The Complainant is Sanofi-aventis, of Paris, France, represented by the law firm Selarl Marchais De Candé, of Paris, France.
The Respondent is Standard Tactics LLC, of Santa Fe, New Mexico, United States of America.
2. The Domain Name and Registrar
The disputed domain name <getgenericambien.com> (the “Domain Name”) is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2007, against Domains By Proxy, Inc., the then named registrant for the Domain Name according to the details provided by the Registrar’s Whois database.
3.2 On December 21, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 2007, the Registrar transmitted by email to the Center its verification response disclosing that the underlying registrant for the Domain Name was “Standard Tactics LLC” and providing different contact information for the registrant.
3.3 The Center sent an email communication to the Complainant on December 28, 2007 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 31, 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”).
3.4 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 January 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2008. On January 14, 2008, the Respondent sent an email to the Center, which the Center has treated as a Response for the purposes of these proceedings. The nature of that email and the surrounding correspondence is dealt with in greater detail under paragraph 5 below.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 1, 2008. 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
4.1 The Complainant was formed in 2004 as a result of merger between Aventis SA and Sanaofi-Synthelabo. It is the largest pharmaceutical group in Europe and the third largest in the world. It is present in more than 100 countries across 5 continents.
4.2 The Complainant offers a wide range of drugs, many of which could be described as “blockbusters”. “Ambien” is one of the Complainant’s products and its active substance is “Zolpidem”. This drug is used in the treatment of insomnia. It was launched in the United States in September 2005.
4.3 The Complainant is the owner of various registered trade marks around the world that incorporate the “Ambien” name. These include French Trade Mark No. 93 456 039 registered on February 19, 1991, and United Kingdom Trade Mark No. 1466136 registered on May 31, 1995, both of which are for the word “Ambien” and have been registered in class 5 for “pharmaceutical preparations”.
4.4 The Complainant is also the owner of various domain names that incorporate the mark AMBIEN, including <ambien.com>, <ambien.org> and <ambien.info>.
4.5 The Respondent appears to be a limited liability corporation based in the United States of America. The Domain Name was registered on April 27, 2007.
4.6 At some point after registration the Domain Name resolved to a web page generated by the Registrar’s domain name parking service. In the middle of the page were a series of “Sponsored Links” most of which relate to treatments for insomnia but some of which also purport to have some connection with the pharmaceutical Viagra.
4.7 As at the date when these proceedings were referred to the Panel, no web-page or website appears to be operating from the Domain Name. This remains the case at the date of this decision.
5. Outstanding procedural matters
5.1 Prior to considering the parties’ contentions, it is convenient first to consider certain email correspondence that passed between the parties prior to these proceedings being referred to the Panel.
5.2 On December 21, 2007, the Respondent, having been forwarded a copy of the original Complaint by Domains By Proxy, sent an email to the Complainant’s legal representative. The content of this email was as follows:
“Hello
We are aware of the domain dispute that has been filed on this domain. This domain was purchased in a bulk backorder. We do not support trademark infringement. We would like to transfer this domain to you at no cost you.
You will have to contact WIPO to close the dispute before I will be allowed to transfer the domain to you.
Please feel free to contact me with any questions.
Regards
Administrator
Standard Tactics”
5.3 On December 27, 2007, the Complainant’s legal representative responded by email, informing the Respondent that the Complainant did not want to accept this offer and wanted instead “to follow the procedure before the WIPO”. This elicited a response by email from the Respondent the same day in the following form:
“Thank you for your response, we do not support trademark infringement.
Regards
Manager
Standard Tactics”
5.4 On January 14, 2007, the Center sent an email to the parties. In that email the Center explained that it was open to the Complainant to seek the suspension of the proceedings. It also explained that if the proceedings were suspended, and the parties reached agreement to transfer the Domain Name, then the Registrar would be permitted to unlock the Domain Name to affect a transfer to the Complainant only.
5.5 On the same day the Respondent sent an email to the Center, copied to the Complainant’s representative, stating that:
“We request that when GoDaddy.com receives a notification of a “suspension”, that they process a change of account on our behalf to the complaining party.
