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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. The Counsel Group LLC

Case No. D2004-0808

 

1. The Parties

The Complainant is Sanofi-Aventis, Paris of France, represented by Bird & Bird Solicitors, France.

The Respondent is The Counsel Group LLC, Shadows Hills, California of United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <acomplia-buy.com> and <acomplia-rx.com> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2004. On October 6, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On October 6, 2004, Go Daddy Software 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 October 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2004. The Response was filed with the Center on October 31, 2004.

The Center appointed Ross Carson as the sole panelist in this matter on November 15, 2004. 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.

On November 15, 2004, the Center advised the Panel that the Complainant had forwarded the Center a Supplemental Filing by e-mail. The Complainant argued that the filing addressed a number of contentions raised in the Response. The Center attached a copy of a document entitled “Acknowledgement of Receipt of Supplemental Filing,” advising the Complainant that it will be in the sole discretion of the Panel to determine whether to admit and consider the Supplemental Filing in rendering its decision and whether to order further procedural steps, if any.

The Panel reviewed the Response and observed that the Respondent alleged that Complainant has an implicit relationship with businesses like the Respondents. The Panel exercised its discretion to accept the Supplemental Filing assuming that the issue of the implicit relationship would be addressed in the Complainant’s Supplemental Filing. On November 16, 2004, the Panel requested the Center to forward the Supplemental Filing to the Panel. After reviewing the Supplemental Filing on November 16, 2004, the Panel advised the Center that the Panel accepts the Complainant’s Supplemental Filing. The Panel requested the Center to advise the Respondent that Respondent may file a reply to the Complainant’s Supplemental Filing.

On November 18, 2004, the Respondent filed a Sur-Reply to Complainant’s Supplemental Filing. On November 22, 2004, the Complainant advised the Center that the Complainant wished to file further comments in the case. On November 22, 2004, the Panel advised the Center to inform the Complainant that the Panel will not entertain any further submissions.

 

4. Factual Background

The Complainant company was created by Sanofi-Synthelabo’s 2004 acquisition of Aventis’ shares.

Completion of the transaction created the No. 1 pharmaceutical group in Europe, No. 3 in the world, with pro forma 2002, consolidated sales of 25 billion Euro in its core business, and a strong direct presence in all major world markets.

The new group benefits from a large portfolio of high-growth drugs, with 9 products that individually generated annual sales of over Euro 500 million in 2003. It enjoys firmly established positions in key fast-growth therapeutic fields such as cardiovascular, thrombosis, oncology, diabetes, central nervous system, urology, internal medicine and human vaccines.

A true copy of the Complainant’s 2003 Annual Report is attached to the Complaint. Annex 3 to the Complaint.

The Complainant’s products are marketed in the United States through a number of channels: the affiliate, Sanofi-Synthelabo Inc.; an alliance with Bristol-Myers Squibb for Plavix® and Avapro®, the sales of which are not consolidated by Sanofi-Synthelabo; a 50/50 alliance with Organon on Arixtra® in 2003, with Sanofi-Synthelabo taking full control of Arixtra® in 2004; license agreements in particular on Cordarone®, Depakine® and Ticlid®.

A website specifically dedicated to US is accessible at the following address: “www.sanofi-synthelabo.us”. Annex 4 to the Complaint.

On February 16, 2004, during an information meeting, the content of which was released on the Internet, the Complainant announced early results of two Phase III studies for the new Acomplia drug, indicating that overweight and obese patients with untreated dyslipidemia lost weight in one year while improving their lipid and glucose profiles, and that smokers who had previously unsuccessfully tried to quit smoking, were able to quit in 10 weeks without post cessation weight gain. Annex 5 to the Complaint.

These results were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004. Annex 6 to the Complainant.

The ACOMPLIA pharmaceutical is expected to be launched in 2006.

As obesity is currently being recognized as a major health problem the ACOMPLIA product announcements and scientific papers relating to Phase III studies of a pharmaceutical for the treatment of overweight and obese patients created substantial interest in the medical area. Numerous domain name registrants registered over forty domain names for or including the Complainant’s trademark ACOMPLIA in the days and months immediately following the release of information and scientific papers relating to the Phase III studies for the ACOMPLIA drug.

The Complainant has filed trademark applications for ACOMPLIA in more that 100 countries including the US. A list of the Complainant’s worldwide trade mark applications or registrations for the ACOMPLIA trade mark is attached at Annex 7 to the Complaint and copies of some of the Complainant’s worldwide registration certificates for the trade mark ACOMPLIA are attached at Annex 8 to the Complaint. The United States trademark application for ACOMPLIA was filed on January 5, 2004, claiming a priority date of December 3, 2003.

