The Complainant is Sanofi-Aventis of Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Parul Sachdeva of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <ambiencare.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2007. On June 18, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 19, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 27, 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 July 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2007.
The Center appointed Mary Vitoria, QC as the sole panelist in this matter on August 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.
The language of the proceedings is English.
4. Factual Background
4.1 The Complainant is a multi-national pharmaceutical company present in more than 100 countries, including India. One of the Complainant’s block-buster drugs is AMBIEN which is indicated for the short-term treatment of insomnia. AMBIEN was launched in the USA in 1993 and by 1994 was considered as the market leader with 27% of total prescriptions.
4.2 The Complainant owns a large number of AMBIEN trademarks in more than 50 countries including the US and the European Community. A list of the Complainant’s worldwide trademark applications or registrations for the AMBIEN trademark is annexed to the Complaint.
4.3 The Complainant and its affiliates, have registered numerous domain names worldwide containing the AMBIEN trademark, for example <ambien.fr>; <ambien.us>; <ambien.co.uk>; <ambien.net>; .<ambien.biz>. Copies of the WHOIS search results for a selection of those domain names is annexed to the Complaint.
4.4 The disputed domain name <ambiencare.com> resolves to a website which gives information about the Complainant’s AMBIEN product but also provides links to online pharmacies and to competing and other pharmaceuticals such as VIAGRA. The first page of the website contains the following wording: “your independent source of news about AMBIEN. Neither affiliated with nor endorsed by SANOFI-AVENTIS”.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant stated that the Respondent’s registration consisted of the Complainant’s trademark with the addition of the generic word “care” and the gTLD “.com” and submitted that a wide variety of panelists had considered that the addition of generic words to trademarks was not sufficient to escape the finding of similarity and did 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 LandersWIPO Case No D2000-1511; Pepsico Inc v. Pepsi SRLand Ems Computer Industry,WIPO Case No D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services,WIPO Case No D2001-0174; Sony Kabushiki Kaisha v. Kil Inja,WIPO Case No D2000-1409; America Online Inc v. Chris Hoffman,WIPO Case No D2001-1184).
5.2 The Complainant submitted that in relation to domain names which include a trademark and for instance the term “effect” or other generic terms, panelists have taken the view that the use of the generic and descriptive terms in conjunction with the Complainant’s trademark did not remove the domain names in dispute from being confusingly similar, the generic terms lacking in distinctiveness: (see Sanofi-Aventis v. Joseph Black, WIPO Case No D2006-1127for the domain name <ambieneffect.com>;Pfizer Inc v. Kripton Limited, WIPO Case No. D2005-0154 for domain name <freeviagraclub.com>).
5.3 The Complainant submitted, based on various WIPO cases, that there was no doubt that the reproduction of the trademark AMBIEN, as the sole distinctive element of the domain name concerned, generated confusion. Indeed, persons accessing the domain name would be bound to think that the domain name had a connection with the Complainant. It also submitted that the addition of the gTLD “.com”, which was required for registration of the domain name, had no distinguishing capacity in the context of domain name and did not alter the value of the trademark represented in the domain name (See Sanofi-Aventis v. Billionaire Club,
WIPO Case No D2004-0805).
5.4 Consequently, the Complainant asserted that because of this identity, there was a high risk of confusion, since a consumer might think that the domain name directly referred to the Complainant’s products.
5.5 The Complainant asserted that it has prior rights in the trademark AMBIEN, which preceded the Respondent’s registration of the domain name. It pointed out that the Complainant’s trademark is present in over 50 countries and is well-known throughout the world, that the disputed domain name had been used by the Respondent until now to give information about the AMBIEN product and to provide links to online pharmacies and to competing products or other products such as Viagra. The Complainant submitted that the indication on the first page of the Respondent’s website that: “your independent source of news about Ambien. Neither affiliated with nor endorsed by SANOFI-AVENTIS”, did not justify a legitimate interest since the Respondent provided commercial links related to drug products. (See Sanofi-Aventis v. Benjamin Milton, WIPO Case No D2005-0544).
5.6 The Complainant asserted that the Respondent did not use the domain name in connection with the bona fide offering of goods or services and that there was no licence, 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.
