The Complainant is Sanofi-Aventis, Gentilly, France, represented by Bird & Bird Solicitors, France.
The Respondent is ActiveIdeas.com, Jason Peterson, Quaker Hill, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name <purchaseambienonline.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2006 by e-mail, and on August 7, 2006 in hard copy. On August 5, 2006, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On August 7, 2006 eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information for Respondent. The Center also obtained the contact details for the administrative, billing, and technical contact by doing a whois lookup at http://whois.enom.com. 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, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2006.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September 11, 2006. 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.
4. Factual Background
The trademark upon which the Complaint is based is AMBIEN. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark applications and registrations for the AMBIEN trademark around the world, including the U.S. Trademark Registration No. 1,808,770 issued December 7, 1993, and renewed as of December 7, 2003. AMBIEN trademark has been used in the United States of America since at least as early as September 16, 1992 in connection with pharmaceutical preparations for the treatment of sleep disorders (class 5). Reference is made to Annexes 5 and 6 of the Complaint.
According to the documentary evidence and contentions submitted, Complainant owns, directly or through affiliates, a number of domain names registrations around the world containing the AMBIEN trademark, including <ambien.us>. Reference is made to Annex 7 of the Complaint. An independent research conducted by the Panel has indicated that Complainant also owns the domain name <ambien.com>, which is registered with Register.com, Inc. as of April 12, 2000. This domain name resolves to a website that contains information on the Ambien product.
According to the documentary evidence and contentions submitted, Ambien is a product manufactured by Complainant and launched in the United States of America in 1993 for the short-term treatment of insomnia. It appears that Ambien is the leading prescription sleep aid in the United States of America. Complainant is a well known pharmaceutical company which resulted from the merger of Sanofi-Synthelabo and Aventis, present in a large number of countries, including the United States of America.
According to the documentary evidence and contentions submitted, Respondent registered the domain name <purchaseambienonline.com> with eNom, Inc. on July 20, 2005. On April 11, 2006, Complainant sent a cease and desist letter to Respondent requiring the transfer of the disputed domain name. Reference is made to Annex 12 of the Complaint. Complainant states that Respondent did not answer to this letter.
The Panel notes that Complainant has succeeded in securing the transfer of other disputed domain names containing the AMBIEN trademark or confusingly similar words as per the decisions handed down in Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660 (13 domain names); Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045 (one domain name); Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-1358 (7 domain names); and Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582 (7 domain names, including <onlineambien.com>, <online-ambien.com>, <ambienonlinepharmavy.com>, and <buyambiens.com>).
5. Parties’ Contentions
A. Complainant
Complainant argues that the domain name <purchaseambienonline.com> generates confusion with the Complainant’s trademark AMBIEN because (i) the words “purchase” and “online” are generic and descriptive, (ii) the trademark AMBIEN is the sole distinctive element of the disputed domain name, and (iii) the addition of the gTLD “.com”, which is required for registration of a domain name, has no distinguishing capacity in a domain name.
Complainant further contends that (i) Respondent has no prior rights in the trademark AMBIEN, (ii) Respondent’s site does nothing to disclaim any relationship with Complainant, (iii) Respondent does not use the domain name in connection with a bonafide offering of goods or services, and (iv) there is no license, consent or other right by which Respondent would have been entitled to register or use the disputed domain name. It also argues that Respondent has registered and is using the disputed domain name with the intention to divert consumers and to prevent Complainant from reflecting the trademark in a corresponding domain name.
Complainant further contends that the bad faith of Respondent in registering and using the disputed domain name results from the following elements: (i) Respondent has no prior right and no authorization given by Complainant concerning the trademark AMBIEN, (ii) Respondent’s awareness that AMBIEN is a leading prescription sleep aid, (iii) the addition of generic words to the trademark AMBIEN misleads Internet users since it makes them believe that it is an official website of Complainant, and (iv) the fact that WIPO has already rendered decisions against the Respondent and that Respondent is a cybersquatter.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the Respondent’s default does not automatically result in a decision in favor of the Complainant and that the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainants. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
Complainant’s basic contention that the disputed domain name is confusingly similar to the trademark AMBIEN is warranted. In fact, the trademark AMBIEN is distinctive and the domain name <purchaseambienonline.com> incorporates such trademark in its entirety.
The words “purchase” and “online” are generic and descriptive, and the addition of those words does not affect a finding that the disputed domain is confusingly similar to Complainants’ registered trademark. Quixtar Investments Inc. V. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that Quixtar and <quixtarmortgage.com> are legally identical); Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (finding that the addition of the generic words “buy” and “online” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. DNS Administrator/ Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047 (finding that the suffix “purchase” is descriptive and adds no distinctiveness to the domain name <purchasevalium.com> which incorporates complainant’s trademark); F. Hoffman La Roche AG v.Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion).
The addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
In this type of combination it is clear that the registered trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159 (finding that the term “shop” is non-distinctive and may create an association with the registered trademark to which it is added).
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in previous WIPO UDRP Panel decisions has been that a Complainant is required to make out an initial prima facie case, following which the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
The Panel finds as reasonable Complainant’s contentions that Respondent has no prior rights in the trademark AMBIEN and that there is no license, consent or other right by which Respondent would have been entitled to register or use the disputed domain name. The Panel also accepts Complainant’s contention that Respondent is probably aware that Ambien corresponds to a medical product and, therefore, to a trademark given the fact that (i) Ambien was launched in the United States of America in 1993 and has been a leading prescription sleep aid in the United States of America, (ii) Complainant owns the domain name <ambien.com>, which is registered with Register.com, Inc. as of April 12, 2000, and (iii) the domain name <ambien.com> resolves to a website that contains information on the Ambien product.
Complainant relies on a previous WIPO UDRP decision to argue that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use because Respondent did “nothing to disclaim any relationship with the trademark owner”. Sanofi-Aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769. Therefore, Complainant sustains that Respondent does not use the domain name in connection with a bona fide offering of goods or services.
The issue of whether respondent is making a bona fide offering of goods sufficient to establish legitimate interests in a disputed domain name has been discussed in a number of WIPO UDRP cases. There are various factors that must be considered in determining whether an offering of goods is bona fide where no relationship exists between the trademark or service mark owner and the owner of the disputed domain name. Gerd Petrik v. Johnny Carpella, WIPO Case No. D2004-1043; Pfizer Inc. v. Websites, WIPO Case No. D2004-0730.
These factors may include (a) whether complainant has acquiesced in the use of its trademark, and whether it has tacitly acquiesced through the passage of time; (b) whether the disputed domain name is the only name that respondent can use to describe its business; (c) whether there is a prominent disclaimer permitting Internet users to know the precise relationship, if any, between the registrant and the trademark owner;
(d) whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under Paragraph 4(a)(iii).
The Panel has found already that Complainant has not consented to the use at issue. It is clear that the disputed domain name is not the only name that Respondent can use to describe its business. An independent survey on the “www.purchaseambienonline.com” website was conducted by the Panel by visiting that website on September 22, 2006, and the Panel has confirmed that there is no prominent disclaimer permitting Internet users to know that there is no relationship between Respondent and Complainant. Reference is also made to Annex 11 of the Complaint. As a result, there is a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation, or endorsement of Respondent’s website.
Finally, for an offering under Paragraph 4(a)(ii) to be considered bona fide, the domain name use must be in good faith under Paragraph 4(a)(iii). First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840. In that respect the Panel finds that Respondent is clearly diverting Internet users searching for Complainant’s product. It is not clear that Respondent is preventing Complainant from reflecting its trademark in a corresponding domain name, as affirmed by Complainant, because Complainant already owns <ambien.com> and may use different combinations. That issue, however, is not relevant to dispose of the matter.
In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
Most of Complainant’s contentions to support the proposition that the disputed domain name has been registered and used in bad faith have already been addressed by the Panel. In fact, the Panel has found that Respondent has no prior right and no authorization was given by Complainant with respect to the trademark AMBIEN, that Respondent was most probably aware that Ambien is a leading prescription sleep aid, and that the addition of generic words to the trademark AMBIEN creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation, or endorsement of Respondent’s website. The Panel has also found that Respondent is clearly diverting Internet users searching for Complainant’s product.
There is a further element which is relevant in the resolution of this dispute. Complainant contends that Respondent is a cyberscatter because it has shown a pattern of registering domain names incorporating the marks of third parties. Complainant relies on Accor v. Jason Petersen, WIPO Case No. D2006-0356 (“This is a simple case of cybersquatting”); Patelco Credit Union v. ActiveIdeas.com, WIPO Case No. D2005-1295; and QVC, Inc. and ER Marks, Inc. v. ActiveIdeas.com, WIPO Case No. D2005-1303. In short, Respondent has in fact a history of registering and using domain names in bad faith.
The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that Respondent registered and is using the domain name <purchaseambienonline.com> in bad faith. Therefore, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy have been met.
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 name <purchaseambienonline.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos Sole Panelist
Date: September 25, 2006
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