The Complainant also registered numerous domain names worldwide containing the ACOMPLIA trademark, for example “www.acomplia.fr”, “www.acomplia.us” etc. Copies of the WHOIS search results for a selection of those domain names are attached at Annex 9 to the Complaint. The Complainant registered the domain name <acomplia.com> on December 18, 2003. The Complainant registered the domain name <acomplia.net> on December 18, 2003.

 

5. Parties’ Contentions

Complainant

Confusingly Similar

The Complainant submits that the domain names <acomplia-buy.com>and<acomplia-rx.com> are confusingly similar to the ACOMPLI trademark in which the Complainant has rights for the following reasons:

The Respondent’s registrations consist of the Complainant’s trademark with the adjunction of the words “buy” and “rx “ and the gTLD “.com”.

A wide variety of panelists have considered that the addition of generic words to the trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the trademark as being connected to the complainant (see Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS Computer Industry, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home Care and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No.D2001-1184).

Thus, concerning the word “buy”, in a recent case the panelist considered that such word does not provide a distinctive character to the domain name <buy-aventis.com>. On the contrary, such domain name “clearly induces consumers to rely on the existence of a relation between it and the Complainant’s trademarks” (see Aventis, Aventis Pharma SA v. Vasha Dukes, WIPO Case No. D2004-0276). The same conclusion was reached concerning the domain name <buyguerlain.com> since the panelist held the term “Guerlain” is incontestably the principle part of the Domain Name and the such domain name was “identical to Complainant’s trademark “Guerlain” (Guerlain SA v. HI Investments, WIPO Case No. D2000-0494).

In relation to a domain name, which includes a trademark and the term “rx”, the panelists took the view that “there is no question that the domain name in dispute is confusingly similar to a mark in which Complainant has rights (…) the addition of the descriptive term “rx”, which is a common representation for the word “pharmacy” or “prescription”, has little, if any, legal significance” (Wal-Mart Stores, Inc v. Brad Tauer, WIPO Case No. D2000-1076).

Therefore and after analyzing these different WIPO cases, there is no doubt that the reproduction of the trademark ACOMPLIA, as the sole distinctive element of the domain names concerned, generates confusion. Indeed, persons accessing the domain names would be bound to think that the domain names have a connection with the Complainant.

Furthermore, the addition of the gTLD “.com” which is required for registration of the domain names, has no distinguishing capacity in the context of domain name and does not alter the distinctiveness of the trademark represented in the domain names (Telecom Personal v. namezero.com WIPO Case No. D2001-0015; Nokia Corporation v. Private Case, WIPO Case No. D2000-1271).

Consequently, because of this identity, there is a high risk of confusion, as a consumer may think that the domain names directly refer to the Complainant’s products.

In conclusion, the domain names <acomplia-buy.com> and <acomplia-rx .com> are confusingly similar to the Complainant’s trademark “ACOMPLIA”.

No Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names in dispute for the following reasons:

The Complainant has prior rights in the trademark ACOMPLIA, which precedes Respondent’s registration of the domain name in dispute.

Moreover, the Complainant is present in over 100 countries including USA and is well known throughout the world.

Furthermore the results of the ACOMPLIA trials were communicated worldwide, through the Internet before the registration date of the domain names in dispute. Annex 10 to the Complaint.

The disputed domain names do not appear to have been used by the Respondent at all since they lead to the Registrar’s website with the following message “www.acomplia-rx.com coming soon! The page is parked free with Godaddy.com”! and “www.acomplia-buy coming soon! This page is parked free with Godaddy.com”. A copy of the web page showing that the disputed domain names do not lead to any active website is attached at Annex 11 to the Complainant.

There is no license, consent or other right by which the Respondent is entitled to register or use the domain name incorporating the Complainant’s trademark ACOMPLIA.

The Respondent is not commonly known by the domain name.

There is no doubt that the Respondent is aware that the domain names in dispute corresponds to the trademark ACOMPLIA.

Indeed, the Respondent would have not registered the domain name in dispute if it had not known that a revolutionary drug will be soon marketed under the name ACOMPLIA by the Complainant.

The Respondent, who has no legitimate interest in respect of the domain names in dispute, registered the domain names with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.

Indeed, the Respondent has made no bona fide use of the domain names in dispute because of his lack of authorization to use the trademark ACOMPLIA. Furthermore, using a domain name in order to divert consumers for commercial gain cannot be characterized as a fair use. Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066.

Registered and Used in Bad Faith

The Respondent registered the domain names in dispute on March 10, 2004, a few weeks after the Complainant publicly announced the early results of two Phase III studies on the drug ACOMPLIA through an information meeting, which was communicated worldwide through the Internet. Annex 5 to the Complaint. The registration of the domain names in dispute also followed the presentation of the two Phase III studies on the drug ACOMPLIA to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004. Annex 6 to the Complaint.

