The Complainant is Sanofi-Aventis, France, represented by Bird & Bird Solicitors, France.
The Respondent is SoftApproach Corp., Canada.
2. The Domain Name and Registrar
The disputed domain name <buy-cheap-ambien-online.com> is registered with Go Daddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2007. On October 12, 2007, the Center transmitted by email to Go Daddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On October 13, 2007, Go Daddy.com, Inc. 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 October 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2007. The Respondent submitted a request to suspend proceedings on November 10, 2007 in order to transfer the domain name to the Complainant. The Complainant refused to suspend proceedings in an e-mail communication dated November 12, 2007. The Respondent did not submit any response by the due date for filing a Response. Accordingly, the Center notified the Respondent’s default on November 13, 2007.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on November 26, 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.
In Response to Administrative Panel Procedural Order No 1, issued on November 29, 2007, requesting Complainant to provide a clear written response by COB Geneva, December 3, 2007, to Respondent’s apparent consent to transfer, the Complainant in the email attachment sent to the Center on December 3, 2007, rejected the possibility of any settlement of the proceedings. In the light of this response, the Panel informed the Center by email on December 4, 2007, that the proceedings would continue on the basis of a Respondent default, the Panel taking note of the complete record and proceeding to determine the matter on the merits.
In order to accommodate Administrative Panel Procedural Order No 1, the projected due date for Decision in this matter was extended to December 14, 2007.
4. Factual Background
The Complainant is a multinational pharmaceutical company with its seat in France and a presence in more than 100 countries. It manufactures and sells Ambien, a prescription drug indicated for short-term treatment of insomnia.
The trademark AMBIEN is registered in many jurisdictions, inter alia the United States (No 1808770, initial registration date December 7, 1993), the United Kingdom, Australia, Canada and France.
The contested domain name was registered on March 12, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant is the largest pharmaceutical group in Europe and the third largest in the world. It has a large portfolio of drugs with eight blockbusters, including Ambien. The Ambien sleep aid is marketed, inter alia in Canada and the United States, where it has a very considerable market share. The Complainant has registered the AMBIEN trademark in a very large number of jurisdictions worldwide. The Complainant has also registered numerous domain names incorporating the word Ambien. The Complainant has to date been successful in all the multiple WIPO UDRP domain name complaints regarding AMBIEN that it has filed.
The Complainant asserts that the addition of generic words to a trademark is not sufficient to escape a finding of similarity and does not change the overall impression of a connection with the Complainant. This has been held repeatedly by WIPO UDRP Panels. The Panels took the view that including such descriptive or generic terms as ‘buy’ or ‘online’ does not remove the domain names from being confusingly similar. The Complainant refers in particular to F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049, which concerned the addition of ‘buy’, ‘cheap’ and ‘online’ to support its contention that the reproduction of AMBIEN, as the sole distinctive element of the contested domain name, generates confusion, persons accessing the domain name being bound to think it has a connection with the Complainant. Further, a consumer may think that the domain name directly refers to the Complainant’s products.
The Complainant asserts that the Respondent has no prior rights preceding registration of the contested domain name, in the trademark AMBIEN. That trademark is well-known around the world. The Respondent uses the contested domain name to promote AMBIEN product and medical products manufactured by competitors which directly compete with AMBIEN. There is no disclaimer on the Respondent’s website, and the Respondent does nothing to dispel the impression that it might be the trademark owner, and the website an official site. Hence the Respondent’s use does not satisfy the bona fide test, and does not meet the minimum requirements for bona fide use set out by the Panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. There is also no license, consent or other right by which the Respondent would have been entitled to register or use a domain name incorporating the Complainant’s trademark. The Complainant submits that the Respondent would no doubt have been aware of AMBIEN and known that it was a leading prescription drug when it registered the contested domain name. It did this with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name. This cannot be characterized as fair use.
The Complainant further asserts that the bad faith of the Respondent is apparent from the fact that the Respondent had no prior rights or authorization in relation to the AMBIEN trademarks; was aware that AMBIEN is a leading prescription sleep aid; and from the addition of generic words to the trademark AMBIEN, which misleads consumers since it makes them believe it resolves to an official website of the Complainant. The registration of the contested domain name was an opportunistic act which seeks to disrupt the Complainant’s business. The Respondent includes links to competing products on the relevant website. The mere holding of a confusingly similar domain name can in any case be sufficient to be considered as disrupting the business of the rightful owner. By adding the words ‘buy’, ‘cheap’ and ‘online’ which refer to the availability of the product via the Internet, the Respondent makes Internet users believe that it is one official website on which AMBIEN can be purchased. Generating this belief amongst Internet users establishes another bad faith element. Furthermore, the Respondent did not respond to a cease and desist letter from the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent by an email communication to the Center on November 10, 2007, requested a suspension of the proceedings so that it could transfer the domain name back to the Complainant. As indicated the Complainant was given the opportunity to respond to this apparent consent to transfer, but indicated its unwillingness to settle. The Complainant in so doing asserted that the reasons the Respondent offered for failing to respond to the cease and desist request of May 11, 2007, are not credible. Rather the Complainant asserts that the Respondent was fully aware of the Complainant’s rights and did not respond in the hope that the Complainant would not further pursue the matter. The Complainant submits that now that a Complaint has been brought against it, and in the face of its earlier failure to reply, the Respondent cannot expect to be permitted to simply abandon the proceedings to avoid being identified as a cybersquatter. The Complainant wants to see its rights vindicated by the completion of the administrative proceedings.
