The Complainant is Sanofi-Aventis, Paris, France and is represented by Selarl Marchais De Candé, France.
The Respondent is Domain Specialists, Crossbar Networks, Calgary, Canada.
2. The Domain Name and Registrar
The disputed domain name <wwambiencr.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2007. On July 12, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On July 13, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2007. The Respondent did not submit any response in accordance with paragraph 5 (a) and (b) of the Rules. Accordingly, the Center notified the Respondent’s default on August 21, 2007.
The Center appointed Ashwinie Kumar Bansal as the Sole Panelist in this matter on September 12, 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 5 continents. The Complainant owns the registrations for Trademark AMBIEN in many countries besides registrations of AMBIENCR (verbal) and AMBIENCR (figurative) United States of America trademarks. The Complainant has also registered 10 domain names - <ambien.com>, <ambien.org>, <ambien.net>, <ambien.info>, <ambien.biz>, <ambien.ca>, <ambien.us>, <ambien.fr>, <ambien.eu> and <ambiencr.com>.
All of these trademarks and domain names are registered and used by the Group Sanofi-Aventis, notably in connection with class 5 of the international classification, i.e. pharmaceutical products. The Complainant Sanofi-Aventis had also developed a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN.
The Respondent registered the domain name <ambiencr.com> on April 21, 2007.
5. Parties’ Contentions
A. Complainant
Sanofi-Aventis was formed during the year 2004 as a result of merger between the two French companies Aventis SA and Sanofi-Synthelabo. The group benefits from a large portfolio of high-growth drugs, with eight blockbusters pharmaceuticals in 2005: Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It enjoys firmly established positions in seven key fast-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
The domain name <wwambiencr.com> entirely reproduces two prior trademarks owned by the Complainant: AMBIEN and AMBIENCR, which have no particular meaning and are therefore highly distinctive. The domain name <wwambiencr.com> is only used by the Respondent in order to lead consumer to other web sites offering to sell online various products and/or services to consumers.
The Respondent has wrongly registered and uses the litigious domain name that corresponds to trademarks belonging to the Complainant. The Complainant has common interest in the domain names in issue. The Group Sanofi-Aventis has never licensed nor otherwise permitted the Respondent to use its trademark AMBIEN to apply for any domain name incorporating this term. There is no relationship between the Group Sanofi-Aventis and the Respondent. The Respondent has no right or legitimate interests in respect of the domain name <wwambiencr.com>.
Furthermore, the Complainant also submits that the domain name <wwambiencr.com> is confusingly similar to the trademarks and domain names in which the Complainant has rights.
Finally, the Complainant submits that the domain name <wwambiencr.com> was registered intentionally and is being used for a commercial purpose, without any rights or legitimate interest by the Respondent, with the only purpose of disrupting the business of a competitor.
B. Respondent
After receiving the Complaint, the Respondent had acknowledged the receipt of the Complaint by sending an email dated July 31, 2007 to the Centre to the effect that – “this isn’t a problem. The name will be turned over to you. Where would you like the domain transferred to?” The Center informed the Respondent to contact the Complainant directly, if the Respondent wished to settle with the Complainant. No such settlement has been reported to the Center or the Panel. The website of the Respondent is still in use. The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) to (iii) of the Policy, the Complainant must show that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 Respondent has registered and he is using the domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the mark AMBIEN based on its long and extensive use and ownership of numerous trademark registrations worldwide.
The addition of the terms “ww” which preceedes, and “cr” which follows the mark AMBIEN are of secondary importance. The first adjunction is neutral since it is an obvious typographical variation on the three characteristic letters of the web “www”, which can be considered descriptive to designate a website. In a decisionHines Interests Limited Partnership v. Christian Zeller/N/A,WIPO Case No. D2004-0259, the Panel had considered that the inclusion of the letters “ww” was intended to suggest a worldwide scope of service and therefore was not sufficient to distinguish the domain name from the prior trademark.
Amazon.com, Inc. v. Lorna Kang a/k/a Yonng Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com’s WHOIS Database is p a/k/a Amjad Kausar, WIPO Case No. D2005-0635 deals with a similar issue relating to use of “ww” preceeding a trademark. The domain names only with a prefix “ww” are confusingly similar to the trade mark notably because such domain names constitute obvious misspellings /typographical errors of the trademark, with the use of the prefixes “www” and “ww” as a ploy to attract Internet users who misspell the domain name when trying to access its site. Indeed some Internet users may neglect to correctly write “www” prefix when they try to access the Complainant’s website, or they may only write “ww” in haste, and thus be diverted to the Respondents’ site.