Regards
Manager
Standard Tactics”
5.6 However, two days later the Complainant’s representative re-confirmed that the Complainant did not want to suspend the proceedings and preferred to obtain a decision from the appointed panel rather than settle this matter on the offered terms.
5.7 There are a number of ways of effecting a settlement between the parties that involves a transfer of the Domain Name to a complainant. One option is to put that settlement to the appointed panel and ask it to make an order accordingly without consideration of the merits of the parties’ submissions (as to which see for example PartyGaming Plc v. Caviner Limited, WIPO Case No. D2005-1123). However, if a panel has yet to be appointed, to have to appoint a panel simply to rubber stamp the party’s agreement with the associated expense and delay is far from ideal.
5.8 Another option is for the complainant to discontinue proceedings so that the domain name is taken off its “locked” status, and then for the parties to effect a transfer in the usual manner in accordance with the terms of their settlement. However, this is also problematic. A complainant is subject to the risk that once the domain name is taken off lock it will be transferred to a third party in breach of the terms of the settlement. At this stage the complainant cannot recommence proceedings and he is left in the unsatisfactory position that, short of commencing proceedings in the court against the old or new registrants or commencing fresh UDRP proceedings against the new registrant, there is little that he can do.
5.9 In the circumstances, it is clearly advantageous for a procedure to exist whereby a domain name can be transferred by a respondent to a complainant in UDRP proceedings without the need either to appoint a panel or to discontinue proceedings. Such a procedure was offered in the Center’s email of January 14, 2007. It allows the domain name to be transferred to the complainant, but to the complainant only, and if for any reason the transfer does not take place, it also allows the complainant simply to recommence the suspended proceedings. Since a panel has not been appointed, it also has the additional advantage in that it allows that part of the Center’s fees that would have been paid to the panel to be returned to the complainant. The Panel understands this now to be a relatively common procedure and one with which registrars generally co-operate.
5.10 However, the fact that such a procedure exists does not mean that a complainant is forced to adopt it. This is so even where, as here, it would appear that the respondent agrees to transfer the domain name without payment or the imposition of any other term or condition. There are many reasons why a complainant may not want to go down this route. It may want public vindication of its position so as to discourage others from registering domain names that incorporate its marks. It may otherwise be to its advantage for a particular respondent to be labelled as a cybersquatter. As a matter of principle, a complainant may simply refuse to do a deal, no matter how favourable, with what it considers to be a cybersquatter.
5.11 Further, there is a wider interest in the activities of those that have registered domain names contrary to the terms of the Policy, becoming publicly known. The relevant facts may be relevant to future proceedings involving different complainants (see, for example, the comments of the panel to this effect in Brownells, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1211). In this respect, the Panel also notes that it has now become common practice among some cybersquatters to offer to transfer a domain name without payment whenever proceedings are commenced against it under the Policy. The respondent knows that the cost associated with the commencement of proceedings may of themselves dissuade the rights holder from commencing proceedings. It also knows that if a rights holder does commence proceedings, its offer, which carries with it the prospect of the domain name being quickly transferred, the return of some fees and the avoidance of the risks inherent in the matter proceeding to a panel, may prove commercially irresistible to many complainants. In this way the respondent is able to maintain a “clean record” so far as the rest of the world is concerned.
5.12 The Panel does not know the particular motivations of the Complainant in this case, nor does it suggest that the offer of the Respondent in this case was influenced by the sort of considerations that have been described. However, the Complainant is in this case entitled to require this Panel to consider the substance of its Complaint and this is what this Panel will do. If and insofar as the comments of the panel in Laerdal Medical v. V. Lee,
WIPO Case No. D2007-1672, should be understood as suggesting that in the case such as the one currently before the Panel, a complainant should accept the offer made by the respondent, then for the reasons already given, the Panel respectfully disagrees. 1
6. Parties’ Contentions
A. Complainant
The Complainant’s Trade marks
6.1 The Complainant asserts that the Domain Name comprises its “highly distinctive” AMBIEN trade mark combined with the “descriptive” words “get” and “generic”. It claims that the addition of these words “does not obviate the confusing similarity between the [Domain Name] and [the] AMBIEN trademark”. It cites in support of this proposition a number of previous decisions under the Policy either involving the Complainant or other drug companies including Sanofi-Aventis v. ProtectFly.com / RegisterFly.com,WIPO Case No. D2006-1272 and Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins,WIPO Case No. D2004-0943.
