The Complainant is Sanofi-Aventis, Paris, France, represented by Bird & Bird Solicitors, France.
The Respondent is WhoisGuard, Westchester, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ambien-pills.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2007. On July 12, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 16, 2007, eNom 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 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2007.
The Center appointed Francine Tan as the sole panelist in this matter on September 10, 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 is a multi-national pharmaceutical company and is in fact one of the largest in the world, with consolidated net sales of € 27,311 billion in 2005, and a Research and Development expenditure of €4 billion. The Complainant is present in more than 100 countries across five continents and has a large portfolio of high-growth drugs, with eight blockbuster pharmaceuticals including Ambien. It enjoys firmly established positions in seven key-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines. The Complainant employs approximately 97,181 people worldwide and has a sales force of 35,030 and research staff of 17,600.
The Complainant is a major player in the United States of America. The main contributors to growth in 2004 were, amongst other things, Ambien, a product which is used for the short-term treatment of insomnia. This product was launched in the United States of America in 1993 and has since become a leading prescription sleep aid in the United States of America.
The Complainant owns a large number of trademark registrations for AMBIEN in more than 50 territories, including the United States of America and the European Community. The Complainant and its affiliates have registered numerous domain names worldwide containing the trademark, AMBIEN. The Complainant has had to file many complaints with the Center so as to obtain the transfer of domain name registrations by third parties which infringe the Complainant’s prior rights in AMBIEN. To-date, all the decisions rendered by the panelists in respect of these cases have been in the Complainant’s favour.
The Respondent’s website at “www.ambien-pills.com” was an online pharmacy selling Ambien as well as other generic and competing products. Ever since a cease and desist letter was sent by the Complainant in March 2007 to the Respondent, the domain name has led to a blank web page. The Respondent did not reply to the Complainant’s letter.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
1. The domain name <ambient-pills.com> is confusingly similar to the AMBIEN trademark in which the Complainant has rights.
The Respondent’s domain name registration consists of the Complainant’s trademark with the addition of the generic word “pills” and the gTLD “.com”. Many panelists have considered the addition of generic words to trademarks as insufficient to escape a 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. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409.)
In relation to domain names which include, apart from the trademark, a generic word such as “drug”, “online” or “pharmacy”, panelists have taken the view that the use of such descriptive or generic words in conjunction with the complainant’s trademark does not serve to negate the confusing similarity with the complainant’s trademark. (See Sanofi-Aventis v. Domain Guru, WIPO Case No. D2005-1359; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.)
Persons accessing the domain name would be confused and are bound to think that the domain name is connected with the Complainant.
As for the gTLD, “.com”, this is required for registration of the domain name and has no distinguishing capacity in this context.
2. The Respondent has no legitimate interest or right in the domain name.
The Complainant has prior rights in the well known mark, AMBIEN, which precede the Respondent’s registration of the domain name.
There was nothing on the Respondent’s website which disclaimed any relationship with the trademark owner nor was there anything on the website that might dispel any misconception that the site is an official website of the Complainant.
The Respondent has not used the domain name in connection with the bona fide offering of goods or services. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, it was held that for it to be bona fide within the meaning of paragraph 4(c)(i) of the Policy:
- the Respondent must actually be offering the goods or services at issue;
- the Respondent must use the site to sell only the trademarked goods and not use the trademark in the domain name to bait Internet users and then switch them to other goods;
- the site must accurately disclose the registrant’s relationship with the trademark owner; it should not falsely suggest that it is the trademark owner or that the website is the trademark owner’s official website;
- the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Respondent clearly is aware that AMBIEN corresponds to a medical product and is a trademark. The Respondent would not have registered the domain name if not for the fact that it knew that Ambien is a leading prescription sleep aid. The Complainant did not license, consent or give any other right to the Respondent to register or use the domain name incorporating its trademark, AMBIEN.
The Respondent has sought to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name.
