The Complainant is Sanofi-Aventis, Gentilly, France, represented by Bird & Bird Solicitors, France.
The Respondent is Ashima Kapoor, Megasys Consulting Inc., New Delhi, India.
2. The Domain Names and Registrar
The disputed domain names <ambien-information.com>, <best-price-ambien.com>,
<cheap-generic-ambien.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2005. On July 19, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On August 3, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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 August 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2005.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on September 15, 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.
The Panelist requested an extension of the decision due date. In accordance
with paragraph 10(c) of the Rules for Uniform Domain Name Resolution Policy,
the decision due date was extended to October 3, 2005.
4. Factual Background
The Complainant has registered the AMBIEN trademark in class 5 in various countries around the world (including France, USA, and an International Registration since 1993). The Complainant also has pending trademark applications in various countries. Some of the registrations are in the name of Sanofi-Synthelabo, which is the corporate predecessor of the Complainant. Other registrations are in the name of the Complainant.
Domain names including the trademark AMBIEN have been registered by the Complainant. The domain names viewed by the Panel in this case were registered in 2000, 2001 and 2002 in the name of Sanofi-Synthelabo.
The Respondent registered the disputed domain names
in 2005.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
- The Complainant launched the product AMBIEN in 1993 in the United States of America. The product is a short-term treatment of Insomnia, and it has become a market leader. The Complainant owns the trademark AMBIEN and has trademark and domain name registrations worldwide.
- The disputed domain names <ambien-information.com> <best-price-ambien.com> and <cheap-generic-ambien.com> cause confusion with the Complainant’s AMBIEN trademark. Adding the words “generic”, “cheap”, “best”, “price”, “information,” which are generic or descriptive, is not enough to avoid the creation of confusing similarity. Based on this, the only distinctive part of the domain names is the word AMBIEN. Addition of the gTLD .com has no distinguishing capacity. Therefore, the disputed domain names create confusion and the public will be led to believe that these domain names have a connection with the Complainant.
- The Respondent should be considered as having no rights or legitimate interests in the disputed domain names. The Respondent has not obtained a license, consent or other right by the Complainant allowing him to use the trademark AMBIEN. The Complainant’s rights in the trademark AMBIEN precede the Respondent’s registration of the domain names. The Complainant is present in over 50 countries including India (the Respondent’s home country). The disputed domain names have been used by the Respondent to provide links to websites promoting AMBIEN products. There is no doubt that the Respondent is aware that AMBIEN is a trademark. The Respondent has registered these domain names with the intention to divert consumers and to prevent the Complainant from reflecting the mark in corresponding domain names.
- The domain names should be considered as registered and used in bad faith. The Complainant presents the following arguments in support of this contention; Respondent has no prior right or authorization given by the Complainant concerning the AMBIEN trademark; the disputed domain names lead to websites promoting generic AMBIEN; there is no doubt the Respondent is aware that AMBIEN is one of the leading prescription sleep aid products since it promotes it on its web-site; the registration of multiple domain names including the Complainant’s trademark; the addition of words to the trademark AMBIEN misleads the public and makes it believe that it is the official websites of the Complainant; Complainant has already requested, in writing, the transfer by the Respondent of the disputed domain names.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
As a starting point, the Panel notes that the Complainant uses the trademark AMBIEN in all of the disputed domain names; there is no disputing the fact that the Respondent is using the trademark of the Complainant in the domain names.
The Complainant has simply added words to the trademark in each domain name but these words are in no way distinctive. Using terms such as “cheap-generic” and “best-price” is in fact descriptive, i.e. these words can be considered as simple descriptions of the product sold under the trademark AMBIEN. Using the word “information” in one of the disputed domain names will lead the consumer to believe that the concerned web-site is a source of information on the product AMBIEN. Therefore, it is evident that the use of the trademark AMBIEN together with the other words confuses the consumer and leads him/her to think that these web-sites are owned by the Complainant.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
The trademark AMBIEN belongs to the Complainant and is used and registered by it since 1993. The various trademark and domain name registrations by the Complainant establish its ownership of the trademark AMBIEN. It appears that no authorization was given to the Respondent to use the trademark AMBIEN as part of it’s the Repondent’s domain name.
Furthermore, the Respondent cannot rely on Paragraph 4 (c)(iii) of the Policy to argue that the disputed domain names were being used for “legitimate non-commercial or fair” purposes. In fact, the Respondent is using the disputed domain names to direct the public to web-sites which promote and sell online AMBIEN product as a medication for insomnia.
The Panel also noted here that the Respondent failed to respond to this Complaint. While failure to respond does not present conclusive evidence against the Respondent, the Panel did consider this factor as further proof of the Respondent’s failure to demonstrate his rights or legitimate interests in the disputed domain names.
In this regard, the Panel was guided by previous UDRP Decisions, such as Nokia
Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO
Case No. D2004-0814, in which the Panel found that the Respondent did not
have rights or legitimate interests in the disputed domain name <nokiaforum.com>
for reasons similar to those in this case.
Therefore, the Panel is satisfied that the Respondent has no rights or legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith
The facts submitted in this case show that registration and use of the disputed domain names by the Respondent is in bad faith. This is demonstrated mainly by the following facts:
1. The trademark of the Complainant was registered long before the registration of the disputed domain names.
2. The registration of the disputed domain names was effected after the success of the product AMBIEN had been established and it had become a market leader.
3. According to the print-outs submitted by the Complainant, the disputed domain names led to web-sites which promote the product AMBIEN. This establishes the Respondent’s knowledge of the trademark AMBIEN and the concerned product. Currently, it is not possible to view the content of the web-sites since the Registrar of the disputed domain names has put them on hold.
4. The main purpose of the domain names is to promote the product AMBIEN as shown by the documents submitted by the Complainant. This confirms that the registration and use of the domain names is intentional and attempts to attract customers through creating confusion with the Complainant’s mark as to the source and endorsement of the Respondent’s website.
The Panel finds that the third test under Paragraph 4(a) has been established
successfully by the Complainant.
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, <ambien-information.com>, <best-price-ambien.com>, <cheap-generic-ambien.com> be transferred to the Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: October 3, 2005
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