Sanofi-Aventis v. CheckoutCo LLC c/o Web
master
Claim Number: FA0512000606471
PARTIES
Complainant is Sanofi-Aventis (“Complainant”),
represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
1133 Avenue of the Americas, New
York, NY 10036. Respondent is CheckoutCo LLC c/o Web master (“Respondent”),
1515 Whitehouse Drive, Wheeling, IL 60090.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us>, registered with Onlinenic, Inc. d/b/a China-Channel.com.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on December 8, 2005; the Forum received a hard
copy of the Complaint on December 12, 2005.
On December 11, 2005, Onlinenic, Inc. d/b/a China-Channel.com confirmed
by e-mail to the Forum that the domain names <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us> are registered with Onlinenic, Inc. d/b/a
China-Channel.com and that Respondent is the current registrant of the
names. Onlinenic, Inc. d/b/a
China-Channel.com has verified that Respondent is bound by the Onlinenic, Inc.
d/b/a China-Channel.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the U.
S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 3, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, using the same contact
details and methods as were used for the Commencement Notification, the Forum
transmitted to the parties a Notification of Respondent Default.
On January 6, 2006, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra J. Franklin as
Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
The <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us>
domain names registered by Respondent are confusingly similar to Complainant’s ACOMPLIA mark.
2.
Respondent does
not have any rights or legitimate interests in the <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us>
domain names.
3.
Respondent
registered or used the <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us>
domain names in bad faith.
B. Respondent failed to submit a
response to this proceeding.
FINDINGS
Complainant, Sanofi-Aventis, is the third
largest pharmaceutical company in the world, with a business presence in more
than fifty countries. Complainant has
developed and patented a pharmaceutical preparation, rimonabant, to be used in
the treatment of obesity and smoking cessation. Complainant uses the ACOMPLIA mark for its rimonabant
pharmaceuticals. Complainant has a
trademark registration with the European Union trademark authority for the
ACOMPLIA mark (Reg. No. 3,565,678 issued April 26, 2005).
Respondent registered the <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us> domain names on July 19, 2005.
Respondent is using the disputed domain names to redirect
Internet users to a website that purports to sell Complainant’s products.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has
established rights in the ACOMPLIA mark
through registration of the mark with the European Union trademark
authority. See also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the
purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is
registered in a country other than that of the respondent’s place of
business).
The Panel finds that Respondent’s <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us> domain
names are confusingly similar to Complainant’s ACOMPLIA mark.
The only differences between the disputed domain names and Complainant’s
mark are the additions of hyphens, common terms, numbers and the “.us”
top-level domain, which do not significantly distinguish the domain names from
the mark. See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark"); see also Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar.
24, 2000) (finding that the respondent’s domain name <go2AOL.com> was
confusingly similar to the complainant’s AOL mark); see also Tropar Mfg. Co.
v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the
addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to the complainant’s TROPAR mark).
The Panel finds that Complainant has
established Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s domain names are confusingly similar to Complainant’s ACOMPLIA mark and are used to redirect
Internet users to a website that purports to sell Complainant’s products. The Panel finds that Respondent’s use of
domain names that are confusingly similar to Complainant’s mark, to divert
Internet users to Respondent’s websites is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iv).
See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc.,
FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use
of the <gayaol.com> domain name with the intent to divert Internet users
to Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”);
see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat.
Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain
name to solicit pharmaceutical orders without a license or authorization from
the complainant does not constitute a bona fide offering of goods or
services under UDRP ¶ 4(c)(i)).
Respondent has offered no evidence
and there is no evidence in the record suggesting that Respondent is commonly
known by the disputed domain
names. Thus, Respondent
has not established rights or legitimate interests in the disputed domain names pursuant
to Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name and was not using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
The disputed domain names are confusingly similar to Complainant’s ACOMPLIA mark. Consumers accessing Respondent’s domain names may become confused as to an affiliation between the disputed domain names and Complainant. Thus, Respondent’s use of the disputed domain names to purportedly sell Complainant’s ACOMPLIA product is evidence of bad faith registration or use pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated UDRP ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the respondent and the complainant); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent attracted users to a website sponsored by the respondent and created confusion with the complainant’s mark as to the source, sponsorship, or affiliation of that website).
Additionally,
Respondent’s use of the confusingly similar domain names to sell Complainant’s ACOMPLIA products constitutes
disruption and is evidence that Respondent registered and used the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle
& Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16,
2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent
registered each of the disputed domain names in order to gain customers and to
disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is
Ordered that the <4acomplia.us>, <acompliaonline.us>, <acomplia-diet-pill.us> and <buy-acomplia.us>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: January 16, 2006
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