The Complainant is Sanofi-aventis, France, represented by Bird & Bird Solicitors, France.
The Respondent is Ju Dehua, China.
2. The Domain Names and Registrar
The disputed domain names <best-buy-ambien.com>, and <new-ambien.com>
are registered with Gandi SARL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2005. On October 4, 2005, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain names at issue. On October 5, 2005, Gandi SARL 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 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2005.
The Center appointed Ms. Charné Le Roux as the Sole
Panelist in this matter on November 2, 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 Panel learnt, subsequent to the filing of its
Statement of Acceptance and Declaration of Impartiality and Independence, of
circumstances that should be brought to the attention of the Center and the
Center accordingly notified the Complainant and Respondent on November 11, 2005,
and invited comments. No comments were received and the proceedings continued
normally.
4. Factual Background
The Complainant is the third largest pharmaceutical company in the world following the acquisition by Sanofi-Synthelabo, a French pharmaceutical company, of Aventis. The Complainant is currently constituted as a multinational company present in more than a hundred countries across five continents.
The Complainant manufactures and markets therapeutic products in a number of fields including cardiovascular, thrombosis, oncology and central nervous system and one of its flagship products is AMBIEN. AMBIEN is indicated for the short term treatment of insomnia.
AMBIEN was first launched in the United States of America in 1993 and in 1994 was considered as the market leader with 27% of total prescriptions. The Complainant and its affiliate companies also own a large number of trademark registrations and applications for AMBIEN in class 5 covering pharmaceutical goods, in many countries across the world including China. These include, by way of example, US trademark registration number 1808770 registered on August 10, 1993 that extends to China. These registrations appear to be valid and in force. The Complainant and its affiliate companies also own a number of domain names that include the trademark AMBIEN, for example, <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net> and <ambien.biz>. The Complainant claims that its AMBIEN trademark is well-known worldwide and in China. The Complainant has a website dedicated to China.
The Respondent did not reply to the Complainant’s contentions. The only information regarding the Respondent that is available to this Panel is that the Respondent registered the disputed domain names on March 16, 2005, and that the websites maintained by the Respondent under the disputed domain names are both linked to a site which promotes the sale of the Complainant’s product and also the products of other manufacturers.
On June 17, 2005, the Complainant addressed a letter
to the Respondent requesting the transfer of the disputed domain names to the
Complainant within 10 days. There was no response by the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant contends that its AMBIEN trademark is well-known and that its rights in it are established through extensive use and registration.
The Complainant contends that the disputed domain names are confusingly similar to its AMBIEN trademark because the addition of the generic words “new”, “best”, “buy” and the gTLD “.com” does not change the overall impression of the designations as being connected to the Complainant, and is designed to give rise to persons accessing the domain names mistakenly to believe that the disputed domain names have a connection with the Complainant.
The Complainant also contends that the Respondent lacks rights or legitimate interest in the disputed domain names in that:
(a) the Complainant has prior rights in the trademark AMBIEN, that precede the Respondent’s registration of the disputed domain names;
(b) the Complainant’s trademark is well-known in the Respondent’s country and there is no doubt that the Respondent is aware that AMBIEN corresponds to a medical product and to the trademark owned by the Complainant;
(c) the disputed domain names have been used by the Respondent to promote AMBIEN products and through their link to a website “www.drypills.com” also competing pharmaceutical products;
(d) the Respondent does not have a licence, consent or other right by which it would have been entitled to register or use a domain name incorporating the Complainant’s trademark AMBIEN;
(e) the Respondent has not made bona fide use of the disputed domain names; and
(f) the prime motivation for the registration of the disputed domain names by the Respondent was to divert consumers and prevent the Complainant from reflecting its trademark in corresponding domain names.
The Complainant contends finally that the Respondent acquired and uses the disputed domain names in bad faith. The Complainant indicates that:
(a) the Respondent has no prior rights and no authorization given by the Complainant concerning the AMBIEN trademark;
(b) the Respondent’s awareness that AMBIEN is one of the leading prescription sleep aids in America constitutes bad faith registration and use.
(c) the addition of generic words to the trademark AMBIEN misleads Internet users into believing that it is the official website of the Complainant.
(d) the Respondent’s registration of more than 400 domain names that include various companies’ trademarks constitutes a pattern of such conduct and is evidence of the Respondent’s bad faith.
The Complainant requests that the disputed domain names be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
(i) Procedural matters
a. Jurisdiction of the Panel
The Panel’s jurisdiction has not been placed in dispute and the Panel finds that the dispute is properly within the scope of the Policy and that it is within its jurisdiction to adjudicate the issues in this case.
b. Default of the Respondent
The Respondent has not reacted to the Complaint but this does not relieve the Complainant of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant do, however, in terms of the Rules, permit the Panel to draw appropriate inferences.
