The Complainant is SANOFI-AVENTIS, of Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Health Care Marketing Company, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ambienforyou.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2007. On March 28, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 30, 2007, Go Daddy Software 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 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 April 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on [Date of notification of respondent default].
The Center appointed Simon Minahan as the sole panelist in this matter on May 9, 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 manufactures and markets therapeutic products including a pharmaceutical treatment for insomnia, branded AMBIEN.
AMBIEN was first launched in the United States of America in 1993 and enjoys significant market share in the USA.
The Complainant and associated entities hold numerous international trademark registrations for the mark AMBIEN covering pharmaceutical goods including United States trademark registrations.
The Complainant and associated entities also hold numerous domain name registrations that include the trademark AMBIEN, for example, <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net> and <ambien.biz>.
The AMBIEN mark is well-known and the Complainant and its associates a have well-established trade mark interest in the AMBIEN mark.
The disputed domain name is currently being used to direct internet users to a webpage promoting the sale of a variety of pharmaceutical products including AMBIEN and competing products.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to
its AMBIEN trademark. It maintains that the addition of the generic words “for”, “you” and the gTLD “.com” does not change the overall impression of the designation as being connected to the Complainant, and is designed to cause persons accessing the domain name to mistakenly believe that the disputed domain name has a connection with the Complainant.
The Complainant further contends that the Respondent lacks rights or legitimate
interest in the disputed domain name in that:
(a) the Complainant has prior rights in the trademark AMBIEN, that precede the Respondent’s registration of the disputed domain name;
(b) the Complainant’s trademark is well-known in the United States of America 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 Respondent does not have a licence, consent or other right by which it would have been entitled to register or use the Complainant’s trademark AMBIEN;
(d) the Respondent has not made bona fide use of the disputed domain name; and
(e) the prime motivation for the registration of the disputed domain name by the Respondent was to divert consumers and prevent the Complainant from reflecting its trademark in a corresponding domain name.
The Complainant also maintains that the Respondent acquired and uses the
disputed domain name in bad faith as constituted by:
(a) its lack of any legitimate rights in or authorization given by the Complainant concerning the AMBIEN trademark;
(b) its apparent awareness of AMBIEN as one of the leading prescription sleep aids in the United States of America constitutes bad faith registration and use.
(c) the addition of generic words to the trademark AMBIEN which allegedly misleads Internet users into believing that it is an official website of the Complainant.
The Complainant requests that the disputed domain name be transferred to it.
In addition the Complainant refers to the decision in Sanofi-aventis v. Home WIPOCase No. D2005-1040, concerning the domain name <ambient-for-you.com> where the facts were in many respects identical, but the respondent had demonstrable pattern of conduct of registration of over 500 domain names to its credit. In that case the panel found that the Complainant had made out its case and ordered transfer of the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is of the view, for the reasons set out below that the domain name should be transferred. In addition, the Panel is partly persuaded of this conclusion by reasoning the outcome in Sanofi-aventis v. Home,
WIPOCase No. D2005-1040. In this regard it acknowledges the desirability of maintaining consistency of decisions under the Policy in matters of similar fact, although the Panel does not accept the contention that the registration and use of the domain in either case could reasonably be characterized as being primarily designed to deny the Complainant the opportunity to reflect its AVENTIS trademark in a corresponding domain name.
A. Identical or Confusingly Similar
The Panel finds that the domain name <ambienforyou.com> is confusingly similar with the Complainant’s mark, containing as it does the entirety of the mark within it.
In this respect the Panel refers to and adopts the finding of the panel in Sanofi Aventis v. Horne, WIPO Case No. D2005-1040:
The Panel finds that adding generic words to a domain name such as “for” and “you” 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 “for” and “you” 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).
The Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
In the absence of any response or positive evidence of any rights or legitimate interests in the Respondent and in the face of evidence of the Complainant of its prior rights and the want of any licence or consent by it to the Respondent, the Panel finds that the Respondent has no right or legitimate interests in the disputed domain name. The Panel is of the view that under 4(a)(ii) this set of circumstances shifts the burden to establish those rights to the Respondent (see e.g.: Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson,
WIPO Case No. D2001-0317). Here the Respondent by its silence has left that burden undischarged.
The Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
In considering this aspect of the Complaint and the Policy, the panel has given particular consideration to the question of whether the unauthorized use of the Complainant’s trade mark in a domain name used to point to and further, by that means, to promote the sale of pharmaceuticals, is per se bad faith use. The Panel notes that here the Respondent’s conduct is clearly commercially motivated and the domain name is being used to promote not only the Complainant’s product but also competing product. As such, bearing in mind the copious decisions under the Policy that have held that such use and conduct constitutes the basis for a finding of registration and use in bad faith with reference to of paragraph 4(b)(iv) of the Policy (providing 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).
While it may be doubted whether such confusion would last beyond the arrival at the target website to which the domain name is directed nonetheless the Panel accepts that the Respondent has been astute to create the possibility of such confusion and to profit by it.
Accordingly the Panel finds that the Complainant has made out bad faith registration and use of the domain name by the Respondent.
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 <ambienforyou.com> be transferred to the Complainant.
Simon Minahan
Sole Panelist
Dated: May 28, 2007
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