The Complainant is SANOFI-AVENTIS of France, represented by Cabinet Fontaine Law Firm of France.
The Respondent is Andris Maupalis of Latvia.
2. The Domain Name and Registrar
The disputed domain name <ambien-mmx.info> is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2007. On September 11, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On September 12, 2007, EstDomains, Inc. 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 September 17, 2007. 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 October 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2007.
The Center appointed John Swinson as the sole panelist in this matter on November 19, 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 one of the world’s largest pharmaceutical companies, with its principal place of business in France. The Complainant has a business presence in more than 100 countries, including Latvia where it has a subsidiary company, SIA Sanofi Aventis Latvia.
The Complainant has developed a drug, “Ambien”, for the short-term treatment of sleeping disorders. Ambien was launched in the United States of America in 1993 and has occupied a leading market position since its introduction. In September 2005, the Complainant launched a new version of its Ambien product, called Ambien CR, which was intended for the long-term treatment of insomnia.
The Complainant has registered a trademark in Francefor AMBIEN (registration no. 93456039, dated February 19, 1993). The Complainant has also registered an international trademark for AMBIEN (registration no. 605762, dated August 10, 1993), which has extended to Latvia since February 11, 1997. The Complainant owns a large number of trademark registrations for AMBIEN in more than 50 countries worldwide.
The Complainant has also registered numerous domain names worldwide containing the AMBIEN trademark, including <ambien.com>, <ambiencr.com>, <ambien.fr>, <ambien.net> and <ambien.info>.
The Respondent registered the disputed domain name <ambien-mmx.info> on September 30, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following submissions and arguments:
The disputed domain name is identical or confusingly similar to the Complainant’s AMBIEN trademark. It is similar in such a way that there is a risk of confusion in the public mind as to the true origin of the ownership of the domain name.
It has been held in many previous WIPO cases that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for the purposes of the Policy.
The existence of a risk of confusion is reinforced, in the present case, by the fact that “Ambien” is a coined and fanciful term having no denotative meaning.
The suffix “mmx” is descriptive. It could correspond to a drug delivery technology which is used to provide delayed and extended release of an active agent of a drug in the human organism. This drug delivery technology is used in Ambien CR. The addition of the word “mmx” does not therefore change the overall impression of the domain name being connected with the Complainant. Even if the adjunction “-mmx” is perceived as meaningless, it cannot avoid confusion that could arise between the disputed domain name and the Complainant’s famous mark.
Persons accessing the domain name <ambien-mmx.info> would be rightfully bound to think that the domain name has a connection with the Complainant and notably that the Complainant is the sponsor of or associated with the website identified by the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no prior rights in the name “Ambien”. The Respondent is not a licensee of the Complainant and is in no way authorized to use the Complainant’s AMBIEN trademark.
On January 8, 2007, the Complainant noted that the disputed domain name led to a portal-style website, named PHARMASEARCH, which provided links to different websites promoting and offering for sale medical products manufactured by the Complainant’s competitors, such as generics for Ambien.
On January 23, 2007, the Complainant sent a cease and desist letter to the Respondent. The Respondent did not reply but modified use of the disputed domain name so that it currently leads to a new website called SPAMPATROL. On this website, Internet users are invited to fill in a form giving personal information. The Respondent may be using this to collect information about Internet users interested in the Complainant’s product, with an aim of constituting a database for sale or other commercial gain.
In any event, it is obvious that the current use of the disputed domain name is not in connection with a bona fide offering of goods and services. Neither does it constitute a legitimate non-commercial or fair use of such a domain name, without intent for commercial gain to misleadingly divert consumers.
The disputed domain name was registered and is being used in bad faith.
Given the goodwill and reputation of the Complainant’s AMBIEN trademark all around the world, the Respondent must have been aware that Ambien is one of the leading prescription sleep aids. It should also be noted that the AMBIEN trademark is registered in Latvia, where the Respondent is located.
