The Complainant is Sanofi-aventis, Paris, France and Aventis Inc., Delaware, United States of America, represented by Selarl Marchais De Candé, France.
The Respondent is Michael Robert, Georgia, United States of America.
2. The Domain Names and Registrar
The disputed domain names <allegrad.net> and <wwwambien.org> are registered with OnlineNic, Inc. d/b/a China-Channel.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 22, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain names. On October 23, 2008, OnlineNic, Inc. d/b/a China-Channel.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” or “UDRP”), 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 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2008.
The Center appointed Dilek Ustun as the sole panelist in this matter on December 12, 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
Sanofi-aventis was formed during the year 2004 as a result of merger between the two French companies Aventis SA and Sanofi-Synthelabo.
Completion of the merger created the No. 1 pharmaceutical group in Europe, No. 4 in the world, with consolidated net sales of € 28 billion in 2007, in the core business and a strong direct presence on all major world markets, and € 4,537 billion Research and Development expenditure.
Sanofi-aventis, of which Aventis Inc., is an affiliate company, is a multinational company present in more than 100 countries around 5 continents.
In the field of central nervous systems, Sanofi-aventis developed and sells throughout the world a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN.
In the field of respiratory and allergy diseases, Aventis Inc., affiliate of Sanofi-aventis, developed and sells utility drugs under various trademarks, including ALLEGRA which treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat. ALLEGRA was launched, before the merger, by Aventis SA.
ALLEGRA is marketed in more than 55 countries including the United States and Canada.
5. Parties' Contentions
A. Complainant
The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that the Respondent's domain names <wwwambien.org> and <allegrad.net> are identical to Complainant's trademarks mentioned above.
The Respondent has no rights or legitimate interests in respect of the domain names.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In support of this allegation, the Complainant states that the Respondenthas never been known by these names, the Complainant adds that the Complainant has never licensed or otherwise permitted the respondent use its trademarks or to register any domain name containing the above-mentioned trademarks.
The domain names were registered and are being used in bad faith
The Complainant states that the disputed domain names <wwwambien.org> and <allegrad.net> were registered and used by the Respondent in bad faith.
The Complainant states that the disputed domain names have been registered for the purpose of attracting Internet users to the Respondent's web site, by reproducing the trademarks AMBIEN, ALLEGRA and ALLEGRA-D, and creating a likelihood of confusion between the trademarks and the disputed domain names <wwwambien.org> and <allegrad.net>.
The Complainant also adds that the Complainant's trademarks are well-known in the market. The Respondent has thus registered the <wwwambien.org> and <allegrad.net> domain names corresponding to a widely-known trademarks, thereby seeking to unduly profit from the goodwill flowing therefrom.
The Complainant states that the disputed domain names are automatically directed to parking pages. In addition; <wwwambien.org> is used as a referral portal to divert Internet users through sponsored links. Regarding the domain name <allegrad.net>, it is directed to a web site in which ALLEGRA's competing products are offered for sale.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the domain names registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
Sanofi-aventis is the owner of the following trademarks among others:
International trademark AMBIEN No. 605 762 registered on August 10, 1993 in class 5, duly renewed and designating 28 Jurisdictions.
Community trademark AMBIEN No. 003991999 registered on November 28, 2005 in class 5.
French trademark AMBIEN No. 93 456 039 registered on February 19, 1993 in class 5 and duly renewed.
United Kingdom of Great Britain and Northern Ireland trademark AMBIEN No. 1 466 136 registered on May 31, 1991 in class 5 and duly renewed.
Irish trademark AMBIEN No. 149 250 registered on May 29, 1992 in class 5 and duly renewed.
United States of America trademark AMBIEN No. 1 808 770 registered on December 7, 1993 in class 5 and duly renewed.
Australian trademark AMBIEN No. 761 307 registered on May 6, 1998 in class 5.
Chilean trademark AMBIEN No. 521 911 registered on September 16, 1998 in class 5.
All of the above-mentioned trademarks, registered all over the world, and containing the distinctive word AMBIEN are prior to the registration of the domain name <wwwambien.org> on April 14, 2007.
Concerning ALLEGRA and ALLEGRA-D trademarks, Aventis Inc, is the owner of the following trademarks among others:
Canadian trademark ALLEGRA No. TMA 492 711 filed on April 9, 1998 for “Pharmaceutical preparations, namely antihistamines”.
Canadian trademark ALLEGRA-D No. TMA 542 661 filed on March 19, 2001 namely for “Antihistamine/decongestant pharmaceutical preparations not for ophthalmic use.”
United States of America trademark ALLEGRA No. 2 067 728 filed on June 3, 1997 in class 5, for “Pharmaceutical preparations, namely antihistamines.”
United States of America trademark ALLEGRA-D No. 2 157 669 filed on November 1, 1996 in class 5 for “Pharmaceutical preparations, namely antihistamines and decongestants”.
Brazilian trademark ALLEGRA No. 819 351 520 filed on March 2, 1999 namely for “mendicamentos que atuam sobre o aparelho respiratorio. Medicamentos imunossupressores, antiinflamatorios, antialergicos, hipossensi bilizantes e desintoxicantes” .
All of the above-mentioned trademarks ALLEGRA and ALLEGRA-D, registered all over the world, are prior to the registration of the domain name <allegrad.net> on March 14, 2005.
The <wwwambien.org> domain name contains the entirety of Complainant's trademark with the only addition of “www”, which is a typical part of most website URLS. The <allegrad.net> contains the entirety of Complainant's trademark without the hyphen. It has been held in many prior panel decisions that when a domain name incorporates a trademark in its entirety it is confusingly similar to that trademark.
Consequently, the Panel finds that the disputed domain names <wwwambien.org> and <allegrad.net> are confusingly similar to the trademarks in which the Complainant has rights and the Complainant has met the requirements of the first element of the Policy.
B. Rights or Legitimate Interests
Viewing this situation in light of paragraph 4(c) of the Policy, what the Respondent has done to date is not a bona fide offering of goods or services. There is no evidence whatsoever that the Respondent has been commonly known by either of the disputed domain names.
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain names. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. The Complainant showed that the Respondent has neither a license nor any other permission to use the disputed domain names and the Respondent has not made non commercial or fair use of the name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that given the use made of the disputed domain names, when the Respondent registered the disputed domain names it knew that AMBIEN, ALLEGRA and ALLEGRA-D were the trademarks of the Complainant. It registered the disputed domain names because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
As mentioned above, it is reasonable to infer that that when the Respondent registered the disputed domain names, he knew that the names were the trademarks of the Complainant. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge of the Complainants' trademark at the time of the registration of the disputed domain names may be considered as an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,
WIPO Case No. D2000-0226).
The disputed domain names resolve to two different websites containing a number of hyperlinks to websites offering health product information on health products sold by competitors of the Complainants, this might mislead consumers. Also, advertisements and links on websites generally generate income for the website owner dependent on the number of hits that are generated on the website. To this extent, the Respondent is making use of the well-known character of the Complainants' trademarks for generating profits in his own interests
All these acts demonstrate that the Respondent, by using the disputed domain names, had intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website at the disputed domain name or the products on the website of the disputed domain name, as provided in the Policy, paragraph 4(b)(iv).
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, in accordance with paragraph 4(a)(iii) 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 names, <allegrad.net> and <wwwambien.org> be transferred to the complainant Aventis Inc.
Dilek Ustun Sole Panelist
Dated: December 26, 2008
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