No Rights or Legitimate Interests
6.2 In its initial complaint the Complainant asserts that the Domain Name has been registered in the name of Domains By Proxy, Inc “to keep secret the real identity of the registrant”. Further, now that the real registrant is known it contends that it is “obvious” that the Respondent does not have any legitimate interest in respect of the Domain Name since the name of the Respondent has no resemblance to “the distinctive word Ambien”.
6.3 The Complainant also asserts that it “has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including [its trademarks]”.
Bad Faith
6.4 The Complainant alleges that the Domain Name was registered for the purpose of attracting Internet users to the Respondent’s website. It also maintains that the Respondent must have been aware of the Complainant’s numerous trade marks and domain names incorporating the term “Ambien”.
6.5 As a result it is said that the Respondent registered the domain name “primarily for the purpose of disrupting the business of the Complainant”.
6.6 The Complainant also claims that the use by the Respondent of the Domain Name has been as a “referral portal to divert internet users through “Sponsored links” to third parties’ sites”. It refers specifically to one of these third party sites at “www.natural-insomnia-pills.com”, which is said to provide “information on insomnia symptoms” and to offer competing anti-insomnia products and to provide no information in relation to the Complainant’s products.
6.7 Further, the Complainant contends that the Respondent’s purpose in such use is to “collect money on a pay-per-click basis”. In this respect it refers to a number of cases where it is said that the reproduction of a well-known trade mark which leads to a parking website have been found to involve use in bad faith. These include Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377, Zedge Ltd. V. Moniker Privacy Services/Aaron Wilson,WIPO Case No. D2006-1585 and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623.
B. Respondent
6.8 The Respondent has not put in any formal Response in these proceedings. Accordingly, the Respondent is formally in default in these proceedings.
6.9 As has already been described, the Respondent has sent an email in which it claims the Domain Name was “purchased in a bulk backorder”, but no further explanation is provided as to what exactly is meant by this and the Respondent submits no evidence in support of this contention.
6.10 The email is also sent by an individual who does not give his name and describes himself simply as “Administrator Standard Tactics”. Further, since no formal Response has been lodged, the statement is not supported by the statement that the Response is “complete and accurate” as required by paragraph 5(b) of the Rules.
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
7.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
7.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
7.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
7.5 The Complainant clearly is the owner of a number of different registered trade marks comprising the word “Ambien”, and the Domain Name cannot be sensibly read as anything other than the words “get”, “generic” and “ambien” in combination. The Panel accepts the word “Ambien” is invented and has no ordinary meaning in English other than as the name of one the Complainant’s products. The Panel also accepts that the addition of the words “get” and “generic” to “ambien” so as to form the second level of the Domain Name, does not prevent the Domain Name from being “confusingly similar” (as that term is understood for the purposes of the Policy), to the Complainant’s registered trade marks.
7.6 Accordingly, the Panel concludes that the Complainant has made out paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.7 It is clear in this case that the Respondent has not been authorised to use a Domain Name that incorporates the AMBIEN mark. Instead, for the reasons that the Panel describes under the heading of “bad faith”, it believes that the Domain Name was registered by the Respondent in order to generate “click through” revenue by the parking of the Domain Name with a “domain parking service”.
7.8 There is nothing per se illegitimate in the use of a domain parking service. However matters are different where a domain name is chosen because of its similarity to a name in which a complainant has an interest in the hope and expectation that Internet users searching for that complainant will instead be drawn to a domain name parking page. It is clear that such activity does not provide a legitimate interest under the Policy (see for example the decision of the three person panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,
WIPO Case No. D2007-0267).
7.9 The Panel believes that it was with just such a hope and expectation that the Domain Name was registered in this case and that, accordingly, the Respondent has no right or legitimate interest in the Domain Name.