The registration shortly after a product launch announcement is an example of opportunistic cyber squatting.

Various panelists considered that the act of registering a domain name soon after the Complainant product launch leads to an inference of bad faith. Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011.

As far as this case is concerned, a comparison can also be made with cyber squatting cases with respect to merger or rumor of merger announcements. Pharmacia & Upjohn AB v. Monsantopharmacia.com. Inc., WIPO Case No. D2000-0446. Such an opportunistic combination of two well-known trademarks made shortly after the announcement of a merger by someone having no connection with either of the merging companies amounts to use in bad faith.

These decisions and the argument adopted are completely transposable to the present case.

There is no doubt that the Respondent knowing of the internet reports of a new product under development to be sold under the mark ACOMPLIA by the Complainant, has registered the domain names in dispute in order to prevent the Complainant from reflecting the mark in a corresponding domain name. It is an opportunistic act which seeks to disrupt the Complainant’s business.

The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party in itself can be considered disrupting the business of the trademark owner.

The domain names in dispute are comprised of the Complainant’s trademark ACOMPLIA and the words “buy” and “rx”.

Any internet user connecting to the above mentioned websites will believe that the ACOMPLIA medicine is offered for sale whereas the Complainant is expecting to launch such product in 2006!

Since the Respondent registered these domain names with the knowledge that the Complainant will market the product in a few years, it could not ignore that such product was not available before 2006.

Suggesting that the ACOMPLIA product is available with the knowledge that it will be marketed by the Complainant in two years is a relevant element to establish the bad faith registration of the above mentioned domain names.

Finally, on August 23, 2004, Bird & Bird on behalf of the Complainant wrote to the Respondent demanding the disputed domain names be transferred to the Complainant within ten days. A copy of the letter of demand is attached at Annex 12 to the Complaint. Further to this letter, the Respondent proposed to transfer the disputed domain names for $80,000.00 US. Annex 13 to the Complaint. There is no doubt that the Respondent registered the domain names for the purpose of selling them to the Complainant for a sum of money well in excess of the respondent’s out-of-pocket expenses in respect of the disputed domain names.

It emerges from these facts that the registration of the domain names in dispute constitute opportunistic registrations which have been registered and used in bad faith.

A. Respondent

Factual and Legal Background

The Respondent submits that;

The Respondent is a California limited liability company. The Respondent carries on advertising and marketing primarily pharmaceuticals, vitamins and herbal remedies through on-line pharmacy websites.

The Respondents clients include pharmacies that are licensed and authorized to sell the products of various manufacturers and distributors. Annex 1 to the Reply.

The Respondent also operates as an advertising business that works with several larger multi- level advertising companies such as Hope Mills Universal that have primary contacts with distributors of pharmaceuticals. Hope Mills Universal develops sales affiliate programs for on-line pharmaceuticals sales for licensed distributors. Annex 1 to the Reply.

The Respondent uses various mediums, including the Internet to market the products of its clients. The Respondent uses domain names as one method of advertising for its clients. The Respondent uses domain names in methods designed to be search engine friendly and are optimized to increase page rank in the various search engines, thus increasing visibility and maximizing circulation for the Respondent’s clients. Annex 1 to the Reply.

Although not discussed in the Complaint, the U.S. Federal Drug Administration prohibits pharmaceutical companies like Complainant from selling pharmaceutical products directly to the U.S. public. The Complainant must motivate the public to ask their doctors for Complainant’s products and motivate physicians to write prescriptions for these products, which are in turn sold to the public through licensed distributors. Accordingly, both traditional “brick and mortar” and on-line pharmacies advertise the availability of these products through their own advertising contracts with companies like Hope Mills Universal, who use small companies like Respondent to focus the market on these products – not distract attention from them.

Although Respondent does not have an express agreement with Complainant, it is indisputable that Complainant has inserted itself into a stream of commerce wherein it consents to and encourages the pharmacies to promote and advertise the availability of its products. By doing so Complainant, if not expressly, has impliedly consented to distributors using advertising services like Hope Mills Universal and Respondent to extend Complainant’s global marketing reach.

The Respondent first heard about ACOMPLIA in March 2004, in an RX-affiliate industry on-line discussion forum. Since the Respondent’s business involves advertising and marketing of pharmaceuticals, vitamins and herbal remedies for licensed distributors of such products, it was logical to Respondent to include the ACOMPLIA product in the list of products advertised for licensed distributors. Based on this fact alone the Respondent registered the disputed domain names<acomplia-rx.com> and <acomplia-buy.com>” – two domain names that clearly indicate a link to pharmacies and sales, and was not acting in “bad faith” when it registered these domain names on March 10, 2004. Annex 1 to the Reply.