The disputed domain name is currently being used to redirect to SPAMPATROL, where Internet users are invited to give personal information about themselves. Previously, the disputed domain name led to the website PHARMASEARCH, which provided links to different websites promoting and selling medical products manufactured by the Complainant’s competitors. Internet users were liable to click on one of those sponsored links without realizing that the website was not connected with the owner of the AMBIEN mark. Even where Internet users realized that there was no connection to the Complainant, the Respondent was liable to profit from the initial confusion of Internet users, since they could have been tempted to click on the sponsored links anyway. This is evidence of bad faith.
It is further evidence of bad faith that the Respondent has registered and is using a number of domain names with the gTLD “.info”, composed of the name of a famous medical product and the adjunction of “mmx” preceded by a hyphen. These include: <zoloft-mmx.info>, <effexor-mmx.info>, <didrex-mmx.info> and <bontril-mmx.info> among others.
The fact that the Respondent failed to reply to the Complainant’s letter of January 23, 2007, corroborates the Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant has a registered trademark of AMBIEN in France and also has an international trademark registration for AMBIEN. The Panel finds that the Complainant has trademark rights in AMBIEN.
The next issue is whether the disputed domain name is identical, or confusingly similar, to the AMBIEN mark.
The disputed domain name is comprised of in its entirety of the Complainant’s AMBIEN trademark, followed by a hyphen and the letters “mmx” and the gTLD “.info”.
The addition of a hyphen and the letters “mmx” means that the disputed domain name is not identical to the Complainant’s trademark. The question therefore becomes whether the disputed domain name is confusingly similar to the Complainant’s trademark.
The disputed domain name wholly incorporates the Complainant’s registered mark, which is sufficient to establish confusing similarity under the Policy (Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903; EAuto, L.L.C. v. EAuto Parts,
WIPO Case No. D2000-0096).
The AMBIEN mark is distinctive and the addition of the letters “mmx” and a hyphen does nothing to obviate the confusing similarity between the disputed domain name and the Complainant’s mark (Lilly ICOS LLC v. The Counsel Group, LLC,
WIPO Case No. D2005-0042; Sanofi-Aventis v. Ve Patel,
WIPO Case No. D2005-0669).
As stated in Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493, “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (see also Lilly ICOS LLC v. megasys [email protected],
WIPO Case No. D2005-0376).
Aditionally, the possibility was raised by the Complainant that “mmx” could refer to a drug delivery technology to provide delayed and extended release of an active agent of a drug in a human organism. This technology is used in the Complainant’s product, Ambien CR. If the suffix in the disputed domain name does refer to this technology, then it only serves to strengthen the connection to the Complainant’s mark. As stated in Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC,
WIPO Case No. D2003-0122, in relation to the domain name <nasacorthfa.com>:
“The initial portion of the Domain Name is identical to Complainant’s NASACORT mark. The addition of HFA corresponds to the generic name of a propellant used to deliver nasal medications. Thus, it appears to be an apt suffix to describe a version of Complainant’s product. Accordingly, persons encountering the Domain Name are likely to confuse it with Complainant and Complainant’s NASACORT product.”
Finally, the gTLD “.info” has no distinguishing capacity and does not alter the value of the trademark represented in the domain name (See SANOFI-AVENTIS v. ProtectFly.com/RegisterFly.com,
WIPO Case No. D2006-1272; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant,
WIPO Case No. D2007-0889; Telecom Personal, S.A v. NAMERZERO.COM Inc,
WIPO Case No. D2001-0015).
For all these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue”. (Policy, paragraph 4(c)).
For the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainant to show a prima facie case, after which the burden of proof is shifted onto the Respondent. However, as the Respondent has failed to respond to the Complaint or participate in these proceedings, the Panel has to decide the Complaint on the basis of the statements and documents submitted by the Complainant.
The Complainant has not granted the Respondent any license or other authorization to use its trademarks in relation to the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or by the name “Ambien”.
The Complainant claims that in the first place, the Respondent was using the disputed domain name to direct to a portal site which provided links to other websites promoting and selling products that competed with Ambien, including generic alternatives for Ambien. In the absence of a response from the Respondent, the Panel accepts the Complainant’s claims.
