The Complainant is Sanofi-Aventis of Paris, France, represented by Bird & Bird, France.
The Respondent is N/A of Ulyanovsk, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <buyambiencrwithoutaprescription.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2009. On May 29, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 29, 2009, GoDaddy.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” 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 June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 29, 2009.
The Center appointed Yong Li as the sole panelist in this matter on July 7, 2009. 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 Sanofi-Aventis is a multinational company present in more than 100 countries across 5 continents. It is the number one pharmaceutical group in Europe and Number one in BRIC-M (Brazil, Russia, India, the peoples Republic of China and Mexico), with consolidated net sales of EURO 28 billion in 2008, in the core business and a strong direct presence on all major world markets, and EURO 4.537 billion research and development expenditure. It employs approximately 100,000 people worldwide and has a sales force of 35,030 persons, as well as more than 17,600 research staff with 127 projects under development.
In Russia, the Complainant is one of the fastest growing major pharmaceutical companies and a Russian language website specifically dedicated to Russia has been established by the Complainant.
AMBIEN is a product manufactured by SANOFI-AVENTIS and is indicated for the short-term treatment of insomnia. This product was launched in the USA in 1993. In 1994, AMBIEN was considered as the market leader with 27% of total prescriptions.
The Complainant owns a large number of AMBIEN trademarks in more than 50 countries.
The Complainant and its affiliates have registered numerous domain names worldwide containing the AMBIEN trademark, for example “www.ambien.fr”; “www.ambien.us”; “www.ambien.co.uk”; “www.ambien.net”; “www.ambien.biz”.
The disputed domain name was created on September 17, 2008 and has been used to provide links to websites promoting medical products manufactured by competitors of the Complainant which directly compete with AMBIEN.
On January 9, 2009, the Complainant sent a cease and desist letter to the former owner of the disputed domain name, Mr. Fedorov, requiring the transfer of the disputed domain name. Mr. Fedorov did not answer to this letter, however he assigned the contentious domain names to Mr. Petrov. Mr. Petrov does not appear as the registrant but only as administrative contact.
5. Parties' Contentions
A. Complainant
The domain name <buyambiencrwithoutaprescription.net> is confusingly similar to the AMBIEN trademark in which the Complainant has rights. The Complainant has rights in the mark AMBIEN based on its long and extensive use and ownership of numerous trademark registrations worldwide. The Respondent's registrations consist of the Complainant's trademarks with the addition of the generic word “buy”, “without prescription”, the letters “cr” and the gTLD “.net”. The addition of a generic word to a trademark does not change the overall impression of the designation as being connected to the Complainant. With respect to the letters “cr”, AMBIEN CR is the latest and extended-release formula of AMBIEN.AMBIEN CR is commercialized by the Complainant.
The Respondent should be considered as having no right or legitimate interest in respect of the disputed domain name. The Complainant has prior rights in the trademark AMBIEN, which precede the Respondent's registrations of the domain name. Moreover, the Complainant's trademark is present in over 50 countries and is well-known throughout the world. The disputed domain name is used by the Respondent to provide notably links to websites promoting medical products manufactured by competitors of the Complainant which directly compete with AMBIEN. The Respondent's site does nothing to disclaim any relationship with the trademark owner. It did nothing to dispel any possible suggestion that it might be the trademark owner, or that the website might be the, or an, official site of the Complainant. Therefore, the Respondent's use does not satisfy the test for bona fide use established in prior UDRP decisions. The Respondent has made no bona fide use of the disputed domain name because of its lack of authorization to use the trademark AMBIEN. Furthermore, using domain names in order to divert consumers for commercial gain cannot be characterized as a fair use.
The domain name should be considered as having been registered and used in bad faith. The Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademark. The Respondent is aware that AMBIEN is a leading prescription sleep aid and the Respondent has registered the disputed domain name with the knowledge that AMBIEN and AMBIEN CR are medical products. The addition of words to the trademark AMBIEN misleads Internet users since it makes them believe that it is an official website of the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark AMBIEN. The disputed domain name is composed of the Complainant's trademark AMBIEN, the generic words “buy”, “without a prescription”, the letters “cr” and the gTLD “.net”. Previous panelists have held the opinion that the addition of generic words to trademarks is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the Domain name as being connected to the Complainant (See Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,
WIPO Case No. D2000-1511; PepsiCo, Inc. v. Pepsi SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),
WIPO Case No. D2003-0696). Further, in cases with domain names composed of a trademark and descriptive words such as “online-prescription” or “prescription”, previous panelists have ordered the transfer of these domain names to the complainant (see Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889; Sanofi-Aventis v. One Star Global,WIPO Case No. D2006-0583).
The Panel agrees with these previous panels and holds that adding the generic terms “buy” and “without a prescription” to the Complainant's trademark AMBIEN, and adding the letters “cr” which denotes the latest formula of AMBIEN, does not prevent the domain name from being confusingly similar to the Complainant's trademark. Furthermore, the addition of the gTLD “.net”, which is required for registration of the domain name, has no distinguishing capacity in the context of domain names.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The complainant is required to produce an initial prima facie case that the respondent lacks rights or legitimate interests. If the complainant has produced such a case, the Respondent then carries the burden of demonstrating that it does have an own right or legitimate interest in the domain name. Previous decisions have found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent's default.
The Complainant has made allegation that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has not contested Complainant's allegation.
The Complainant has established that the disputed domain name is used by the Respondent to provide notably links to websites promoting medical products manufactured by competitors of the Complainant which directly compete with AMBIEN. The Respondent's site does not disclaim a relationship with the trademark owner or dispel possible suggestion that it might be the trademark owner, or that the website might be the site of the Complainant. Therefore, the Panel holds that Respondent's use does not satisfy the test for bona fide use established in prior UDRP decisions.
Furthermore, there is no evidence to suggest that the Respondent could establish any of the circumstances set out in paragraph 4(c) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Taking into consideration that the Complainant is a multinational company present in more than 100 countries and also active in the Russian Federation, the Complainant's trademark AMBIEN itself has no dictionary meaning and therefore is highly distinctive, and the Complainant's widely-known trademark has been registered in numerous jurisdictions for some long time, the Panel believes that the Respondent was aware of the Complainant's rights when registering the disputed domain name.
Furthermore, taking into consideration that the Respondent adds the generic terms “buy”, “without”, “a prescription” to the Complainant's widely-known trademark to form the disputed domain name which indicates the domain name is connected to an offering for sale of the Complainant's products, and the Respondent in fact advertises the Complainant's direct competitor's products at the disputed domain name, the Panel believes that the Respondent has tried to create a likelihood of confusion with the Complainant's mark and to take advantage of the reputation and goodwill of the Complainant's widely-known mark to obtain commercial gain.
Paragraph 4(b)(iv) of the Policy stipulates as one of the typical situations which shall be evidence of the registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”. The Panel believes that the Respondent's registration and use of the disputed domain name is consistent with the circumstance stipulated by the above-mentioned Paragraph 4(b)(iv) of the Policy.
In addition, the Respondent has not made any responses to the cease and desist letter sent by the Complainant and has not submitted any material to the Panel to argue against the allegations made by the Complainant and to prove any circumstances of legitimate commercial or fair use of the disputed domain name.
For all the reasons discussed above, the Panel finds that the disputed domain name has been 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 <buyambiencrwithoutaprescription.net> be transferred to the Complainant.
Yong Li Sole Panelist
Dated: July 21, 2009
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