The Respondent registered four domain names containing the term “acomplia” as adjuncts to the advertising campaigns it will create for its clients. The Complainant has asked the Respondent to transfer only two of the four domain names. If Complainant’s true concern was obtaining transfers to protect ACOMPLIA, then it should have sought transfer of all four ACOMPLIA domain names Respondent registered, instead of only two. Annex 1 to the

Reply, Exhibit “C.

The Respondent submits that the four domain names will produce revenue of $1000.00 to $6000.00 US gross per month per domain name based on historical trends of Respondent’s advertising methods. On August 25, 2004, Respondent offered to transfer the four domain names to the Complainant for a compensation of $80,000.00. Respondent suggests that a fair return on Respondent’s potential future income is appropriately calculated at $2000.00 per month per domain name for one year, which equals $96,000.00. Annex 1 to the Reply, Exhibits “A”, “B” and “C.

Complainant’s claim the Respondent has not used the domain names in dispute because the names resolve to parked pages means nothing because the ACOMPLIA domain names that Complainant has registered do not resolve to any websites either.

Confusingly Similar

Respondent agrees that ACOMPLIA is a registered trademark of Complainant and that inclusion of the term “buy” has a clear promotional effect. Promotion is what the Complainant’s licensed distributors have hired advertising companies like Respondent to do. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Consent may be implied)

Although Complainant appears to deny it, Complainant has an implicit relationship with businesses like Respondent’s who provide marketing services to Complainant’s client pharmacies advertising Complainant’s products– and at no cost the Complainant. (See K&N Engineering, Inc. v. Kinnor Services, WIPO Case No. D2000-1007 (finding that the use of a manufacturer’s mark in a Domain Name merely “provide[s], via an electronic medium, the advertising and sales functions related to the business of an authorized distributor of the Complainant.”)

It is clear that <acomplia-rx.com> and <acomplia-buy.com> are similar to Complainant’s registered trademark “ACOMPLIA”. The domain names directly refer to Complainant’s product for purposes of ultimately directing the public to Complainant’s client pharmacies.

Respondent’s Legitimate Interests

The test here is whether Respondent has a right or a legitimate interest in respect of the domain name. A legitimate interest itself is enough.

For approximately two years Respondent has operated a business advertising and marketing hundreds of pharmaceutical products for on-line pharmacies that sell Complainants and many other pharmaceutical company products. Annex 1 to the Reply. Complainant acknowledges Respondent “...carries out its activities in the medical and health sector...” Annex 12 to Complaint.

But for the fact that the ACOMPLIA product is not yet available to the public, Respondent would have been using the disputed domain names within the context of its business in the bona fide offer of goods for sale before Complainant filed its Complaint. The Complainant’s own ACOMPLIA domain names resolve to “cannot find server or DNS error”. Annex 1 to the Reply, Exhibit D. A Whois search on <acomplia.com> and <acomplia.us> results show website status “not active”.

Respondent’s circumstances here are substantially similar to respondent in EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 wherein the Panel found the respondent had a legitimate business. In that case the respondent operated a business of selling automobile lamps for ten years then expanded its business to offer e-commerce capabilities. It selected the descriptive domain name eautolamps.com. It was an undisputed fact that Respondent had been using the domain name in the bona fide offering of goods for sale over the Internet before Respondent received notice from Complainant. The Panel stated that this was “persuasive evidence of a Respondent’s legitimate interest in the domain name pursuant to the Policy, Paragraph 4(c)(I).”

The Respondent has made preparations to make a legitimate use. Previous Panels have stated that respondents seeking to show preparations to make a legitimate use must give Panels some evidence; acceptable evidence may include business plans or documented expenses, but will of course vary with the nature of the use and the particulars of the domain name. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, Case No. D2000-1306.

Here, Respondent has demonstrable evidence of its preparations to use the domain name in connection with a bone fide offering. Specifically, as set forth in Annex 1 to the Reply, as of January 2004 Respondent expended $8,392 US on advertising, $102 US on hosting accounts, $3708 US on communications and netted $36, 913 US from sales. Annex 1 to the Reply, Ex. A. Respondent’s sales over the last quarter reveals orders for products from several of Respondent’s on-line pharmacies. Annex 1 to the Reply.

The foregoing conclusively establishes that Respondent has a legitimate business interest in the disputed domain names.

Complainant has failed to establish that domain names were both registered and used in bad faith

Contrary to Complainant’s assertions, there is no rule that registering a domain name is per se bad faith in the absence of express authorization. On the contrary, many panel decisions recognize that persons other than mark owners can sometimes have legitimate interests in a domain name. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.) This being so, mere registration without express authorization cannot be considered bad faith per se, since implied authorization may exist.

