Nominet UK Dispute Resolution Service
DRS Number 04747
Parties: Sanofi-aventis v Shaun Breen
Decision of Independent Expert
Complainant: sanofi-aventis
Country: France
Respondent: Shaun Breen
Country: GB
buyacompliapills.co.uk
acompliadietpills.co.uk
acompliapills.co.uk
This domain names are referred to below as the "Domain Names".
A hardcopy of the Complaint was lodged with Nominet on 30 May 2007. Nominet validated the Complaint on 31 May 2007 and notified the Respondent. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response to the Complaint. A Response was submitted within this time limit on 13 June 2007. The Complainant did not submit a Reply. The dispute was not resolved in mediation. On 16 August 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
There are no outstanding formal issues.
The Complainant
According to the following submissions set out in the Complaint (and unchallenged by the Respondent) the Complainant is one of the world's leading pharmaceutical companies, researching and developing therapeutic drugs and marketing them in over 100 countries. The Complainant has a large portfolio of high-growth drugs. It enjoys established positions in 7 key fast-growth therapeutic fields; cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines. It employs approximately 100,000 people worldwide. The stock market capitalisation of the Complainant is over €100,000 million.
On 16 February 2004 the Complainant announced early results of its successful studies into a new product called Acomplia ("the Product"). These studies indicated that overweight and obese patients with untreated dyslipidemia lost weight in a year while improving their lipid and glucose profiles, and that smokers who had previously unsuccessfully tried to quit smoking, were able to give up in 10 weeks without post cessation weight gain. The results were published widely in February and March 2004 (copies of relevant documents are contained in Annex 1 to the Complaint). The Product has subsequently received market authorisations and has been launched in many countries. The Complainant launched the Product in the UK in June 2006, after receiving marketing authorisation. The Complainant's press release for the UK launch dated 21 June 2006 is at Annex 2 to the Complaint.
The Product has received significant coverage in the media, both before and after its UK launch. At Annex 3 to the Complaint are copies of 22 press articles referring to, or about, the Product. These include articles published in the Independent on Sunday (4 June 2006), FT.com (8 November 2005) and the Daily Telegraph (29 April 2005) as well as articles published in the specialist pharmaceutical press.
The Complaint asserts that in consequence of such marketing and publicity the Product is well known around the world, including in the UK, both in the medical field and among members of the public using obesity drugs.
The Complainant owns Community Trade Mark registration no. 3565678 for the word mark ACOMPLIA filed on 2 December 2003 and registered on 26 April 2005 in respect of pharmaceutical preparations in class 5; and Community Trade Mark registration no. 854264 for a figurative representation of the mark ACOMPLIA dated 18 August 2005 also registered in respect of pharmaceutical preparations in class 5 (details of these registrations are contained in Annex 4). It has also filed trade mark applications for ACOMPLIA in more than 100 countries. A list of the Complainant's worldwide trade mark applications and registrations for ACOMPLIA is contained in Annex 5.
In addition to its trade mark portfolio the Complainant has registered numerous domain names worldwide containing the ACOMPLIA mark, for example www.acomplia.com, www.acomplia.fr, www.acomplia.us. A schedule of the domain names is contained in Annex 6.
The Respondent
According to the Complaint the Respondent's business is selling diet supplements under the brand HOODIA. At Annex 7 to the Complaint is a copy of an undated article from Nutraceuticals International (with a copyright notice dated 2003) about the Respondent indicating that the HOODIA product contains natural ingredients and is seen to help with weight-loss problems by suppressing appetite. The Complainant contends that the Respondent's business competes with the Product.
The Respondent operates websites at www.hoodiadietpills.org and www.hoodiadietproducts.com. Relevant extracts of these websites are contained in Annex 8 to the Complaint. The websites show that the HOODIA product is sold in the form of diet pills. The above information is not disputed by the Respondent.
The Domain Names
The Respondent registered the Domain Names on 29 June 2006. The Complainant draws the Expert's attention to the fact that this occurred only 8 days after the Complainant's press notice about the UK launch of the Product. The Respondent confirms that this was so in its Response.
