The Complainant is Sanofi-Aventis, Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is S Softech, Lucknow, India.
2. The Domain Name and Registrar
The disputed domain name <ambienpak.com> is registered with Direct Information
Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2006. On October 30, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On October 31, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.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 November 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2006. The Response was filed with the Center on November 9, 2006, and contained within the Respondent’s email of that date.
The Center appointed James McNeish Innes as the sole
panelist in this matter on December 12, 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.
AMBIEN is a product manufactured by the Complainant and is indicated for the short term treatment of insomnia. Its range includes a product called “AMBIEN PAK”, registered as trademark in the United States of America since 1993.
The Complainant owns a large number of AMBIEN trademarks
in more than 50 countries including India. The Complainant’s products
are marketed in India through an associated company listed on Mumbai stock exchange.
The Complainant also operates pharmaceutical plants in India. There is no information
on the Record concerning the business activity of the Respondent. The domain
name was created on July 20, 2005.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
(1) The Respondent’s registration consists of the Complainant’s trademark “AMBIEN PAK”, with both terms “AMBIEN” and “PAK” attached to each other. The reproduction of the trademark “AMBIEN PAK” and even the term AMBIEN, as the sole distinctive element of the domain name concerned, generates confusion. Persons accessing the domain name would be bound to think that the domain name has a connection with the Complainant. There is a high risk of confusion, since a consumer may think that the domain name directly refers to the Complainant’s products. In conclusion, the domain name <ambienpak.com> generates confusion with the Complainant’s trademarks AMBIEN and AMBIEN PAK.
(2) The Complainant has prior rights in the trademarks
AMBIEN PAK and AMBIEN, which precede the Respondent’s registration of
the domain name. The Complainant’s trademark is present in over 50 countries
including the United States of America and India, and is well-known throughout
the world. The disputed domain name has been used by the Respondent to promote
similar products. The Respondent is also offering for sale the domain name.
Furthermore, there is no license, consent or other right by which the Respondent
would have been entitled to register or use the domain name incorporating the
Complainant’s trademark AMBIEN. The Respondent has made no bona fide
use of the disputed domain name because of its lack of authorization to use
the trademark AMBIEN. Furthermore, using domain names in order to divert consumers
for commercial gain cannot be characterized as a fair use. (Trip.com v. Daniel
Deamone, WIPO Case No. D2001-1066).
(3) The obvious bad faith of the Respondent results from the fact that the Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademarks (including the trademark AMBIEN PAK); the Respondent awareness that AMBIEN is a leading prescription sleep aid; the reproduction of the trademark AMBIEN PAK and even the addition of a word to the trademark AMBIEN misleading Internet users since it makes them believe it is an official Website of the Complainant; and the Respondent offered to sell the domain name for an amount in excess of the costs of its registration.
B. Respondent
The Respondent contends that:
(1) The domain name is not intended to target the products of the Complainant and the Respondent is not aware of the existence of the Complainant.
(2) Offering a domain name for sale does not indicate a lack of interest in respect of the domain name.
(3) There was no need to obtain the permission of the Complainant for the use of the domain name because there was no competition with the Complainant’s products.
(4) The Respondent was not aware that AMBIEN is a product of the Complainant.
(5) The sale of domain names is a business where a
mark up is made to cover expenses and generate profits.
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.
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has made a number of specific submissions in support of its argument that the domain name is identical or confusingly similar to its marks. They are set out as follows:
The Respondent’s registration consists of the Complainant’s trademark
AMBIEN PAK, with both terms “AMBIEN and “PAK” attached to
each other. It also consists of the reproduction of the other Complainant’s
trademarks “AMBIEN”, with the addition of the generic word “pak”
and the gLTD “.com”. 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
Limited v.Peter Lombardo, Marino Sussich and Ray Landers,WIPO
Case No. D2000-1511; PepsiCo, Inc. v. Diabetes Home Care, Inc. 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). In fact, as stated in WIPO
Case No. D2000-1117 regarding inter alia the term “pack”
(Jefferson Smurfit Group plc v. Stephen Davidson Inc.): “The
addition of “packaging”, “pack”, “print”,
“box” to the world “Smurfit” are not such as to render
the relevant domain names anything but confusingly similar to the Complainant’s
mark”. Therefore, and after analyzing different WIPO cases, there is no
doubt that the reproduction of the trademark “AMBIEN PAK” and even
the term AMBIEN, as the sole distinctive element of the domain name concerned,
generates confusion. Indeed, persons accessing the domain name would be bound
to think that the domain name has a connection with the Complainant.
In conclusion, the domain name <ambienpak.com> generates confusion with the Complainant’s trademark “AMBIEN and “AMBIENPAK”.
The Response is very general in its terms. The Respondent has stated that it does not know who the Complainant is and it is not their fault that the domain is similar to the name of the Complainant’s product.
The Panelist accepts the Complainant’s case. The disputed domain name is 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’s evidence is that offering a domain name for sale does not indicate that the registrant does not have an interest in the name and the Complainant should not be entitled to claim property in the name just because it is similar to its trademark. The Panelist has considered all the evidence in the case. The Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no substantial 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 name 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 name 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 name.
On the evidence, the Panelist finds 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 Web site or other on-line location, by creating a likelihood of confusion with the endorsement of your Web site or location or of a product or service on your Web site or location.
The Complainant makes the following points:
(a) the Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademarks including the trademark AMBIEN PAK;
(b) the Respondent is aware that AMBIEN is a leading prescription sleep aid;
(c) the addition of words to the trademark AMBIEN misleads Internet users since it makes them believe they are official Web sites of the Complainant;
(d) the Respondent has offered to sell the domain name for an amount in excess of the cost of its registration.
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 Respondent has failed to invoke any circumstance which
could have demonstrated that the domain name was not registered and used in
bad faith. The Panel finds that 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 name, <ambienpak.com> be transferred to the Complainant.
James McNeish Innes
Sole Panelist
Dated: December 26, 2006
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