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Sanofi-Aventis v. The Counsel Group, LLC [2005] GENDND 1464 (9 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. The Counsel Group, LLC

Case No. D2005-0650

1. The Parties

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

The Respondent is The Counsel Group, LLC, Shadow Hills, California, United States of America; William Lundeen, Shadow Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <e-acomplia.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2005. On June 22, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 23, 2005, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 24, 2005. The Center verified that the Complaint, together with the amendment to 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 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 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, including the United States of America, where it markets its products 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 (registration number 825821) 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.fr>, <acomplia.us> and <acomplia.com>.

These facts are documented and not contested by the Respondent.

B. Respondent

The Respondent registered on March 10, 2004, the domain name <e-acomplia.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.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <e-acomplia.com> is identical or confusingly similar to its trademark ACOMPLIA in which it has rights; (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 <e-acomplia.com> consists of the trademark ACOMPLIA of the Complainant, preceded by the letter “e” (separated from the trademark by a hyphen) and the gtld “.com”. The distinctive part of the domain name is identical with the Complainant’s trademark. The text of the domain name, as composed of the letter “e” and the trademark ACOMPLIA invites Internet users to purchase the ACOMPLIA product online, since the letter “e”, in connection with the trademark ACOMPLIA will, by many users, be understood as a reference to e-commerce. The gtld “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark. In conclusion, 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 of the Registrar, where the Registrar has parked the domain name and is advertising its services.

B. Rights or Legitimate Interests

The word ACOMPLIA is not a descriptive word. Particularly in the United States of America, 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 <e-acomplia.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. 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 its domain name and the Complainant did not submit that the Respondent offered the domain name to the Complainant for sale. 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

The Respondent cannot have ignored the fact that “ACOMPLIA” is a protected trademark of the Complainant in the United States of America. This can be deducted from several facts: The trademark ACOMPLIA has been registered in the United States of America (in the United States registration of a trademark in the USPTO amounts to constructive notice under 15 U.S.C. § 1072) and the Respondent registered the domain name only a few days after the publication of the results of a study about the new revolutionary drug ACOMPLIA and one day after 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 <e-acomplia.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 <e-acomplia.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 <e-acomplia.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 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 <e-acomplia.com>, or any plan for a bona fide use of his domain name;

- By registering <e-acomplia.com>, the Respondent has precluded the Complainant from using its mark in a corresponding domain name;

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

- at the same time, the existence of the domain name furnishes the Respondent with an instrument that allows it to activate a website in such a manner as to divert Complainant’s customers to its 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.

In addition to these elements, the Panel considers a further circumstance, evidenced by the Complainant, as a strong indication of the bad faith intentions of the Respondent in the context of the registration and use of the domain name <e-acomplia.com>: Together with the domain name <e-acomplia-com>, the Respondent registered, on the same day, two additional domain names <acomplia-buy.com> and <acomplia-rx.com>. The Respondent offered these two domain names to the Complainant for the price of 80,000 United States dollars (well in excess of its out-of-pocket expenses). In view of these facts, the Panel in Sanofi-aventis v. The Counsel Group LLC (WIPO Case No. D2004-0808) arrived at the conclusion that the two domain names <acomplia-buy.com> and <acomplia-rx.com> were registered and used in bad faith.

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, <e-acomplia.com>, be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: August 9, 2005