The Policy requires registration and use in bad faith. (Policy paragraph 4(a)(iii)). The fact that the disputed domain names were registered shortly after Complainant announced the future availability of the product is not conclusive bad faith. Complainant’s citation of Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011; America Online Inc v. Chan Chunkwong, WIPO Case No. D2001-1043 and Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043, only establishes that registration “soon after the Complainant product launch” leads to an inference of bad faith. If proceedings were decided on inferences the entire legal system would break down.

The Respondent further submitted that the Panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903,when considering the issue of evidence of registration and use in bad faith included consideration of Paragraph 4(b) (i) to(iv) of the Policy. Paragraph 4 (b) of the Policy sets out four circumstances which in particular but without limitation, shall be evidence of registration and use in bad faith. A review of the Oki Data decision discloses that the Panel found it unnecessary to consider the issue of registration and use in bad faith.

The Respondent made the following submissions relating to Paragraphs 4 (b) (i) to (iv) of the Policy in the Response.

The Complainant has not established any circumstances indicating that Respondent registered or acquired the domain names 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. Respondent has established and Complainant has acknowledged, Respondent carries out a legitimate advertising business for on-line pharmacies selling pharmaceutical products.

Respondent did not register the domain names in dispute and then solicit Complainant to purchase the disputed domain names. Complainant initiated the first contact through its “cease and desist” letter which threatened litigation if Respondent did not hand over the disputed domain names in ten (10) days. Annex 12 to Complaint. Complainant did not initially offer to pay Respondent’s out-of-pocket expenses for the registration, but simply demanded them be turned over! Respondent offered to assign the disputed domain names for its out-of-pocket costs plus anticipated loss of revenue to Respondent. Annex 1 to the Response, Exhibits A, B and C. Complainant’s Annex 13 does not include all the correspondence between the parties, only Respondent’s offer – which they allege was made in bad faith. The complete correspondence which reflects Complainant’s response to Respondent’s offer does not establish any bad faith, but reflects Respondent’s efforts to determine reasonable consideration – it was not an effort to negotiate. Annex 1 to the Response, Exhibit C. Complainant ultimately offered Respondent its out-of-pocket expenses for the transfer. Annex 1 to the Response, Exhibit C. These statements, taken together, do not establish bad faith – even though Complainant has inaccurately attempted to characterize them as such.

Second, Complainant has not shown that Respondent registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, or that Respondent has engaged in a pattern of such conduct.

Third, Complainant has not provided evidence that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.

The fourth test must be examined within the context of Respondent’s legitimate business as an advertiser of pharmaceutical products implicitly endorsed Complainant. Within this context it is true that Respondent has plans to use the domain name, although it has not done so yet, to attract, for commercial gain, Internet users to Respondent’s website or other on-line location. Technically, Respondent must be actually using the disputed domain names in order to violate the Policy as written. Complainant itself has not used any of its domain names with ACOMPLIA. Annex 1 to the Complaint.

While recognizing the Panel’s extensive discussion of “passive holding” in the Telstra decision, Respondent nonetheless believes the case is really not yet ripe. Furthermore, and to reiterate, Respondent’s registrations were not done to create confusion between Respondent and Complainant’s mark, but precisely for the purpose of drawing attention to Complainant’s mark as part of advertising for Complainant’s licensed distributors - pharmacies. (See K&N Engineering, Inc. v. Kinnor Services, WIPO Case No. D2000-1007 (finding that the use of a manufacturer’s mark in a Domain Name merely “provide[s], via an electronic medium, the advertising and sales functions related to the business of an authorized distributor of the Complainant”).

The Respondent reviewed that part of the Oki Data decision relating to Paragraph 3 (c) (i ) of the Policy relating to Rights or Legitimate Interests stating: In Okidata, the Panel examined the question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name. The Panel said that Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. In Okidata there was no dispute concerning Respondent’s status since it was an authorized Okidata repair facility, and had been offering Okidata goods and services since prior to the commencement of that case. The only issue before that Panel was whether respondent’s offerings were “bona fide.”

According to the Panel, to be “bona fide,” the offering must meet several requirements. Those include, at the minimum, the following:

(i) Respondent must actually be offering the goods or services at issue.

(ii) Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

(iii) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.

(iv) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

In Okidata, the respondent clearly established it acted in good faith. It was an authorized seller and repair center, used the okidataparts.com site to promote only Okidata goods and services, and prominently disclosed that it was merely a repair center, not Okidata itself. It had not registered numerous okidata-related domain names, and has not improperly communicated with Oki Data customers.

