The Complainant is Sanofi Aventis, Gentilly, Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is ProtectFly.com/RegisterFly.com, West Orange, New Jersey,
United States of America.
2. The Domain Names and Registrars
The disputed domain names the subject matter of this dispute are:
<getambienfree.info> registered with eNom
<getambienhere.info> registered with eNom
<getambien.info> registered with eNom
<purchaseambien.info> registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2006. On October 5, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On October 6, 2006 eNom 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 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2006.
The Center appointed James McNeish Innes as the sole
panelist in this matter on November 20, 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 Complainant is a multinational pharmaceutical company present in more than 100 countries across 5 continents. It has a portfolio of drugs regarded as blockbusters including: Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It has established positions in the therapeutic fields of cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
It employs approximately 97, 000 people worldwide, and has a large sales force as well as more than 17, 600 research staff with 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development.
The Complainant is a major player in the United States. Ambien is a product manufactured by the Complainant and is indicated for the short term treatment of insomnia. It has a large number of AMBIEN trademarks in more than 50 countries including the United States. Evidence of the existence of the various trademarks appears from the record.
Domain names registered worldwide that include the
trademark include the following: <ambien.fr>, <ambien.us>, <ambien.co.uk>,
<ambien.net>, <ambien.biz>. The disputed domain names were first
registered by the Respondent on November 6, 2005.
5. Parties’ Contentions
A. Complainant
(1) The Complainant contends that the domain names <purchaseambien.info>, <getambien.info>, <getambienfree.info> and <getambienhere.info> are confusingly similar to the AMBIEN trademark in which the Complainant has rights because the contentious domain names consist of the Complainant’s trademark with the addition of the generic words “purchase”, “get”, “here”, “free” and the gTLD “info”. These domain names generate confusion with the Complainant’s trademark AMBIEN.
(2) The Complainant contends that the Respondent has no right or legitimate interest in respect of the domain names that are the subject of the Complaint for the following reasons:
(i) The Complainant has prior rights in the trademark AMBIEN, which precede the Respondent’s registration of the domain names.
(ii) The Complainant’s trademark is present in over 50 countries including the USA and is well-known throughout the world.
(iii) The disputed domain names were used by the Respondent to promote links towards online pharmacies related to Ambien and other medical products manufactured by competitors of the Complainant and are not used to promote addiction recovery centers.
(iv) The Respondent’s site does nothing to disclaim any relationship with the trademark owner. It does nothing to dispel any possible suggestion that it might be the trademark owner, or that the website might be the, or a, official site of the Complainant.
(v) The Respondent’s use does not satisfy the test for bona fide use established in prior WIPO UDRP decisions.
(3) The Complainant states that there is no license, consent or other right by which the Respondent would have been entitled to register or use the domain names incorporating the Complainant’s trademark AMBIEN.
(4) The Complainant contends that the obvious bad faith of the Respondent results from the following elements:
(i) the Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademarks;
(ii) the Respondent’s awareness that Ambien is a leading prescription sleep aid;
(iii) the addition of words to the trademark AMBIEN misleading Internet users since it makes them believe they are official Websites of the Complainant;
(iv) the Respondent has already been involved in various WIPO UDRP cases.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant argues that the domain names are identical or confusingly similar to its marks for the following reasons:
(1) The domain names consist of the Complainant’s trademark with the
addition of the generic words “purchase”, “get”, “here”,
“free” and the gTLD “info”. A wide variety of panelists
have considered that the addition of generic words to trademarks was not sufficient
to escape the finding of similarity and does not change the overall impression
of the designations as being connected to the Complainant (see Telstra Corporation
Ltd v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO
Case No. D2000-1511; Pepsico Inc v. Pepsi SRL (a/k/a P.E.P.S.I.) and
EMS computer industry (a/k/a EMS), WIPO
Case No D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services,
WIPO Case No D2001-0174; Sony Kabushiki
Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO
Case No D2000-1409; America Online Inc v. Chris Hoffman, WIPO
Case No D2001-1184).
(2) In relation to domain names which include a trademark and for instance the term “here” or other generic terms as “free” or “purchase”, previous WIPO panelists took the view that the use of the generic and descriptive terms in conjunction with the Complainant’s trademark does not remove the domain names in dispute from being confusingly similar, the generic terms lacking in distinctiveness.
(3) There is no doubt that the reproduction and the imitation of the trademark AMBIEN, as the sole distinctive element of the domain names concerned, generates confusion. Persons accessing the domain names would be bound to think that the domain names have a connection with the Complainant.
The Panelist accepts the Complainant’s contentions. The disputed domain names are confusingly similar to the Complainant’s trademarks. The Panel finds that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent’s rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii):
(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 Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. Furthermore the Complainant states that the Respondent has no rights or legitimate interest for the following reasons:
(i) The Respondent does not use the domain names in connection with the bona fide offering of goods or services.
(ii) There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain names incorporating the Complainant’s trademark AMBIEN.
(iii) The Complainant has prior rights in the trademark AMBIEN, which precede the Respondent’s registration of the domain names.
On the basis of the above, the Panelist accepts that the Respondent has no rights or legitimate interests in the domain name. The Panel finds that Paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions “Evidence of Registration and Use in Bad Faith”. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark form reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your Website or other on-line location, by creating a likelihood of confusion with the endorsement of your Website or location or of a product or service on your Website or location.
The Complainant makes the following points:
(i) the Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademarks;
(ii) the Respondent’s awareness that Ambien is a leading prescription sleep aid;
(iii) the addition of words to the trademark AMBIEN misleads Internet users since it makes them believe they are accessing official websites of the Complainant;
(iv) the Respondent has already been involved in various WIPO UDRP cases.
There is evidence of the situations set out at Paragraphs 4(b)(i) and 4(b)(iv).
The Complainant has proven bad faith in the registration and use on the part
of the Respondent. The Panel finds that the Paragraph 4(a)(iii) of the Policy
has been satisfied.
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, <getambienfree.info>, <getambienhere.info>, <getambien.info>, <purchaseambien.info> be transferred to the Complainant.
James McNeish Innes
Sole Panelist
Dated: December 4, 2006
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