In the circumstances, the Panel is of the view that it should proceed by reviewing the substantial merits of the case, rather than to arrive at an order solely motivated by the Respondent’s consent to transfer, notwithstanding the fact that the consent in this case is in clear terms. The Panel adopts this view on the following grounds: the deliberately constructed characteristics of the contested domain name; the nature of the website to which the contested domain name resolves; the fact that the Respondent was given due notice and opportunity prior to the commencement of proceedings to transfer the contested domain name voluntarily, and did not respond; the non-persuasiveness of the reasons (i.e. the volume of “junk” email being received at the time) given by the Respondent for not responding; and the Complainant’s refusal to entertain the offer to transfer, inter alia because of its desire to see its efforts to protect its intellectual property rights publicly vindicated.
A. Identical or Confusingly Similar
The contested domain name is not identical to the Complainant’s trademark AMBIEN. However, the domain name incorporates the trademark, and that in a distinct and unambiguous manner, since every word in the domain name is separated by a dash. The question whether a domain name is confusingly similar to a trademark it incorporates, notwithstanding the addition of generic terms such as those used here, is addressed in numerous Panel decisions, for instance, in F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049. In that case the Panel held that the addition of ‘buy-cheap-online’ would not render the domain name sufficiently different to prevent consumer confusion. The same applies in this case. The generic terms added are not apt to dispel consumer confusion. The only distinctive element of the contested domain name remains the term AMBIEN, which is the term that will attract the attention of consumers and generate a confusing or misleading impression of connection, support or authorization from the Complainant trademark owner.
Therefore the Panel finds that the contested domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has obtained no authority or consent from the Complainant to register or use a domain name incorporating its trademark AMBIEN. The Respondent has not filed a Response. There is nothing in the record to indicate that the Respondent is commonly known by the term AMBIEN.
On the website to which the contested domain name resolves, a number of links are provided to other websites where numerous pharmaceutical substances are offered, including those of competitors to the Complainant. A schedule of prices appears which includes many different pharmaceutical products. In the circumstances the Panel is not persuaded that the Respondent uses the domain name for a bona fide offering of goods or services (see Policy, paragraph 4 (c)). It is by no means clear that the Respondent is actually and directly offering any goods or services. Nor does it offer only AMBIEN on its website.
The incorporation of AMBIEN into the domain name gives the misleading impression of some affiliation with or support from the Complainant for the relevant website, and the fact that there is no such connection is nowhere disclosed. In the circumstances it is apparent that the domain name is used to attract Internet users to the relevant website by a false suggestion of affiliation, authorization or support from the Complainant, which results from the incorporation of its trademark AMBIEN, then to redirect them to other websites on which goods of competitors of the Complainant are offered. This does not amount to bona fide use; rather it is indicative of a use which relies upon misleading consumers. The use made does not fall within the confines of the notion of bona fide as usefully reviewed in Oki Data Americas, Inc., v. ASD, Inc.,
WIPO Case No. D2001-0903.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the contested domain name.
C. Registered and Used in Bad Faith
The Complaint and relevant attachments establish that AMBIEN is a very well established sleeping aid which is known by that name around the world. It has had a substantial presence on the market in many jurisdictions for years. The Complainant through its various websites has further enhanced its notoriety. Given these facts, and taking into account the carefully constructed nature of the contested domain name, and the nature of the website to which it resolves, it is apparent that the Respondent registered the domain name in full knowledge of the Complainant’s trademark and its reputation. The Panel can only conclude that the domain name was deliberately adopted with a view to the subsequent use made of it by the Respondent in connection with the website to which it resolves. The Respondent apparently embarked upon a calculated course of exploitation of the contested domain name, aiming to attract consumers by the misleading incorporation of the term AMBIEN, then to redirect them to other websites where numerous pharmaceutical substances are offered for sale, including those of competitors. Although some consumers may wonder whether the Complainant would itself operate a website under a ‘buy-cheap’ banner, this is not sufficient to dispel the likelihood of consumer confusion or deception. The Panel is persuaded that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, sponsorship or endorsement of the website. It is likely that the Respondent stands to obtain some commercial gain from the web-traffic to the relevant website.
Therefore the Panel holds that the contested domain name was registered and used 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 <buy-cheap-ambien-online.com> be transferred to the Complainant.
WiIliam A. Van Caenegem Sole Panelist
Dated: December 14, 2007
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