3. The domain name has been registered and used in bad faith.
The Respondent has no prior right in the mark and no authorization to use the mark. Further, the Respondent clearly knew that Ambien is a leading prescription sleep aid. The registration and use of the domain name in the manner mentioned above is an opportunistic act which is disruptive to the Complainant’s business. Internet users would be led to believe that the Respondent’s site is an official website of the Complainant for the purchase of Ambien pills.
The Respondent is a known cybersquatter, having been named respondent in 18 other earlier proceedings brought before the Center. In all these cases, the domain names have been transferred. The Respondent has also been named as respondent in two other proceedings instituted by the Complainant, one of which involved the same trademark, AMBIEN (Sanofi-Aventis v. WhoisGuard Protected,
WIPO Case No. D2005-1267 and Sanofi-Aventis v. WhoisGuard Protected / Bogdan Mircea,
WIPO Case No. D2007-0264).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the Respondent’s default in not having filed a Response, the Complainant is obliged pursuant to paragraph 4(a) of the Policy to prove that each of the following three elements is satisfied:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Under paragraph 5(e) of the Rules, if the Respondent does not submit a Response and in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Panel is of the view that the first element has been satisfied. The domain name is confusingly similar to the Complainant’s widely known mark. The gTLD suffix “.com” has no relevant distinguishing function. Further, the additional descriptive word in the domain name, “pills”, has no consequence to the finding of confusing similarity. Such domain names involving the addition of a generic term have been consistently held to be confusingly similar to their related trademarks. (See e.g. Harrods Limited v. Peter Pierre,WIPO Case No. D2001-0456; Google, Inc. v. Xtraplus Corp., WIPO Case No, D2001-0125; Scholastic Inc. v. 366 Publications,
WIPO Case No. D2000-1627.) In fact, theaddition of the generic term “pills” adds to the likelihood of confusion as it is a suitable description and term in the context of the Respondent’s online pharmacy business.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The burden therefore shifts to the Respondent to dispute the Complainant’s allegation. However, in not filing a response, the Panel is, in the circumstances of this case, unable to make a finding other than that the Respondent has no rights or legitimate interests in the domain name. Firstly, there is no evidence which would show that the Respondent has been known by the domain name or that it has acquired rights to the use of the trademark AMBIEN. Secondly, there is no evidence that the Complainant has authorized the Respondent to use the Complainant’s trademark or to register the domain name. Neither has the Respondent shown legitimate non-commercial or fair use of the domain name, but rather, the manner in which the Respondent’s website was used supports the Complainant’s contention that the Respondent is, for commercial gain, misleadingly diverting consumers to its website. With reference to the decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, mentioned above, the Panel agrees that there does not appear to be any bona fide offering of goods or services in this case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of bad faith registration and use. This is not an exhaustive list, and includes:
(i) registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) registration for the purpose of preventing the owner of the trademark from reflecting the mark in a corresponding name, provided the respondent has engaged in a pattern of such conduct; or
(iii) registration primarily for the purpose of disrupting the business of a competitor; or
(iv) intentionally attempting, through the use of the domain name, to attract for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
On the facts of this case, it appears to be clear that there has been a pattern of conduct on the Respondent’s part which does little to dispel any inference of bad faith registration and use. Furthermore, it is clear that Respondent was well aware of the trademark AMBIEN when registering the domain name and deliberately included the mark in the domain name in order to attract business. The Respondent has, by registering and using the domain name <ambient-pills.com>, created the wrong impression that the website is somehow that of the Complainant’s or endorsed, sponsored or affiliated to the Complainant. A likelihood of confusion has thereby been created and the Panel does not have difficulty concluding that the Respondent has intentionally used the goodwill of the Complainant’s trademark to direct traffic to its website.
The Panel is satisfied that there is sufficient evidence to make a finding that the requirements of paragraph 4(a)(iii) have 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 <ambien-pills.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: September 24, 2007
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