The second adjunction “cr” means “controlled release” and it describes the specificity of the medicine. The trademark AMBIENCR has been filed before the USPTO. In this regard there is disclaimer on the two letters “cr” apart from the mark AMBIENCR. This is revelatory of the descriptiveness of this term as such and it demonstrates the inherent failure of this term to change the impression on the word “ambient” when affixed to it.
These two adjunctions are not sufficient to suppress the likelihood of confusion which stems from the use of the word “ambient” which is the main and distinctive word.
The domain name <wwambiencr.com> wholly incorporates the Complainant’s registered trademark which is sufficient to establish confusing similarity for the purpose of the Policy despite the addition of the letters “ww” and “cr” to such mark. Many panels have decided in similar circumstances that the domain name is confusingly similar to the trademark. In Oki Data Americas, Inc. v. ASD., Inc, WIPO Case No. D2001-0903, word “parts” was added to mark Okidata in <okidataparts.com>; in EAuto, L.L.C. v. EAuto Parts,
WIPO Case No. D2000-0096, word “parts” was added to mark EAUTO in <eautoparts.com>; in Caterpillar Inc. v. Off Road Equipment Parts, NAF Case No. FA0095497 word “parts” was added to mark CAT in <catparts.com>; in Komatsu Ltd. v. R K Web Ltd.,
WIPO Case No. D2000-0995, word “parts” was added to mark KOMATSU in <komatsu-parts.com> and in Burberry Limited v. Conco,
WIPO Case No. D2006-0095 word “dc” was added to mark Burberry in <dcburberry.com>. In such cases the Complainants were successful in getting the transfer of the domain names.
An addition of a generic terms “ww” and “cr” to AMBIEN does not eliminate the likelihood of confusion between the domain name and the trademark AMBIEN. The mark is the prominent portion in the domain name. The Complainant has established that it has registered trademark rights to AMBIEN.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark, and that the Complainant meets the first criterion of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has owned the trademarks AMBIEN and AMBIENCR in many countries and it has used these marks. The Complainant has not authorized or permitted the Respondent to use the trademarks. The Respondent has failed to demonstrate his rights to and legitimate interests in the domain name as per paragraph 4(c) of the Policy. There is no evidence that the Respondent holds any trademark registration that is identical, similar or in any way related to the terms “Ambien” and “Ambiencr”.
The Respondent’s use of domain name cannot be considered to be in connection with a bona fide offering of goods or services.
Rather, it appears that the Respondent is using the domain name for commercial gain to divert consumers and to tarnish the trademark. The website “www.wwambiencr.com” does not disclose that it has no relationship with the Complainant, the owner of the trademark.
The Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <wwambiencr.com>.
C. Registered and Used in Bad Faith
The Complainant is required to prove both that the domain name was registered in bad faith and that it is being used in bad faith. Circumstances at the time of registration and thereafter have to be considered by the Panel. On May 11, 2007, Sanofi-Aventis sent to the Respondent a cease and desist letter, by e-mail, in which it explained that the reservation of the domain name <wwambiencr.com> constituted a breach to Sanofi-Aventis prior rights over the trademark AMBIEN but the Respondent didn’t answer this letter. The Respondent in its email sent on July 31, 2007 to the Centre had indicated its interest to transfer the domain name but it appears that the Respondent has he neither transferred the domain name to the Complainant nor stopped using it. The Respondent’s website is still in use as before.
Before registering the disputed domain name, the Respondent was in all likelihood well aware of the existence of trademark AMBIEN and the drugs named AMBIEN developed and sold by the Complainant as the Respondent expressly mentions AMBIEN products on the disputed website to reroute the web users to websites that directly sell the drug named AMBIEN. AMBIEN is also an important key word of the website of the Respondent. The constant reference to AMBIEN along the website shows that the Respondent is willing to benefit from the distinctiveness and goodwill of the trademarks of the Complainant.
The case is squarely covered by paragraph 4(b)(iv) of the Policy. The domain name <wwambiencr.com> is confusingly similar with the known AMBIEN and AMBIENCR trademarks and products; its use by the Respondent suggests opportunistic bad faith. The fame of the Complainant’s trademark is used to increase traffic at the site of the Respondent.
The Panel finds that the Respondent has registered and used the disputed domain name<wwambiencr.com> in bad faith, in violation of paragraph 4(b)(iv) of the Policy.
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 <wwambiencr.com> be transferred to the Complainant.
Ashwinie Kumar Bansal Sole Panelist
Dated: September 26, 2007
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