided, where products in the field of obesity treatment are offered for sale. On the bottom of the site, under the heading: HON CODE, it is stated that the publisher is subscribing to the principles of the HON (Health on the Net) foundation, a code of Conduct for medical and health websites. When clicking on the link to the HON CODE site in order to verify the correctness of the statement, it appears that the statement is true for the website “www.obesityweek.org”, however not for the website “www.acompliareport.com”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <acompliareport.com> is identical or confusingly similar to its trademark ACOMPLIA in which it has rights; It points out in this connection that many panel decisions have considered that the addition of generic terms such as “report” to the Complainant’s trademark cannot exclude confusing similarity; (B) the Respondent has no rights or legitimate interests in respect of the domain name; It points out in this connection that it has never attempted to prevent the Respondent from disseminating any information about the product ACOMPLIA; (C) the domain name was registered and is being used in bad faith; It submits in this connection that the Respondent registered and is using the domain name <acompliareport.com> for the purpose of promoting the sale of products that compete or will compete with its product.

B. Respondent

The Respondent submits that the domain name <acompliareport.com> does not create confusion with the Complainant’s trademark and that he is making fair use of the domain name. For his use of the domain name and the contents of the website “www.acompliareport.com” he relies on the principle of free speech as guaranteed by the Constitution of the United States of America.

The Respondent furthermore submits that he has initiated a court proceeding in the United States District Court for the Northern District of California concerning the right to use the disputed domain name. A copy of the Complaint for Declaratory Judgment of non-infringement is added to the Response. The Respondent refers to Rule 18 of the Policy and requests that the Panel stays the administrative proceeding pending the resolution of the U.S. court proceedings. The Panel is, however, of the opinion that the facts of the case and the arguments and evidence submitted by the parties do not justify a decision of the Panel to stay the proceedings.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <acompliareport.com> consists of the trademark ACOMPLIA of the Complainant, combined with the generic term “report”, and the gTLD “.com”. The distinctive part of the domain name is identical with the Complainant’s trademark. The text of the domain name <acompliareport.com>, as composed of the trademark ACOMPLIA and the word “report” makes Internet users believe that it leads to a website of the Complainant, providing information about the product ACOMPLIA. 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 name is confusingly similar to the Complainant’s trademark. Internet users, typing the Respondent’s domain name 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 a website where not only information about the ACOMPLIA product is provided but, amongst others, also 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 descriptive meaning. The Complainant has not licensed or otherwise consented to the use of its trademark by the Respondent. As discussed under 4B, the Respondent uses the domain name <acompliareport.com> for a website, where under the heading “AcompliaReport” information about the ACOMPLIA product of the Complainant is provided, but also a number of links lead to websites, where competitive products for the treatment of obesity are offered for sale. This cannot be considered to be a bona fide offering of goods or services, and the Respondent himself is not offering any goods or services for sale. The Respondent did not assert to be commonly known under the domain name in dispute. However, the Respondent believes that as a journalist, based on the principle of free speech, he makes a non-commercial fair use of the domain name.

Under the UDRP a number of decisions have dealt with the issue of free speech submitted as justification for the use of a domain name containing the Complainant’s trademark. In some cases the request of the Complainant to transfer or cancel the domain name was denied, but in the majority of cases the argument of free speech was not accepted by the panel. In The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A6A Systems Solutions and Alberto Rodriguez WIPO Case No. D2002-0823 the panel found: “Respondents can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainant’s mark. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression.” This decision has been cited by many panelists in more recent decisions. If the Panel in the present case intended to base its decision on this reasoning it would indeed have stayed the proceedings and left it to the District Court to decide on the merits.

However, even if one agrees with the opinion of the Respondent that, under the principle of free speech, the Respondent has a legitimate interest to use the domain name <acompliareport.com> for reporting news and articles about the ACOMPLIA product of the Complainant, the pattern of the present case does not justify the Respondent’s use of that domain name. Indeed, in the present case the issue is not whether the use of the domain name by the Respondent as such amounts to trademark infringement under the Lanham Act. Therefore the Respondent cannot rely on the decision, cited in his Surreply Readygo Inc. v. Michael Lerner Productions, WIPO Case No. D2000-0298, where the panel rightly stayed the proceedings because the question, to be clarified in the court proceedings, was whether the right to the trademark in dispute, based on use, belonged to the Complainant or to the Respondent, and this was not a question apt to be decided under the UDRP. Also the other cases cited by the Respondent in his Surreply are not relevant for the present case. In AmeriPlan Corporation v. Shane Gilber d/b/a New Wave Solutions Inc., NAF Forum No. 105737, the court proceedings were already pending, before the NAF Forum was addressed, and in Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187, the panel denied the complainant’s request because, based on the concrete circumstances of the case, it arrived at the conclusion that the respondent used the domain name for a website where it offered in a fair manner goods of the complainant for sale (in the present case the respondent clearly does not himself offer goods or services for sale).

In the present case, however, and contrary to the Respondent’s repeated arguments, the issue for the Panel is not whether the Respondent infringes the Complainant’s trademark rights by reporting about the Complainant’s ACOMPLIA product on a website linked to the domain name <acompliareport.com>. The use of that domain name by the Respondent is not justified for the reason that the Respondent does not make a legitimate noncommercial or fair use of the domain name). As said before, the Respondent provides on its website a number of links to websites where products for the treatment of obesity of competitors of the Complainant are offered for sale. No doubt the Respondent does not provide these links for free (see below 6C; if the Respondent, provided these links without intent for commercial gain, the Panel would have expected him to submit evidence of such assumption). Even if on the website “www.acompliareport.com” it is clearly stated that the site is not related to the Complainant, users typing for the first time the domain name <acompliareport.com> will expect to arrive at a website of the Complainant or at least at a website somehow related to it. Only, when they are faced with the website of the Respondent, they will realize that they were confused and will learn that the website is independent from the Complainant. At that moment they may well be attracted by the wealth of information provided by the Respondent about the ACOMPLIA product. However, in the opinion of the Panel, this is exactly the pattern in which the Respondent achieves his goal to make his website attractive; as a consequence, also the links provided to websites, where products for the treatment of obesity are offered by competitors, will become attractive for the users. The Panel does not accept this pattern to be justified by the principle of free speech. It is a pattern, which allows the Respondent to ride on the repute of the Complainant’s trademark for commercial gain (see also below 6 C). The Panel is not prepared to accept this pattern as exercising a right or legitimate interest in the domain name <acompliareport.com>.

In conclusion the Panel is satisfied that the Respondent has no right or legitimate interest in the domain name <acompliareport.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.

For the reasons, discussed under 6B, the Panel is satisfied that the Respondent’s use of the domain name and of the website “www.acompliareport.com” corresponds to this situation. As already stated, the Respondent reproduces the links to competitive websites for commercial gain. There cannot be any doubt that this is the intention of the Respondent, as can easily be confirmed by the fact that on the website on the left hand column on the top the text appears: “Ads by Google”. When clicking on this hint, the user is informed that this program connects him to information about products and services that are relevant to the contents of the website. To achieve this goal, the website publisher must adhere to the Google AdSense online program. When clicking the button “Learn more” the user arrives at a website where he is informed that this program is the fast and simple way to gain money! Can there be any better explanation why the Respondent links his website to websites where products are offered for sale that compete respectively will in the future, after the launch of the product ACOMPLIA compete with this product of the Complainant?

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 <acompliareport.com> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: August 12, 2005