The Okidata Panel found that the complainant has not presented any other evidence that undermined the bona fides of respondent’s use and concluded that the respondent, as an authorized sales and repair dealer for Complainant’s goods, had a legitimate interest (under the Policy) in using the Domain Name to reflect and promote that fact.

Now, with respect to the issue of whether Respondent’s offerings may be characterized as “bona fide”, Respondent can pass all the tests set forth in Okidata and can establish its offerings are “bona fide.”

First, Respondent is actually offering the goods or services at issue. Respondent has established herein, and Complainant has acknowledged that Respondent is an ongoing concern offering pharmaceutical goods and services. While it cannot yet offer the ACOMPLIA product, based on its established business it is adequately prepared, as its clients expect it to be, to make such bone fide offering. (Annex 1 Lundeen Declaration) (See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

Second, Respondent is not using the trademark to bait Internet users and then switch them to other goods.

Third, there is no suggestion by Respondent that its website is the official ACOMPLIA website, it has not represented in anyway that it is the trademark owner, it does not represent itself as Complainant, or use Complainant’s name. Respondent is only an agent for sale for Complainant’s authorized distributors. The disputed domain names include “rx” and “buy” which are suffixes related to advertising sales

Fourth, the Respondent has not tried to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. As previously stated, Respondent advertises for Complainant’s licensed distributors, and has not registered the numerous variants on the mark.

In conclusion Respondent submits that Respondent’s domain names may be “confusingly similar” to Complainant’s products, but they are similar to Complainant’s trademark ACOMPLIA product for significant and legitimate reasons. Respondent has clearly established it has a legitimate interest in the disputed domain names, and the fact that these domain names cannot be put to use now is not presumptively bad faith use. Moreover, Respondent has shown that it had legitimate and bona fide reasons to register the domain names and did not do so in bad faith. Complainant has not provided any evidence to refute this fact.

Complainant’s Reply to Response

The Complainant submits that the Respondent raised several matters in the Response which are unclear or not supported by evidence. First the Respondent submits that : “it is acting as an agent for sale for Complainant’s authorised distributors” and “has an implicit relationship with business like Respondent’s” (page 10 § 5, page 5 §11). Secondly, the Respondent provides various definitions of its activities including to “provide advertising to licensed distributors of Complainants products”, “to sell pharmaceutical products” or to be an “agent for sale for Complainant’s authorized distributors” to legitimate the registrations of the domain names in dispute <acomplia-buy.com> and <acomplia-rx.com> without defining clearly its activities and without bringing any evidence of such activity.

The fact that Respondent could carry out activity in the health sector by providing advertisement services to authorised distributors is not sufficient to establish that Respondent has a legitimate interest in the registration of domain names in dispute on which the Complaint has prior trademark rights.

As a matter of fact, the Complainant has never entered into agreement with the Respondent and never had any relationship, directly or indirectly with it.

How can the Respondent allege to be an agent of the Complainant whereas they have no direct or even indirect relationship?

The Respondent has not disclosed any document showing its activity or any agreement that it had entered into with authorised Complainant’s distributors or as an agent of the Complainant.

Respondent’s Sur-Reply

Respondent does not “pretend” to be anything other than an on-line pharmacy advertising legitimate pharmaceutical sales in a heavily regulated industry.

The descriptions of Respondent’s business to “provide advertising to licensed distributors of Complainants products”, “to sell pharmaceutical products”, to be an “agent for sale for Complainant’s authorized distributors” all amount to the same business of advertising pharmaceutical sales. This is Respondent’s business.

The Parties have an implicit relationship; however an implicit relationship is not required for Respondent to have a legitimate interest in the domain names.(Policy, paragraph 4(a) (ii).

Complainant’s contention that there is no relationship between it and Respondent could not be further from the truth. Complainant continues to deny that it has a world-wide direct relationship with pharmacies licensed to sell and distribute Complainant’s products. Complainant presumably has a direct relationship with these licensed distributors, and an implicit relationship with those businesses that advertise products for those pharmacies. Complainant cannot deny their implicit relationship with pharmacy advertisers, and cannot show this implicit relationship to advertising businesses like Respondent’s does not exist. Pharmacies are the primary distribution network for their products to consumers.

A written agreement is not required to establish either a direct or implicit relationship. The WIPO decisions clearly establish that the Complainant does not have to have a written agreement with the Respondent to have a relationship either directly or indirectly with it. (Oki Data Americas, Inc. v. ASC, Inc., WIPO Case No. D2001-0903; See also Le Creuset SA v. Vineyards Direct Limited, WIPO Case No. D2004-0551)wherein the Panel recognized that being an authorized distributor of the complainant’s goods was not a precondition of bona fide use.