The Complaint records that the URLs for the Domain Names either have a holding page (www.acompliadietpills.co.uk) or divert to the Respondent's website at www.hoodiadietpills.org (www.buyacompliapills.co.uk and www.acompliapills.co.uk). At Annex 10 to the Complaint is a printout of the holding page of www.acompliadietpills.co.uk and the home page of www.hoodiadietpills.org evidencing the diversion from www.buyacompliapills.co.uk and www.acompliapills.co.uk. None of this is disputed by the Respondent. A search by the Expert on 2 September 2007 also confirmed that this was the position.
On 8 March 2007 the Complainant emailed the Respondent requesting that the Domain Names be transferred to it. On 18 April 2007 the Respondent replied by e-mail in the following terms "Hi, I am in a position to offer you the opportunity to purchase the said domain names. I am looking for offers in the region of 100,000 pounds sterling". (Copies of this brief correspondence are contained in Annex 12 to the Complaint.) There was apparently no further contact between the parties.
The Complainant
The Complainant submits that it is clear that the Domain Names in the hands of the Respondent are abusive under the Policy. It contends that the Domain Names were primarily registered for the purpose of selling them to the Complainant for valuable consideration in excess of the Respondent's out of pocket expenses directly associated with acquiring or using the Domain Names. It contends that this submission is supported by the Respondent's email to the Complainant dated 18 April 2007, in which the Respondent stated that he was willing to sell the Domain Names for offers in the region of £100,000.
A second contention made by the Complainant is that the Domain Names have been used for the purposes of unfairly disrupting the business of the Complainant. It alleges that the Respondent is using the Domain Names in order to divert business from the Complainant to his own website, on which he sells competing weight loss pills. The Complainant goes on to assert that by using the Domain Names in this way, the Respondent is misleading the public into believing that his goods originate from the Complainant. The Domain Names incorporate the Complainant's ACOMPLIA mark with the addition of a descriptive element (which will be ignored by the public), and the public will believe that the corresponding URLs are operated either by the Complainant or with its consent and that the URLs for the Domain Names are "official sites". There is no direct evidence before the Expert that any confusion has occurred. Although the Complainant contends that its submissions about use applies to each of the Domain Names, in reality the Expert understands them as applying to the 2 domain names which divert to the Respondent's website (www.buyacompliapills.co.uk and www.acompliapills.co.uk). The contentions have no obvious relevance to the third domain name (www.acompliadietpills.co.uk) which diverts to a holding page with no apparent connection to the Respondent.
The Complainant observes that the Respondent registered the Domain Names shortly after the Complainant's press release was released and he has never used the Domain Names other than to divert to his own websites and clearly has no legitimate reason for registering and using the Domain Names.
The Respondent
The Response is brief and is in the following terms:
I did indeed purchase the domain names stated for the purpose of gaining weight loss related traffic on the 29th June 2006. At no time have I stated that we market any product by the name of acomplia. I find it hard to believe that in a company worth many millions and employing 100000 people there is no one who thought it would be wise to register a name back in 2004 when they had the opportunity or was it not considered important? I hope they do not forget to put the right amount of each ingredient in their drugs!
General
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, that:
i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy).
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law.
The Complainant asserts that it has rights in the ACOMPLIA mark and that the mark is identical or similar to the Domain Names.
The Complainant's trade mark registrations in the word mark ACOMPLIA (for example Community Trade Mark 3565678) confer rights in the ACOMPLIA mark which are enforceable under English law.
The Domain Names are similar to the Complainant's registered trade marks for the purposes of the Policy. The addition of what are in the context of the Complainant's business neutral or purely descriptive words, namely "buy", "pills" and "diet pills" does not displace the overall impact of the word "Acomplia" in the Domain Names. The Complainant has therefore demonstrated that it owns registered rights in the ACOMPLIA mark and that the mark is identical or similar to the Domain Names for the purposes of the Policy. The first criterion under the Policy has therefore been satisfied.
For the sake of completeness the Expert also finds on the balance of probabilities that the evidence annexed to the Complaint about the sustained media coverage of the Product in the UK means that the Complainant owns goodwill generated by the ACOMPLIA mark such that the mark is associated with the Complainant's products by relevant business sectors and members of the public. The goodwill confers unregistered rights on the Complainant which are also sufficient to discharge the Complainant's burden under the Policy.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
A Domain Name which either:
i was registered or otherwise acquired in a manner, which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights [italics for emphasis],
OR
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant's case is based on the Respondent's registration and use of the Domain Names.
