WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Max Egozin
Case No. D2010-1514
1. The Parties
The Complainant is Sanofi-Aventis of Gentilly, France, represented by Selarl Marchais de Candé, Paris, France.
The Respondent is Max Egozin of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <ambiendrug.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2010. On September 8, 2010, the Center transmitted by email to the Registrar a request for verification of WhoIs data in connection with the disputed domain name. On September 19, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its 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 September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2010.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on October 28, 2010. 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.
The administrative proceedings were conducted in English for this was the language of the disputed domain name’s Registration Agreement.
4. Factual Background
The Complainant is the world’s fourth largest pharmaceutical company by sales volume, trading in more than 100 countries across 5 continents. Its core business revolves around seven major therapeutic areas: cardiovascular, central nervous system, metabolism, internal medicine, oncology, thrombosis, and vaccines.
The Complainant has used the mark AMBIEN in connection with a top-selling drug prescribed for some insomnia disorders, that was first launched in the United States of America (US) in 1993, and has since become a leading sleep medication worldwide.
The AMBIEN mark has been registered since 1993 in France, the US, the United Kingdom (UK), the European Community, Australia, Ireland, and many other countries via the Madrid System including Ukraine, in international class 5 with respect to pharmaceutical products, as shown in the trademark registration certificates and notices of renewal appended to the Complaint.
To provide medical and prescribing information on its AMBIEN sleeping aids, the Complainant operates a website at “www.ambiencr.com”, in addition to owning several other domain names incorporating the AMBIEN mark.
For its part, the Respondent registered <ambiendrug.com> on February 28, 2009. The disputed domain name resolves to a landing portal featuring information on the Complainant’s AMBIEN drugs and links to online drugstores where AMBIEN medications can purportedly be purchased at low prices and without prescription.
After noticing the unauthorized registration of <ambiendrug.com>, on February 19, 2010, the Complainant sent a cease and desist letter to the Respondent demanding the voluntary surrender of the disputed domain name. Having received no response thereto, the Complainant lodged the instant administrative proceedings.
5. Parties’ Contentions
A. Complainant
The Complainant puts forward the following factual and legal submissions:
i. The disputed domain name reproduces entirely the trademark AMBIEN, which by itself has no particular meaning and is therefore highly distinctive;
ii. The term “drug” contained in the subject domain name is purely descriptive for it indicates the nature of the Complainant’s AMBIEN product; as such, the term “drug” is insufficient to avoid confusing similarity between the disputed domain name and the Complainant’s AMBIEN mark;
iii. The Respondent does not trade under the name AMBIEN, nor does it appear to have prior rights or legitimate interests in the disputed domain name as it has been granted no license or authorization by the Complainant to use its well-known AMBIEN mark as a domain name;
iv. The disputed domain name is not used in connection with a bona fide offering of goods or services as per the Policy because not only the Complainant’s AMBIEN products, but also generic, counterfeits, and competing products are advertised for sale on the website at the disputed domain name;
v. The Respondent is misleadingly diverting consumers seeking the Complainant’s AMBIEN products to its own website where competing products are also promoted, which use of the disputed domain name cannot be characterized as legitimate noncommercial or fair in the context of the Policy;
vi. It is clear that Respondent registered the disputed domain name in bad faith for it must have been aware of the Complainant’s famous AMBIEN trademark which is registered all over the world;
vii. The Respondent has also been using the disputed domain name in bad faith by creating confusion among Internet users with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s domain name and the pharmaceutical products advertised thereon;
viii. Considering that the disputed domain name leads to a website offering for sale anti-insomnia drugs without prescription, it is very likely that the Respondent is either the owner, or is somehow associated with the owner of such website;
ix. The Respondent’s failure to respond to the Complainant’s cease and desist letter reinforces the inference of bad faith registration and use of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to make out its case, the Complainant must demonstrate that the following three conditions are met:
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 interest in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
The Respondent’s default
Even though the Respondent’s default does not relieve the Complainant with the burden of establishing the three elements required by paragraph 4(a) of the Policy (see section 4.6 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions (“WIPO Overview”)), the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s default allows all reasonable inferences of fact in the allegations of the complainant to be deemed true).
A. Identical or Confusingly Similar
As noted by previous UDRP panels, the question under paragraph 4(a) of the Policy is whether the disputed domain name is confusingly similar to the Complainant’s mark, not whether the website to which the domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini,
WIPO Case No. D2002-0834 (A complainant need not establish actual confusion because the test is objective, not subjective).