The Respondent attached as Exhibit 4 to the Sur-Reply Respondent’s “westpharmacy.com” website and its disclaimer page. The home page bears the title “Where To Buy Prescription Drugs Online – Pharmacy West”. A column on the left hand side of the page is titled “Health Directory” and includes a lengthy list of health problems commencing with: “Weight Loss, Antibiotics, Women’s Health, Pain Relief, Blood Pressure…” Clicking on one of the health problems under the heading “Health Directory” brings up a list of drugs authorized for such a health problem with a brief summary of the purpose of the drug. A sub- heading reads: “order prescriptions online! FREE consultations! FAST FEDEX shipping!” One of the procedures is described as follows: “When you submit your order one of our U.S. licensed physicians will review your request and issue a prescription for your medication . Next, our U.S. Licensed Pharmacy will ship your order discreetly via Fed-Ex. This is the fastest, most convenient and least costly way to order prescription medications.” The bottom of the page includes the question: “Looking for a specific product? Click on the first letter of the drug’s name to show a list of all drugs starting with that letter: “letters A to Z follow.”

On the “About Us” page at “westpharmacy.com” the potential purchaser is informed: “The price of your order includes a FREE consultation with one of our U.S.-licensed medical doctors….Once you have completed the online questionnaire, your information will immediately be forwarded to a physician, who will determine your eligibility for receiving these medications”.

Further down the “About Us” page the potential customer is advised: “Your order will be filled by one of our U.S. based and licensed pharmacies. Our affiliated pharmacies are in full-licensed compliance for shipping medications to all states that permit online prescribing”. Further down the page is the following statement: “West Pharmacy is not a pharmacy. West Pharmacy provides an online ordering system that routes prescription drug orders to affiliated pharmacies”.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for the Complaint to succeed, the Complainant must establish that:

i) the Respondents’ Domain Name(s) is (are) identical or confusingly similar to a trademark in which the Complainant has rights; and

ii) the Respondents’ have no rights or legitimate interests in respect to the Domain Name(s); and

iii) the Respondents’ Domain Name(s) has (have) been registered and is (are) being used in bad faith.

A. Identical or Confusingly Similar

The domain names in dispute are comprised of the Complainant’s trademark ACOMPLIA with the generic or descriptive words “buy” or “rx” and the gTLD “.com”. The Complainant holds a number of valid registrations for the ACOMPLIA trademark.

The use of the above noted generic and descriptive terms in conjunction with the Complainant’s trademark ACOMPLIA does not remove the domain names in dispute from being confusingly similar, the generic terms lacking in distinctiveness.

Furthermore, the addition of the gTLD “.com”, which is required for registration of the domain names, has no distinguishing capacity in the context of domain name and does not alter the value of the trademark represented in the domain name (Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Many panels have held that the use of a Complainant’s trademark as the sole distinctive portion of a domain name in dispute is a confusingly similar use of the Complainant’s trademark. Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The Panel finds that the Complainant has proven that the domain names in dispute are confusingly similar to the Complainant’s trademark ACOMPLIA.

B. Rights or Legitimate Interests

The Respondent is not commonly known by the name ACOMPLIA. The Respondent has never been authorized by the Complainant to use the trademark ACOMPLIA. The Respondent registered the domain names in dispute following the filing of applications for the trademark ACOMPLIA by the Complainant in many countries. Further, the Respondent registered the domain names in dispute shortly following the Complainant’s worldwide announcements of the results of the Phase III studies of the pharmaceutical ACOMPLIA. Annex 5, Annex 6 to the Complaint.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said disputed domain name by showing:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent operates an online pharmacy or pharmacies through on-line websites. Annex 1 to the Reply, para.1. One such online pharmacy operated by the Respondent is “westpharmacy.com”. Web pages from “westpharmacy.com” are attached as Exhibit 4 to the Sur-Reply. The web pages for “westpharmacy.com” disclose the offering of a wide range of pharmaceuticals for a long list of health problems. The website provides for the services of U.S. licensed physicians who will review the customer request and issue a prescription for the customer medication. The order for the prescription is filled by associated pharmacies throughout the United States and shipped to the customer by courier service. The “About Us” page includes the statement “West Pharmacy is not a pharmacy. West Pharmacy provides an online ordering system that routes prescription drug orders to affiliated pharmacies.

The Respondent submits that the Respondent is implicitly licensed to use the trademarks of pharmaceuticals which are sold by pharmaceutical manufacturers to distributors in the normal course of trade. The Panel finds that purchasers of packaged trademarked goods may resell such goods subject to the usual exceptions relating to repackaging and adulteration. However, the Panel does not agree that the right to advertise, take orders for or sell pharmaceuticals entitles the Respondent to use the Complainant’s registered trademark as the only distinctive element of the domain names in dispute.

