Sanofi-Aventis v. Secure Whois Information Service /DNS Admin
Case No. D2006-1206
1. The Parties
The Complainant is Sanofi-Aventis, of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.
The Respondent is Secure Whois Information Service /DNS Admin, of Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <order-ambien.net> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2006. On October 4, 2006, upon the request of the Complainant, the Center notified suspension of administrative proceeding. On November 7, 2006, the Center further extended suspension of the proceeding. On December 15, 2006, the Center re-institutioned the proceedings as requested by the Complainant. On September 21, 2006, December 15, 2006, December 29, 2006, January 4, 2007, and January 12, 2007, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the domain name at issue. On January 12, 2007, Name.com LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 16, 2007. The Center verified that the Complaint together with the amendment to 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 January 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 16, 2007. 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 Complainant Sanofi-Aventis is a multinational company present in more than 100 countries across five continents. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and is established areas such as cardiovascular, thrombosis, oncology, metabolic diseases, and disorder of the Central Nervous System, internal medicine and human vaccines. The Complainant has developed and sold throughout the world under the trademark AMBIEN a drug which is indicated for the short-term treatment of insomnia. This product was launched in the USA in 1993.
The Complainant is the owner of the following trademarks:
- AMBIEN International trademark No. 605 762 registered on February 19, 1993 in class 5, duly renewed and designating Algeria, Germany, Belarus, Benelux, Bulgaria, China, Croatia, Egypt, Spain, Russian Federation, Hungary, Kazakhstan, Liechtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, Saint Marin, Slovakia, Slovenia, Sudan, Switzerland, Ukrainian, Vietnam, Yugoslavia;
- AMBIEN French trademark No. 93 456 039 registered on February 19, 1993 in class 5 and duly renewed;
- AMBIEN UK trademark No. 1 466 136 registered on May 31, 1991 in class 5 and duly renewed;
- AMBIEN Irish trademark No. 149 250 registered on May 29, 1992 in class 5 and duly renewed;
- AMBIEN American trademark No. 1 808 770 registered on July 12, 1993 in class 5 and duly renewed;
- AMBIEN Australian trademark No. 761 307 registered on May 6, 1998 in class 5;
- AMBIEN Chilean trademark No. 521 911 registered on September 16, 1998 in class 5.
The Complainant has also registered on April 12, 2000, the domain name <ambien.com> to present its particular line of products, as well as many extensions worldwide, for example: <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net>, <ambien.biz>.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant asserts that it is the registered owner of the trademark AMBIEN and has rights.
The Complainant has noticed that the Respondent has registered the domain name <order-ambien.net> on July 26, 2005. The Complainant contends that the domain name <order-ambien.net> reproduces entirely the trademark AMBIEN which has no particular meaning and is therefore highly distinctive. By reproducing the Complainant’s trademark in its entirety as the first and dominant part of the disputed domain name, the Complainant contends that the disputed domain name is confusingly similar to this trademark regardless the additional element. The Complainant cites the Panel in the Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903 which held that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”. The adjunction of the term “order” before the element “ambien” in the disputed domain name is not sufficient to alleviate the likelihood of confusion between the aforementioned trademarks and the domain name registered by the Respondent. The Complainant argues that indeed, “order” is a generic word which directly refers to the possibility of buying a product. This term is consequently descriptive. As it is descriptive, the term “order” does not prevent Internet users from thinking there is a link between the Respondent’s domain name and the AMBIEN trademarks. The Complainant cites previous UDRP cases in which the Panel has held that the addition of a descriptive word to a registered trademark indicated a likelihood of confusion. See Harrods Lt v. AB Kphler & Co, WIPO Case No. D2001-0544; The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010;Aventis, Aventis Pharma S.A. v. John Smith, WIPO Case No. D2004-0624.
Based on the above arguments, the Complainant contends that the disputed domain name <order-ambien.net> is confusingly similar to the trademarks and domain names in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant contends that the Respondent is not generally known by the trademark or trade name AMBIEN and does not have any legitimate interest to use the domain name <order-ambien.net>. The website which the disputed domain name resolvesonto directs the Internet users automatically to other websites which are selling online various products and/or services. The Complainant thus contends that it is obvious that the domain name <order-ambien.net> is only used by the Respondent in order to lead consumer to other websites offering to sell online various products and/or services to consumers. Furthermore, the Complainant has never licensed nor otherwise permitted the Respondent to use its trademarks AMBIEN to apply for any domain name incorporating one of these terms in its entirety. There is also no relationship between the Complainant and the Respondent.