(ii) Substantive matters
Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the disputed domain names to be transferred:
a. that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
b. that the Respondent has no rights or legitimate interests with respect to the disputes domain names; and
c. that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proven that it is the owner of rights in the trademark AMBIEN and that the mark has become known as that of the Complainant, not only in its home country, but virtually worldwide.
The Panel also finds that the disputed domain names are confusingly similar
to the Complainant’s trademark. The Panel finds that adding generic words
to a domain name such as “new”, “best” and “buy”
is not sufficient to escape the finding of similarity and does not change the
overall impression of the designation as being connected to the trademark of
the Complainant. In this case the words “new”, “best”
and “buy” do not serve any distinguishing function but rather describe
the nature of the services offered on the relevant website. Of relevance are
the following domain names, which were all held by previous panels to be confusingly
similar to the AMBIEN trademark of the Complainant: <ambienadvisor.com>
(WIPO Case No. D2005-0607), <online-ambien.biz>
(WIPO Case No. D2005-0606); <buy-ambien-online.net>
(WIPO case No. D2005-0605); <ambien-free-shipping.com>,
<ambien-overnight.info>, <ambien-overnight.org>, <ambien-pharmacie.net>,
<ambien-prescription.org>, <ambien-usa.net>, <ambien-5mg.org>,
<cheap-ambien.net>, <cheap-ambien-no-shipping-charge.com>, <cheap-ambien-sleeping-pill.com>,
<cheapest-ambien.org>, <lowest-price-ambien.com> and <order-ambien-cheap.com>
(WIPO Case No. D2005-0660).
B. Rights or Legitimate Interests
The panel in Do The Hustle, LLC v. Tropic Web, WIPO
Case No. D2000-0624, summarised the burden of proof in respect of paragraph 4(a)(ii)
of the Policy, namely that once the Complainant has asserted that the Respondent
has no rights or legitimate interest, the burden of proof shifts to the Respondent.
The Respondent must then make more than an assertion that it has rights or legitimate
interests and must provide factual evidence in support of its claim. Paragraph 4(c)
of the Policy provides circumstances whereby the Respondent may demonstrate
its rights or legitimate interests in a domain name.
The Complainant in this matter has made the required assertion to which the
Respondent has not reacted. The Panel finds that the Respondent’s failure
to file a response indicates a lack of legitimate interest. See Time Out
Group Ltd. v. Marc Jacobson,WIPO Case
No. D2001-0317.
Furthermore, on the facts of this matter, the Respondent uses the disputed domain names to promote the sale of the Complainant’s AMBIEN product but also through their link to a website “www.drypills.com” products in direct competition with the Complainant. Internet searches conducted by the Panel show that the only way to effect a purchase, following an invitation to do so that appears on the websites linked to the disputed domain names, is to access the website at “www.drypills.com”, therefore intentionally redirecting potential buyers to competing products. The Panel finds that Internet users will be attracted to the websites linked to the disputed domain names by the well known AMBIEN trademark and that they will access those websites because they are interested in the Complainant’s products. The Panel is of the view that the Respondent’s only interest in the disputed domain names is to derive a benefit from the goodwill that attaches to the Complainant’s trademark.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or a legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.
The Complainant contends that the Respondent registered domain names that include the trademarks of third parties. However, the Panel was unable to find the Respondent listed as registrant of a domain name that incorporates the trademark of a third party in the list of about 400 domain names provided by the Complainant. The Complainant did not specifically point out which of the 400 domain names were relevant for purposes of its argument in this respect nor did it provide reasons. The Panel was thus not able to make a finding in terms of paragraph 4(b)(ii) of the Policy on the basis of the evidence presented.
The Complainant’s case is also made in terms of paragraph 4(b)(iv) of the Policy, which provides that bad faith may be evidenced by use by the Respondent of a domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating the likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Panel finds that the Respondent is intentionally diverting Internet users to its websites by exploiting the confusing similarity between the disputed domain names and the Complainant’s AMBIEN trademark and by offering goods that compete with the Complainant’s AMBIEN product. The Panel finds that the Respondent is undoubtedly engaging in such conduct in order to reap a commercial benefit.
Consequently, the Panel holds that paragraph 4(b)(iv) of the Policy has been
satisfied and thus, that the Complainant has discharged its onus in showing
that the Respondent has registered and used the disputed domain names in bad
faith.
7. Decision
In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel finds that the Complainant has established that:
(i) the disputed domain names are identical or confusingly similar to the Complainant’s AMBIEN trademark;
(ii) that the Respondent has no rights or legitimate interest with respect to the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Accordingly, the Panel grants the Complainant’s request that the disputed domain names <best-buy-ambien.com>, and <new-ambien.com> be transferred to it.
Charné Le Roux
Sole Panelist
Dated: November 22, 2005
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