5.7 The Complainant further asserted that it was obvious that the Respondent was aware that AMBIEN corresponded to a medical product and therefore to a trademark; that the Respondent would have not registered the disputed domain name if he had not known that AMBIEN was a leading prescription sleep aid; that the Respondent, who had no legitimate interest in respect of the domain name <ambiencare.com > had registered this domain name with the intention of diverting consumers and of preventing the Complainant from reflecting the trademark in a corresponding domain name; that the Respondent had made no bona fide use of the disputed domain name because of his lack of authorization to use the trademark AMBIEN; and that using a domain name in order to divert consumers for commercial gain could not be characterized as a fair use. (See, Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066).
5.8 The Complainant submitted that the obvious bad faith of the Respondent was apparent from the following: the Respondent had no prior right and no authorization from the Complainant concerning the AMBIEN trademarks; the Respondent’s awareness that AMBIEN is a leading prescription sleep aid; and the addition of words to the trademark AMBIEN misleading Internet users since it led them believe it is an official web site of the Complainant.
5.9 The Complainant asserted that the Respondent had no prior right in respect of the sign AMBIEN, and no authorization to use this sign in any form but that he knew the sign perfectly well. Thus, it submitted, the registration of the disputed domain name had not been made with any bona fide intention.
5.10 The Complainant asserted that it was clear that the Respondent had registered the disputed domain name with the knowledge that AMBIEN was a medical product and that due to the various communications on the Internet concerning the AMBIEN product, the Respondent, who had set up links in English related to AMBIEN and other medical products, could not deny the fact that AMBIEN was a leading prescription sleep aid. The Complainant said that, in the present case, there was no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, had registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and that this was an opportunistic act, which sought to disrupt the Complainant’s business.
5.11 The Complainant also submitted that it was important to state that the mere holding of a domain name that was identical or confusingly similar to a trademark belonging to a third party, in itself, could be considered as disrupting the business of the rightful owner.
5.12 The Complainant asserted that any Internet user who tried to connect to the Respondent’s web site would believe that it was an official web site of the Complainant which was offering AMBIEN since the domain name included the AMBIEN trademark and that by adding the word “care” to AMBIEN, the Respondent made the Internet user believe that it was one of the official web sites for buying AMBIEN. The Complainant submitted that pretending that the web site was the official web site for AMBIEN products by using a generic term with the trademark AMBIEN was another relevant element in establishing the bad faith registration of the disputed domain name and that it appeared that the domain name <ambiencare.com> constituted an opportunistic registration, which had been made and used in bad faith.
B. Respondent
5.13 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 According to paragraph 15(a) of the Rules, the Panel must decide a 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.
6.2 In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, 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 or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.
6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:
A. Identical or Confusingly Similar
6.5 The disputed domain name <ambiencare.com> is confusingly similar to the AMBIEN trade mark in which the Complainant has rights.
6.6 The disputed domain name <ambiencare.com> is a combination of the ordinary English word “care” together with the apparently meaningless word “ambien”. The addition of the ordinary non-distinctive word “care” to the word “ambien” is not sufficient to avoid a finding of confusing similarity. The Complainant’s AMBIEN mark has been appropriated in its entirety. It is also likely that persons familiar with the Complainant’s AMBIEN marks would be confused or misled into thinking that the website “www.ambiencare.com” appearing at the disputed domain name was an authorized site operated by the Complainant to provide answers to questions about its AMBIEN product because the use of the word “care” in connection with pharmaceutical or medicinal products is widespread.
6.7 The Respondent’s domain name incorporates the whole of the Complainant’s trade mark AMBIEN. The addition of a ccTLD or gTLD to the mark does not avoid confusing similarity. See, for example, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corp Ltd v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider or enterprise as a source of goods or services.
6.8 The incorporation of the entirety of the Complainant’s trade mark AMBIEN into the Respondent’s domain name <ambiencare.com> is bound to lead consumers familiar with the Complainant’s trade mark into the belief that the domain name is one belonging to the Complainant or that the Complainant has authorized or licensed the use of its trade mark to the Respondent. Consumers are thus likely to be confused as to the origin or sponsorship of <ambiencare.com> because the domain name is virtually identical and is thus confusingly similar to the Complainant’s trade mark AMBIEN in which the Complainant has rights.
6.9 The Panel accepts the Complainant’s submissions in relation to the disputed domain name <ambiencare.com> and finds for the Complainant on the first element.
