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Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel [2005] GENDND 1912 (25 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel

Case No. D2005-1045

1. The Parties

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

The Respondents are Elizabeth Riegel, and Andrew Riegel, United States of America.

2. The Domain Names and Registrar

The disputed domain names:

<accompliablog.com>
<accompliadietpill.net>
<accompliadietpills.net>
<accompliafreesample.com>
<accompliasample.com>
<accompliasamples.com>
<acompliabroker.com>
<acompliadistribution.com>
<acompliadistributors.com>
<acompliafreesample.com>
<acompliaportal.com>
<acompliasamples.com>
<ambien-side-effects.com>
<generic-accomplia.com>
<genericaccomplia.net>

are registered with Schlund + Partner.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2005. On October 5, 2005, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names at issue. On October 6, 2005, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contact. The Complainant filed an amendment to the Complaint on October 11, 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 October 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2005. On November 4, 2005, the Center sent the Notification of Respondent’s default.

The Center appointed Mr. Adam Samuel as the sole panelist in this matter on November 14, 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

The Complainant is a major worldwide pharmaceutical company. The company is the product of a merger and a takeover. In 1999, Sanofi and Synthélabo merged to form Sanofi-Synthélabo. In August 2004, this company bought Aventis.

It manufactures drugs. These include Ambien, a treatment for insomnia which the Complainant has manufactured for over a decade.

In 2004, the Complainant announced the early results for a new product, Accomplia, which helps patients lose weight. These findings appeared on the Internet shortly afterwards.

The Complainant owns a large number of Ambien trademarks in more than 50 countries. For example, Synthélabo registered Ambien as a trademark on Australia on May 6, 1998.

It has filed trademark applications for Acomplia in more than 100 countries. It registered this trademark in Japan on October 22, 2004.

The Complainant owns domain names covering both Ambien and Acomplia, such as <ambien.fr> and <accomplia.us>.

The domain names in dispute were created in April 2005, with the exception of <ambient-side-effects.com> which was created on December 4, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant owns trademark rights in “ambien” and “acomplia”. The domain names in question involve using these names with added words, followed by the “.com” or “.net”. Some involve misspelling the name “acomplia” by adding a second “c”.

The addition of the extra words, which are generic terms, does not change the fact that the name is confusingly similar to the trademark. Equally, the misspelling of “Acomplia” is the practice of typosquatting. This produces domain names that are equally confusingly similar to the Complainant’s trademark.

The Complainant has not licensed the Respondents to use the trademarks concerned here or register or use the disputed domain names.

The Respondents clearly know of the Complainant’s products and their uses from their addition of generic words on some of the domain names describing them in terms of drugs. This is notably the case for <acompliadietpills.com>. The sites have been registered and are being used to divert consumers from the Complainant’s sites and to prevent the Complainant from reflecting their marks in corresponding domain names.

The Respondents have registered numerous domain names, more than 500 in total, including 15 relating to the Complainant’s products. With one exception, the websites concerned just say: “For Information Regarding This Domain Name, Write: info@WebSales.US”.This shows that the domain names were registered in order to persuade trademark owners to buy them from the Respondents.

The registration of the domain name a few months after the Complainant announced the launch of its product was further evidence of bad faith cybersquatting. Typosquatting is a bad faith way of diverting customers seeking the websites of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant must prove that

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has registered trademarks for both AMBIEN and ACOMPLIA. Examples are the registrations in Australia for AMBIEN and Japan for ACOMPLIA. The addition of a generic word and a gLTD to a registered trademark has long been accepted by WIPO UDRP domain name panelists as indicating that the domain name is confusingly similar to the trademark in question.

Equally, typosquatting, the use of a slight misspelling of a trademark name, still results in the domain name being confusingly similar to the trademark concerned.

As the Panel said in Deutsche Bank AG v. New York TV Show Tickets, Inc., WIPO Case No. D2001-1314:

“A disputed domain name which consists of the Complainant’s mark plus the addition of a descriptive word linked to the services that the Complainant markets can be confusingly similar to a mark. See Harrods Limited v AB Kohler & Co - WIPO Case No. D2001-0544 decision July 31, 2001, over the names <harrodswatch.com> and <harrodsjewellery.com>. PBS Privat Bank Schwetz AG v. Ermek Tuzun WIPO Case No. D2001-1311 is a case where the word ‘bank’ was added in the disputed domain name to the registered mark PBS. The Complainant was a well-known supplier of banking services. The Panel held that it was the juxtaposition of the word ‘bank’ with the letters of the mark which changed the whole complexion of the domain name from being one depicting anything at all to one connected with a banking institution.

“There is a further reason for finding confusing similarity. In the Panel’s view, this is a case of ‘typosquatting’ where the domain name is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user – particularly when the mark is another language from that of the user’s mother tongue.

“See for example, DaimlerChrysler Corporation v. Worshiping, Chrisler, and Chr. aka Dream Media/ Peter Conover, WIPO Case No. D2000-1272 (mark: Chrysler; domain names: crysler, chrisler, chrystier or christler) and Telstra Corporation Limited v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2000-1293 (mark: bigpond; domain name: big pons).”

For all these reasons, the Panel concludes that the domain names are confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not called ‘AMBIEN’ or “ACOMPLIA” and does not appear to trade under that name. There is no evidence that the owner of the trademark in question has authorized the Respondent to use the trademark. The Respondent has not asserted any rights or legitimate interests in the name. Based on the case file, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

With one exception, the disputed domain names lead to a page which just says:

“For Information Regarding This Domain Name, Write: info@WebSales.US.”

The exception, “www.ambien-side-effects.com”, diverts users to a site with links to various other businesses after the comment:

“This domain may be for sale by its owner! More details...”

The link from that invites users to state how much they are prepared to offer for the site.

Paragraph 4(b) of the Policy says:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.

The invitation on all of the websites to viewers to buy the domain name, the absence of any content on all but one and the timing of the domain name registrations relating to ACOMPLIA all suggests one thing. This is that the sites were acquired primarily for the purpose of selling the domain name to the Complainant or one of its competitors for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The way in which the domain names were registered shortly after the announcement of the prospective launch of ACOMPLIA says a great deal here.

The names, “Ambien” and “Acomplia” appear to have no meaning outside the context of the Complainant’s trademarks. “Ambien” could be seen to have something to do with the word “ambience”. However, the links from the websites do not exploit this in any way.

This impression of bad faith is reinforced by the fact that the Respondents have registered a large number of domain names, a number of which relate to the Complainant’s competitors. They do not appear to have any reason for doing this apart from wanting to have their domain names bought by companies who use those names in business.

The use of typosquatting is itself evidence of bad faith. The only explanation of it is a desire to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.

This conclusion is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website… by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.”

For all the above reasons, the Panel concludes that the domain name was 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 names, <accompliablog.com>, <accompliadietpill.net>, <accompliadietpills.net>, <accompliafreesample.com>, <accompliasample.com>, <accompliasamples.com>, <acompliabroker.com>, <acompliadistribution.com>, <acompliadistributors.com>, <acompliafreesample.com> <acompliaportal.com>, <acompliasamples.com>, <ambien-side-effects.com>, <generic-accomplia.com>, <genericaccomplia.net > be transferred to the Complainant.

Adam Samuel
Sole Panelist

Dated: November 25, 2005