7.10 The Panel notes that in this case the Respondent contends that the Domain Name was purchased as part of a bulk purchase. The contention seems to be that it somehow overlooked or was unaware of the fact that this particular Domain Name contained a word that was associated with the Complainant’s products, and that had this been noticed the Domain Name would not have been acquired. As is explained later on in this decision, the Panel does not accept that explanation. However, even if that explanation were true, it would appear that inherent in that explanation is an admission that the Respondent has no interest in the Domain Name. This seems to be confirmed by the Respondent’s professed willingness to transfer the Domain Name to the Complainant without payment.
7.11 In the circumstances, the Complainant has made out paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
7.12 There is little doubt in this case that the Domain Name was initially registered with the Complainant’s product in mind. The Domain Name incorporates the word “Ambien” which is exclusively referable to the Complainant’s product. It is also clear that at some point soon after the Domain Name was registered, it was placed with a “domain parking service”. Therefore, the obvious inference in this case is that the person who registered the Domain Name did so with a domain name parking use in mind.
7.13 The way in which many of these domain name parking services operate is now common knowledge and has been described in a number of previous cases under the Policy. The service produces a webpage to which the domain name resolves and this webpage incorporates a series of links that either directly or indirectly links to the websites of various commercial enterprises. The links are either chosen automatically by the domain name service provider or by the owner of the domain name. The process whereby the links are chosen automatically by the domain name service provider can be quite sophisticated, and may involve the use of software that, for example, analyses the words incorporated in the domain name. However, even where the process is automatic, the owner of the domain name can frequently still influence the choice of links by identifying “keywords” and the like that are thought to be connected with the domain name.
7.14 If and when Internet users click on the links, the operator of the commercial website to which the Internet user is transferred, will pay a small fee. This is the “pay-per-click” or “click through” revenue to which the Complainant refers in this case. Obviously the more people that are drawn to the domain name parking page, the more people will click on the links and the more revenue is generated. That revenue is then usually shared between the operator of the domain parking service and the owner of the domain name.
7.15 As has already been mentioned, there is nothing per se illegitimate in the use of a domain name parking service. However, it is quite a different matter when the domain name is chosen with the intention of capitalising upon the reputation that exists in the name of a company or its products and services, in the hope and expectation that Internet users searching for information about that product would instead reach the domain name parking page and that revenue would be generated as a consequence.
7.16 Such registration and use is in bad faith. In particular, it falls within the scope of paragraph 4(b)(iv) of the Policy which states that the following shall be evidence of bad faith registration and use:
“by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
7.17 Given the fact that the registrant in this case must have known about the Complainant’s use of the AMBIEN mark prior to registration of the Domain Name, the Panel concludes that it was with such bad faith use in mind that the Domain Name was chosen.
7.18 There is, however, the Respondent’s contention that the Domain Name was “purchased in a bulk backorder”. What exactly is meant by a “backorder” is not explained2, but the Panel understands this to be an assertion that the Domain Name was somehow inadvertently acquired as part of a bulk purchase of domain names. The Panel does not accept this explanation. The reasons for this are as follows:
(i) The contention is simply made in an email. It does not form part of a formal Response and as such is not accompanied by the required “statement of truth” provided for by paragraph 5(b) of Rules.
(ii) The statement is made anonymously by someone who is only prepared to identify himself as “Administrator”. As the Panel goes on to explain later on in this decision, the Panel believes in this case that this is of itself a factor that points towards bad faith. However, in the present context, the fact that no identified person is prepared to stand by the statement is something that the Panel takes into account when assessing whether the statement should be given any credence.
(iii) The statement raises more questions than it answers. From whom were the domain names purchased and why? When were they purchased? What exactly is meant by a “bulk” purchase? Did the Respondent not notice this Domain Name at the time of purchase, and if so why not? Was the change of ownership recorded in the Registrar’s register, and if not, why not?
(iv) No supporting evidence is offered in relation to the Respondent’s assertion.
7.19 In the circumstances, the Panel concludes on the materials and evidence that is before it, that the Complainant’s explanation of events is to be preferred over that of the Respondent. Accordingly, for the purposes of these proceedings the Panel concludes that the Respondent can be treated as if it were the initial registrant of the Domain Name.
7.20 The Panel also accepts that an additional factor that weighs in the Complainant’s favour on the issue of bad faith is that the Respondent seems at all times to have taken care to hide both the identity of who owns the domain name and the names of the individuals that lie behind “Standard Tactics”.