B. Rights or Legitimate Interests
6.10 There is no evidence of any rights or legitimate interest of the Respondent in the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trade mark AMBIEN or to apply for any domain name including these trade marks. The Complainant has prior rights in the trade mark AMBIEN which precede the Respondent’s registration of the domain name in dispute.
6.11 It is highly unlikely that the Respondent devised the disputed domain name independently of and without knowledge of the Complainant’s AMBIEN product. Indeed, a major feature of the Respondent’s website is information about the Complainant’s AMBIEN product thus evidencing that the Respondent was well aware of the Complainant’s product and the trade mark by which it was known world-wide.
6.12 The Respondent currently operates a website at “www.ambiencare.com”. This website contains a number of links to a number of sites including some which, apparently, legitimately sell the Complainant’s products while others link to sites which sell the products of the Complainant’s competitors as well as other non-competing products. It is likely that the Respondent derives revenue from those whose websites which appear in the Respondent’s list of links. If the Respondent had provided these links without intent for commercial gain, the Panel would have expected him to have provided evidence of this. The Respondent does not appear to offer any goods or services of his own. The use of the domain name <ambiencare.com>, being a name which is confusingly similar to the Complainant’s mark, is not fair use.
6.13 Although the home page of the Respondent’s website contains a disclaimer stating that the site is not affiliated with nor endorsed by the Complainant, users who for the first time typed the domain name <ambiencare.com> would expect to arrive at a website of the Complainant or at least at a website related to it in some way. Having accessed the website they would then learn that the website was independent of the Complainant but by that time they might well be attracted by the amount of information provided by the Respondent about the AMBIEN product and by the links to other sites. The Respondent is thus using the reputation attached to the mark AMBIEN to attract users to his web site and is thus riding on the repute of the Complainant’s trademark for commercial gain. This conduct does not amount to exercising a right or legitimate interest in the domain name <ambiencare.com>” (See Sanofi-Aventis v. Benjamin Milton, WIPO Case No. D2005-0544).
6.14 The use of a name which is confusingly similar to the Complainant’s mark as a domain name clearly extends beyond what is required to indicate the goods of the Complainant where these are legitimately being promoted and sold. Previous UDRP Panels have consistently held that persons who use marks in connection with what may be the genuine goods and services of the trade mark owner are not entitled on that basis alone to register and use domain names containing the trade mark, and particularly not where the domain name is used in connection with the promotion of goods or services other than those of the Complainant. See, for example: Hoffman-La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2003-0793 and Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079
6.15 The Panel accepts the Complainant’s submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element.
C. Registered and Used in Bad Faith
6.16 The Panel has already found that it is likely that the Respondent selected the domain name in dispute knowing of the reputation of the AMBIEN trade mark. Accordingly, the disputed domain name was registered in bad faith: America Online Inc v. Anson Chan,WIPO Case No. D2001-0004.
6.17 Under paragraph 4(b)(iii) of the Policy the registration of a domain name primarily for disrupting the business of a competitor is regarded as evidence of bad faith. There is no evidence that the Respondent is a competitor of the Complainant. Even if the Complainant and the Respondent were to be regarded as competitors, there is no evidence from which the Panel could infer that the primary purpose of registration was to disrupt the Complainant’s business. Instead, the evidence suggests that the business of the Respondent is the operation of a website for his own commercial gain and that he is using the Complainant’s trade mark to attract Internet users to his site.
6.18 According to paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the disputed website or location or of a product or service on said website or location is regarded as evidence of bad faith.
6.19 The Panel is satisfied on the evidence that the Respondent knew of the AMBIEN mark of the Complainant when he registered and used the disputed domain name. There is no natural connection between the mark AMBIEN and the Respondent. The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to associate himself and his business with that of the Complainant and to profit from the reputation of the Complainant’s trade mark and thereby to attract Internet users to his website.
6.20 The Panel concludes that by registering and using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s AMBIEN trade mark as to the source, sponsorship, affiliation, or endorsement of the business through the use of the disputed domain name <ambiencare.com>. The Panel concludes that the Respondent registered and has 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 <ambiencare.com> be transferred to the Complainant.
Mary Vitoria, QC
Sole Panelist
Date: August 23, 2007
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