A non-exhaustive list of factors which may be evidence that the use of the Domain Names is an Abusive Registration is given in clause 3a of the Policy. The following factors are relevant to this Complaint:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name…
C. for the purpose of unfairly disrupting the business of the Complainant.
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
Registration
The Complainant submits that the Respondent's offer to transfer the Domain Names to the Complainant for £100,000 (i.e. in excess of the cost directly associated with registering the Domain Names) amounts to evidence that the Respondent registered the Domain Names with the primary intention of making a profit from its registrations through sale or transfer (clause 3(a) (i) A). The difficulty with this argument is the inclusion of the word "primarily" in clause 3(a) (i) of the Policy. The offer to transfer the Domain Names was made in response to an email from the Complainant. It was made some 9 months or so after the initial registrations. It was accordingly not initiated by the Respondent nor was it contemporaneous with the Domain Name registrations. During the intervening period the Respondent had used 2 of the Domain Names to divert to his own website. The Respondent states in the Response that the Domain Names were registered "for the purpose of gaining weight loss related traffic". For these reasons in the view of the Expert the evidence does not support a finding that the primary motivation behind the registration of the Domain Names was their transfer for profit.
On the other hand the Respondent's admission in the Response that the Domain Names were registered to divert business to the Respondent's website and products ("gaining weight loss related traffic") quite clearly demonstrates that the Respondent was motivated at the time of registration to acquire all 3 of the Domain Names in order to take unfair advantage of the Complainant's Rights (clause 1(i)) and to cause unfair disruption to the Complainant's business (clause 3(a) (i) C). The Respondent's gain in "traffic" would inevitably be brought about through its unfair exploitation of the Complainant's Rights in the ACOMPLIA mark –its property rights and its goodwill. Given the competing nature of the parties' respective products any gains in traffic for the Respondent would be likely to be at the expense of the Complainant. On the balance of probabilities, the Expert finds that this would cause disruption and loss to the Complainant's business. As the Complainant points out, the Domain Names were registered very shortly after the Complainant's press release about the launch of the Product in the UK. This lends support to the Expert's finding that the Respondent was aware of the Product and intended to exploit the Complainant's Rights at the time that the Domain Names were registered.
The Expert finds that the Respondent's registration of the Domain Names was an Abusive Registration under the Policy. This finding applies to each of the domain names at issue in this matter and the Complainant is accordingly entitled to have the Domain Names transferred to it.
Use
The Complainant also submits that the Respondent's use of the domain names www.buyacompliapills.co.uk and www.acompliapills.co.uk to divert to the Respondent's website amounts to an Abusive Registration under clause 3(a) (ii) of the Policy. This, it submits, is because of the likelihood of confusion amongst potential customers. The Expert agrees. The Response asserts that "At no time have I stated that we market any product by the name of acomplia". The Expert accepts this statement. However this does not displace the potential for confusion. The similarity in the overall functions of the products offered by the parties (the facilitation of weight loss) creates a context in which members of the public who are diverted to the Respondent's website would readily assume a (mistaken) connection between the parties or their products. Although there is no evidence of actual confusion the Expert infers on the balance of probabilities that confusion will have occurred and is likely to continue. She therefore finds that the domain names www.buyacompliapills.co.uk and www.acompliapills.co.uk have been used in a manner that will inevitably confuse third parties into the mistaken belief that the 2 domain names, and the Respondent's products, are connected to the Complainant. This use amounts to Abusive Registration under the Policy.
The Expert's finding in relation to use applies to the www.buyacompliapills.co.uk and www.acompliapills.co.uk domain names only. The www.acompliadietpills.co.uk registration has apparently not been put to active use by the Respondent and the Complainant has not developed its submissions in relation to it. However this makes no difference to the practical effect of the Expert's overall decision. As indicated above, the finding of Abusive Registration in relation to the registration of the Domain Names applies to all 3 of the domain names and entitles the Complainant to have each of the domain names transferred to it.
In the Response the Respondent seeks to justify its actions by pointing out that the Complainant should have registered the Domain Names in 2004 when the Product was first tested successfully. This is not a relevant consideration under the Policy and has no bearing on this decision.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of names or marks which are identical or similar to the Domain Names and that each of the domain names in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Names are transferred to the Complainant.
Sallie Spilsbury
3 September 2007