A similar situation was considered in Lilly ICOS LLC v. The Counsel Group, LLC,
WIPO Case No. D2005-0042, where the Panel stated:
“In this case the Respondent is using the Complainant’s well-known mark in the Domain Name, in order to lure to the Respondent’s website Internet users looking for sites associated with the Complainant’s CIALIS product. These visitors are then offered the alternative of cheaper, “generic”, products which are not CIALIS but which are claimed to have the same or similar properties. That is not a “bona fide” use, nor a “fair” or “legitimate” use, within the meanings of those expressions as used in paragraphs 4(c)(i) and (iii) of the Policy.”
It is reasonable to infer that the Respondent was financially compensated for directing traffic to the portal website and to websites promoting generic Ambien product (Lilly ICOS LLC v. megasys [email protected],
WIPO Case No. D2005-0376; Lilly ICOS LLC v. The Counsel Group, LLC,
WIPO Case No. D2005-0042). Therefore, the Panel concludes that the Respondent made a non-legitimate commercial use of the disputed domain name that misleadingly diverted consumers.
The Complainant asserts that from January 23, 2007, after the Complainant sent a cease and desist letter to the Respondent, the Respondent modified use of the disputed domain name so that it directed Internet users to a new website called SPAMPATROL. From screenshots provided by the Complainant in an annexure to the Complaint (the screenshots are dated July 6, 2007), the new website appears to have no connection to Ambien or to pharmaceutical products at all. Rather, it invites Internet users to submit a form containing personal information about themselves (name, email and telephone number), for the alleged purpose of reporting spam. The website contains the statement, “This site will be closed in five days for a comment and e-mail spam. If you have suffered from actions of this site, please, fill this form below.”
On November 27, 2007, the Panel attempted to visit the Respondent’s website at the disputed domain name, but could not access the website due to a HTTP 403 error (meaning that the server had responded that the web page is not allowed to be accessed). In the absence of any evidence to the contrary, the Panel therefore accepts the screenshots provided by the Complainant.
When a domain name is so obviously connected with a Complainant and its products, the use of the domain name by a registrant with no connection to the Complainant and for purposes unconnected with the Complainant or the Complainant’s products suggests “opportunistic bad faith” (Sanofi-Aventis v. Webinterfaces LLC,
WIPO Case No. DWS2005-0003; Research in Motion Limited v. Dustin Picov,
WIPO Case No. D2001-0492). Such a use cannot be considered a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has, by not responding, failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
There can be no doubt that the Respondent was aware of the Complainant’s trademark under which Ambien product was sold. “Ambien” is not a descriptive word; it is a coined word with no independent meaning except to refer to the Complainant’s leading prescription medication (Sanofi-Aventis v. Helois Lab,
WIPO Case No. D2005-0607). The Ambien product was launched in 1993, and the trademarks for AMBIEN were registered in the same year. The international trademark for AMBIEN extended to Latvia in 1997. The disputed domain name was not registered until 2006.
It is evidence of bad faith that the Respondent used the Complainant’s trademark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so (F. Hoffmann-La Roche AG v. Drug Sale,
WIPO Case No. D2006-0066).
It is further evidence of bad faith that the Respondent used the domain name to initially link to websites promoting and offering products of competitors in the pharmaceutical field, and to subsequently link to an unrelated website (Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman,
WIPO Case No. D2007-0042). It is of concern that the website linked to the disputed domain name requests users to provide personal information.
In the present dispute, there is no evidence that the Respondent is selling authorized or legitimate Ambien product or that the Respondent is an authorized reseller or distributor of the Ambien product (contrast Gordano Limited v. NT mail server,
WIPO Case No. D2002-0277; Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774).
For the above reasons, the Panel finds that paragraph 4(b)(iv) is satisfied in this case and that the registration and use of the disputed domain name has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is 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-mmx.info> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: December 3, 2007
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