Paragraph 4 (c) (i) of the Policy provides that a Respondent may demonstrate rights or legitimate interests to a domain name for purposes of Paragraph 4 (a) (ii) if before any notice to you of the dispute, the Respondents use or make demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

Previous Panels have found that the use of a trademark as the distinctive element of a domain name was a bona fide use of the domain name where the Respondent was an authorized representative or distributor of the Complainant. Oki Data Americas, Inc. v ASD , Inc., WIPO Case No. D2001-0903. In the Oki Data case the domain name registrant was an authorized Oki Data repair facility. In this case the Respondent is not an authorized distributor or representative of the Complainant. The Respondent in this case is an independent reseller of pharmaceuticals of many manufacturers including Complainant. The present case is not the same as the facts decided in Dr. Ing.. h .c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, where the domain name in dispute was <porsche-buy.com> and <porschebuy.com> where the Respondent used the domain name exclusively in relation to resale of PORSCHE used cars. In this case the Respondent operates on-line pharmacies offering many pharmaceuticals manufactured by different manufactures relating to weight loss or quitting smoking, the purpose of the ACOMPLIA pharmaceutical. The Respondent also relies on the decision in EAUTO,L.L.C. v. Triple S. Auto Parts d/b/a/ Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. In that case the Panel found that the Respondent had operated a business selling automobile lamps for ten years. The Respondent elected to expand its business to offer e-commerce capabilities, it selected the descriptive domain name<eautolamps.com>. In this case the Respondent has not selected a descriptive domain name.

The Respondent acknowledges that the domain names in dispute were registered with knowledge of the development of the ACOMPLIA pharmaceutical. The Respondent submits that it has made demonstrable preparation to use the domain names in dispute. The Panel finds for the reasons expressed above that any future use of the domain names in dispute by the Respondent will lead internet users to click on the websites in dispute under the impression that the websites are associated with the Complainant trade mark owner.

In Aventis Pharma S.A. and Merrill Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, the Respondent had registered domain names comprised of the trademarked names of two pharmaceuticals each used in conjunction with the gTLD “.net”. The Panel in the Aventis case held that the use of the domain names were clearly in bad faith stating:

“By, admittedly, having knowledge of the Complainant’s mark, Respondent can be assumed to have been aware of the risk of deception and confusion that would inevitably follow if it registered and used the Domain Name under the “.net” gTLD since this could give the impression that the site and thus the Respondent was somehow endorsed by the Complainant: See Ullfrotte AB v. Bollnas Imports, WIPO Case No. D2000-1176. Not only was the Respondent not endorsed by the Complainant, it had no consensual relationship with Complaint at all. Any representation, such as here, to the contrary is clearly bad faith.”

A similar conclusion was reached by the Panel in Gorstew Limited & Unique Vacations,Inc. v. Satin Leaf, Inc. FA 000800009514. In the Gorstew Case neither of the two domains in question had been developed yet.

The Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the domain names in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b)(i) of the Policy provides that circumstances indicating that the Respondent has registered a 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 our documented out-of-pocket costs directly related to the domain name shall be evidence of the Registration and use of the domain name in bad faith.

On August 23, 2004, the solicitors for the Complainant forwarded a cease and desist letter to the Respondent. The letter of August 23, 2004, also demanded that the domain names in dispute be transferred to the Complainant. Annex 12 to the Complaint. By e-mail dated August 25, 2004, the Respondent offered to assign the two domain names in dispute plus two other domain names registered the same day for $80,000.00 U.S. Annex 13 to the Complaint. The solicitors for Complainant refused the offer to assign the domain names for $80,000.00 U.S., stating that the offer price was exorbitant. The Respondent e-mailed the Complainant on August 26, 2004, inquiring as to what price would be considered non-exorbitant? What does the Complainant consider a reasonable consideration for assignment of the domain names. By e-mail dated August 27, 2004, the Complainant advised that the consideration for assignment is the reimbursement of the registration fees upon receipt. Annex 1 to the Response, Exhibit C.

Respondent submits that Complainant did not in its initial cease and desist letter offer to pay Respondent’s out-of-pocket expenses for registration of the domain names. The Respondent submits that it offered to assign the domain names to Complainant for its out-of-pocket expenses plus anticipated loss of revenue to the Respondent associated with loss of the domain names.

The Panel finds that the Respondent initiated the offer for sale of the domain names for $80,000.00 U.S., and the Panel finds that the offer for sale for an amount so obviously in excess of out-of-pocket expenses directly related to the domain name is evidence of registration and use of the domain name in bad faith. EMI PLC v. Jason Mace, WIPO Case No. D2000-0712.

The Panel finds that the Respondent has registered and is using the domain names 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-buy.com> and<acomplia-rx.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: November 29, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0808.html

 

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