7.21 First there is the use by the Respondent of the Domains By Proxy Inc domain name privacy service. This Panel in Canadian Tire Corporation Limited v. CK Aspen,
WIPO Case No. DTV2007-0015 stated:
“6.24 It is sometimes argued by those who use [domain name privacy] services that the provision of registration and contact details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. To hide one’s contact details so as to prevent such unsolicited contact is said to be legitimate (particularly if the registrant is an individual). Therefore, it is argued that no inference of bad faith can be drawn from the use of these services. However, even if this argument were accepted by this Panel, it is difficult to see why it would justify the masking of a registrant’s identity as opposed to just its contact details. Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.
6.25 The Panel believes that its approach on the question of the use of domain name privacy services is consistent with the decision of other panels on this issue including TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 and The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 as well as the Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 and Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,
WIPO Case No. D2005-0642 cases cited on this issue by the Complainant.”
7.22 These comments equally apply in this case. The Respondent purports to be a limited liability company and a commercial operation. The name of the Respondent, and not just its contact details, has been disguised and no explanation has been offered by the Respondent as to why the domain name privacy service has been used.
7.23 Second, there is the failure in email correspondence between the Respondent and the Complainant and the Center to give the name of any person at “Standard Tactics LLC” that is dealing with the Complaint. Instead, the individual or individuals concerned hide behind the titles “Administrator” and “Manager”. It is difficult to see why an entity that believed its registration of the Domain Name to be legitimate, would seek to disguise the identity of the persons at that entity who are attempting to settle proceedings under the Policy.
7.24 Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7.25 Incidentally, the Panel notes that the parties to these proceedings have previously been involved in proceedings under the Policy in relation to domain names that incorporate the AMBIEN mark, i.e. Sanofi-Aventis v. Standard Tactics LLC,
WIPO Case No. D2006-0863. Why the Complainant did not seek to draw this to the attention of the Panel itself, once it knew the true identity of the Respondent in this case, is a little puzzling as it would appear to be broadly supportive of the Complainant’s current case. The facts of this earlier case also throw further doubt on the assertion by the Respondent regarding its acquisition of the Domain Name. Nevertheless, it has been possible for the Panel to reach its conclusions in this case without reliance on this additional material.
8. 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, <getgenericambien.com> be transferred to the Complainant.
Matthew S. Harris Sole Panelist
Dated: February 15, 2008
1 The Panel is aware of a large number of cases in the past where a respondent has indicated that it is agreeable to the transfer of the domain name. The approach that different panels have adopted in that situation has varied. Some panels have deemed this to be grounds to order transfer by consent without considering the merits of the case. Other panels have considered on the facts of their cases that the respondent essentially conceded the complainant’s claims and made an order on that basis. Some panels have thought it appropriate to consider the substance of the complaint. These three different approaches are, for example, identified in TheCartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132 and the panel in that case decided that an order for transfer could be made without consideration of the merits of the case. More recent cases (for example, Brownells,Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1211and Ticketmaster Corporation v. Global Access,
WIPO Case No. D2007-1921) have suggested that in such a case the panel has a discretion as to whether or not to consider the complaint (and in both Brownells and Ticketmaster the panels decided that it was appropriate to do so).
However, there are a number of aspects of the case currently before the Panel that make it somewhat usual. First, in many (although admittedly not all) of the previous cases it was clear that the respondent had positively sought that the panel make an order transferring the domain name without consideration of the merits (for example the Brownells and Ticketmaster cases descried above). This is not what the Respondent has done in this case. Its offer was somewhat different and more limited, i.e. that transfer takes place without even a public order by the Panel to that effect. Second, and perhaps more important, this is not a case (as most if not all of the proceeding cases seem to be) where a respondent has suggested that the domain name be transferred and the complainant has then stayed silent. It is a case where the Complainant has made it clear that it wants a positive decision on the merits.
2 The Panel notes that the Registrar offers a “backorder” service whereby it is possible to place an order on a particular domain name so that if the domain name expires or is cancelled by the registrant, the Registrar will automatically attempt to acquire the domain name “the instant it becomes available”. It may be this to which the Respondent refers. However, this throws no light on why the Domain Name was initially chosen.
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