Accordingly, from a side-by-side comparison between ”ambiendrug“, being the relevant portion of the disputed domain name, and the mark AMBIEN, it becomes noticeable that the only extraneous element brought into the disputed domain name apart from the Complainant’s mark is the word “drug”, which is a generic term that serves to identify the nature of the product like the one marketed by the Complainant under the AMBIEN mark. See Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (“drug” is a generic term when used in conjunction with a pharmaceutical product).
It is well settled that a finding of confusing similarity is warranted where the disputed domain name incorporates the Complainant’s trademark in its entirety despite the addition of a generic term. See Lilly ICOS LLC v. Dan Eccles,
WIPO Case No. D2004-0750 (Respondent’s addition of the word “drug” to the disputed domain name does not eliminate the confusing similarity, because the additional words do not distinguish the owner of the disputed domain name from the owner of the mark).
Moreover, confusion over the Internet between the disputed domain name and the Complainant’s mark becomes inevitable in light of the necessary association of the word “drug” with the well-known AMBIEN mark. See Sanofi-Aventis v. Antoine Tardiff / Cybernet Marketing,
WIPO Case No. D2006-0879 (such a close correlation between the domain name <buy-ambien-drug-online.com> and the mark AMBIEN and such an obvious attempt to invoke the name of a prominent trademark, can only be described as a similarity within the meaning of the Policy).
As a result, this Panel finds that the Complainant has met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
To begin, the Panel takes note of the Complainant’s unrebutted representation never to have licensed or authorized the Respondent to use the AMBIEN mark as domain name or otherwise.
Further, the Panel infers from the evidence on record that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers, nor is it using it in connection with a bona fide offering of goods or services.
According to the consensus view of previous UDRP panels, a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if inter alia (1) the respondent is actually offering goods and services at issue, (2) the respondent is using the site to sell only the trademarked goods, and (3) the site is accurately disclosing the respondent’s relationship with the trademark owner. See WIPO Overview cited above, and also Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 cited by the Complainant. The Panel finds that the Respondent here fails to satisfy the reseller standard because the website at the disputed domain name: i) does not negate a relationship with the Complainant; ii) does not actually offer goods for sale thereon but merely serves as a gateway to numerous pharmacy portals, presumably for profit; and iii) not only advertises the sale of genuine AMBIEN medications to online consumers but also competing products, generic drugs, and counterfeits.
In closing, there is no indication on the website connecting to the disputed domain name that the Respondent is commonly known by or is trading under the name <ambiendrug.com>.
Based on the foregoing considerations and in view of the Respondent’s default, the Panel concludes that none of the defenses set forth in paragraph 4(c) of the Policy seem plausible on the facts of this case.
The Complainant has thus demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
First of all, the Panel notes that the mark AMBIEN is an invented word with a high degree of individuality and distinctiveness, and also that the said mark is widely known by reason of its extensive use and registration around the world.
Against this backdrop, the Panel finds that the Respondent was not only aware of the Complainant’s AMBIEN mark at the time of registration of the disputed domain name but has since traded on the goodwill associated with the said mark, as proven by the fact that the Complainant’s very same AMBIEN drugs are offered for sale on the Respondent’s site, which provides hyperlinks to several online drugstores. As held in Digital Spy Limited v. Moniker Privacy Services and Express Corporation,
WIPO Case No. D2007-0160, registering a domain name with knowledge of another’s trademark rights in the name, and with intention to divert traffic is evidence of bad faith.
Likewise, after reviewing the print-outs of the website associated with the disputed domain name, the Panel has come to the conclusion that, by facilitating and encouraging access to third parties’ portals, the Respondent has been intentionally attempting to attract for commercial gain, Internet users to its website by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the online retailing services referred to therein, thus falling under the bad faith use scenario described by paragraph 4(b)(iv) of the Policy.
Lastly, in the Panel’s opinion, the fact that the Complainant’s AMBIEN drug is offered for sale on the Respondent’s website without prescription is to be regarded as an additional factor revealing bad faith in the use of the disputed domain name, first, because the Complainant’s website at “www.ambiencr.com” does not even market online its own AMBIEN medicaments, let alone without prescription; and second, because the prescribing information posted on the Complainant’s website clearly warns that the AMBIEN drug may pose some risk of dependency and thus discourages self-medication of same. See Lilly ICOS LLC v. Tudor Burden, Burden Marketing,
WIPO Case No. D2004-0794 (selling prescription medication without any physician’s examination or prescription, and consequently in violation of public health regulations constitutes evidence of bad faith under the Policy).
Under the above circumstances, the Panel is satisfied that the Complainant has discharged its burden as required by paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel hereby grants the relief requested by the Complainant, and accordingly orders that the disputed domain name <ambiendrug.com> be cancelled.
Reynaldo Urtiaga Escobar
Sole Panelist
Dated: November 11, 2010