Based on the above arguments, the Complainant contends that the Respondent has no right or legitimate interests in the respect of the domain name <order-ambien.net>.
Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered in bad faith the disputed domain name <order-ambien.net> which corresponds to the trademark AMBIEN and domain names owned by the Complainant. It is the Complainant’s contention that the Respondent was undoubtedly aware at the time of the registration of the disputed domain name of the existence of the Complainant Sanofi-Aventis company which is one of the leading firms in the pharmaceutical field. The Complainant further highlights that the disputed domain name <order-ambien.net> is the second domain name incorporating a trademark of the Complainant unduly registered by the Respondent.
The Complainant further contends that the disputed domain name was not only registered in bad faith but is also being used by the Respondent in bad faith. Firstly, the Complainant contends that the Respondent by employing a number of links connected to the home page of “www.order-ambien.net”, the website of the Respondent’s domain, directs Internet users to web pages that (i) present a drug claiming to be a generic drug to replace or diabetic patients and is therefore in direct competition with the Complainant’s AMBIEN product; or (ii) offer the domain name <order-ambien.net> for sale as internet users can make auctions in order to obtain it; or (iii) offer to sell online to the consumers various products or services.
The Complainant contends that by using the disputed domain name <order-ambien.net>in such a way, the Respondent intentionally attempts to attract for financial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the Respondent’s websites or location.
The Complainant does not wish Internet users to mistakenly believe that the information provided by the Respondent on its websites or through its links have been authenticated or approved by the Complainant, as this is not the case.
Based on the above arguments, the Complainant contends that the disputed domain name was registered intentionally and is being used for a commercial purpose, without any rights or legitimate interests by the Respondent, with the only purpose of disrupting the business of a competitor. Consequently, the Respondent has registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark AMBIEN in many countries throughout the world. The Panel accepts the Complainant’s evidence and finds that the Complainant has rights in this trademark.
In assessing the degree of similarity between the Complainant’s trademarks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download the Complainant’s medical and pharmaceutical products.
The domain name <order-ambien.net> comprises of the Complainant’s trademark AMBIEN and the English word “order”, placed in front of the trademark and separated with a hyphen. The Panel finds that the Complainant’s trademark AMBIEN is a coined word with no meaning and is thus distinctive. Consequently, the most prominent and distinctive part of the domain name is the word “ambient”. The English word “order” placed together with the Complainant’s trademark AMBIEN gives rise to the meaning of purchasing or placing an order of the Complainant’s AMBIEN products. Thus, the Panel finds that the addition of the word “order” to the Complainant’s trademark AMBIEN is merely descriptive of the Complainant’s products and it does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark AMBIEN. The confusion created by the similarity between the Complainant’s trademark AMBIEN and the Respondent’s domain name <order-ambien.net> is heightened by the fact that the Complainant has developed and sold throughout the world under the trademark AMBIEN a drug which is indicated for the short-term treatment of insomnia and the product is available online on the Complainant’s website “ambient.com”. In fact, given the substantial reputation built up by the Complainant in the medical and pharmaceutical field, it is not inconceivable that Internet users searching for the Complainant’s AMBIEN products on the Internet looking at the domain name <order-ambien.net> may think that it belongs to the Complainant or is in some way associated with the Complainant.
The Panel finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. the Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the words “order-ambien” in its business operations;
2. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark AMBIEN or to apply for or use any domain name incorporating the said trademark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. the Complainant has built up a substantial reputation in its AMBIEN trademark in the medical and pharmaceutical field since its incorporation in 2004. Consequently, in the absence of contrary evidence from the Respondent, the AMBIEN mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the disputed domain name.
The Panel finds for the Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.
The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Firstly, the Panel finds that the Complainant has built up a substantial reputation in its trademark AMBIEN particularly in the medical and pharmaceutical field since its incorporation in 2004. Furthermore, the Complainant has also marketed its products on the Internet with the use of the domain name <ambien.com> and other extensions. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its pharmaceutical and medical products.
The Panel finds that there is overwhelming evidence that the Respondent has registered the disputed domain name for less than honorable intentions. The Complainant has adduced evidence and proved that by using confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. Furthermore, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s trademark and this constitutes a misrepresentation to the public that his website is associated or connected with the Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.
The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain name in bad faith
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, <order-ambien.net> be transferred to the Complainant.
Susanna H.S. Leong Sole Panelist
Dated: March 2, 2007
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