WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Alma Navaro
Case No. D2005-1042
1. The Parties
The Complainant is Sanofi-aventis, France, represented by Bird & Bird Solicitors, France.
The Respondent is Alma Navaro, Panama.
2. The Domain Name and Registrar
The disputed domain name <order-ambien-here.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2005. On October 4, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 4, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2005.
The Center appointed Ms. Charné Le Roux as the Sole Panelist in this matter on November 2, 2005. 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 Panel learnt, subsequent to the filing of its Statement of Acceptance and Declaration of Impartiality and Independence, of circumstances that should be brought to the attention of the Center and the Center accordingly notified the Complainant and Respondent on November 11, 2005 and invited comments. No comments were received and the proceedings continued normally.
4. Factual Background
The Complainant is the third largest pharmaceutical company in the world following the acquisition by Sanofi-Synthelabo, a French pharmaceutical company, of Aventis. The Complainant is currently constituted as a multinational company present in more than a hundred countries across five continents.
The Complainant manufactures and markets therapeutic products in a number of fields including cardiovascular, thrombosis, oncology and central nervous system and one of its flagship products is AMBIEN. AMBIEN is indicated for the short term treatment of insomnia. The Complainant is present in the United States of America and America through affiliate companies, alliances with other pharmaceutical companies and license agreements with authorized users.
AMBIEN was first launched in the United States of America in 1993 and in 1994 was considered as the market leader with 27% of total prescriptions. The Complainant and its affiliate companies also own a large number of trademark registrations and applications for AMBIEN in class 5 covering pharmaceutical goods, in many countries across the world. These include, by way of example, US trademark registration number 1808770 registered on December 7, 1993, and International trademark registration number 605762 registered on August 10, 1993. These registrations appear to be valid and in force. The Complainant and its affiliate companies also own a number of domain names that include the trademark AMBIEN, for example, <ambien.fr>, <ambien.us>, <ambient.co.uk>, <ambien.net> and <ambien.biz>. The Complainant claims that its AMBIEN trademark is well-known in the US and in America.
The Respondent did not reply to the Complainant’s contentions. The only information regarding the Respondent that is available to this Panel is that the Respondent registered the disputed domain name on March 14, 2005 and that the website maintained by the Respondent under the disputed domain name resolves to a site which promotes the sale of the Complainant’s product and also the products of other manufacturers.
On June 17, 2005 the Complainant addressed a letter to the Respondent requesting the transfer of the disputed domain name to the Complainant within 10 days. There was no response by the Respondent.
5. Parties’ Contentions
The Complainant contends that its AMBIEN trademark is well-known and that its rights in it are established through extensive use and registration.
The Complainant contends that the disputed domain name is confusingly similar to its AMBIEN trademark because the addition of the generic words “order”, “here” and the gTLD. “com” does not change the overall impression of the designation as being connected to the Complainant, and is designed to give rise to persons accessing the domain name mistakenly to believe that the disputed domain name has a connection with the Complainant.
The Complainant also contends that the Respondent lacks rights or legitimate interest in the disputed domain name in that:
(a) the Complainant has prior rights in the trademark AMBIEN, that precede the Respondent’s registration of the disputed domain name;
(b) the Complainant’s trademark is well-known in the Respondent’s country and there is no doubt that the Respondent is aware that AMBIEN corresponds to a medical product and to the trademark owned by the Complainant;
(c) the disputed domain name has been used by the Respondent to promote AMBIEN products as well as competing pharmaceutical products;
(d) the Respondent does not have a licence, consent or other right by which it would have been entitled to register or use a domain name incorporating the Complainant’s trademark AMBIEN;
(e) the Respondent has not made bona fide use of the disputed domain name; and
(f) the prime motivation for the registration of the disputed domain name by the Respondent was to divert consumers and prevent the Complainant from reflecting its trademark in a corresponding domain name.
The Complainant contends finally that the Respondent acquired and uses the disputed domain name in bad faith. The Complainant indicates that:
(a) the Respondent has no prior rights and no authorization given by the Complainant concerning the AMBIEN trademark;
(b) the Respondent’s awareness that AMBIEN is one of the leading prescription sleep aids in America constitutes bad faith registration and use.
(c) the addition of generic words to the trademark AMBIEN misleads Internet users into believing that it is the official website of the Complainant.
(d) the Respondent’s registration of domain names consisting of well-known trademarks owned by third parties being <order-valium-here.com> and <xanaxorder.com> constitutes a pattern of such conduct and is evidence of the Respondent’s bad faith.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
(i) Procedural matters
a. Jurisdiction of the Panel
The Panel’s jurisdiction has not been placed in dispute and the Panel finds that the dispute is properly within the scope of the Policy and that it is within its jurisdiction to adjudicate the issues in this case.
b. Default of the Respondent
The Respondent has not reacted to the Complaint but this does not relieve the Complainant of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant do, however, in terms of the Rules, permit the Panel to draw appropriate inferences.
(ii) Substantive matters
Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the disputed domain names to be transferred:
a. that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
b. that the Respondent has no rights or legitimate interests with respect to the disputes domain name; and
c. that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proven that it is the owner of rights in the trademark AMBIEN and that the mark has become known as that of the Complainant, not only in its home country, but virtually worldwide.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Panel finds that adding generic words to a domain name such as “order” and “here” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “order” and “here” do not serve any distinguishing function but rather describe the nature of the services offered on the relevant website. Of relevance are the following domain names, which were all held by previous panels to be confusingly similar to the AMBIEN trademark of the Complainant: <ambienadvisor.com> (WIPO Case No. D2005-0607), <online-ambien.biz> (WIPO Case No. D2005-0606); <buy-ambien-online.net> (WIPO Case No. D2005-0605); <ambient-free-shipping.com>, <ambient-overnight.info>, <ambient-overnight.org>, <ambient-pharmacie.net>, <ambient-prescription.org>, <ambient-usa.net>, <ambient-5mg.org>, <cheap-ambien.net>, <cheap-ambien-no-shipping-charge.com>, <cheap-ambien-sleeping-pill.com>, <cheapest-ambien.org>, <lowest-price-ambien.com> and <order-ambien-cheap.com> (WIPO Case No. D2005-0660).
B. Rights or Legitimate Interests
The panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interests in a domain name.
The Complainant in this matter has made the required assertion to which the Respondent has not reacted. The Panel finds that the Respondent’s failure to file a response indicates a lack of legitimate interest. See Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317.
Furthermore, on the facts of this matter, the Respondent uses the disputed domain name to promote the sale of the Complainant’s AMBIEN product but also products in direct competition with the Complainant. The Panel finds that Internet users will be attracted to the website linked to the disputed domain name by the well known AMBIEN trademark and that they will access that website because they are interested in the Complainant’s products. The Panel is of the view that the Respondent’s only interest in the disputed domain name is to derive a benefit from the goodwill that attaches to the Complainant’s trademark.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or a legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.
The Complainant contends that the Respondent registered the domain names of other well known third parties. In that regard, paragraph 4(b)(ii) of the Policy provides that where a Respondent has registered a domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct, the conduct constitutes evidence of the registration and use of a domain name in bad faith.
The Complainant also relies on paragraph 4(b)(iv) of the Policy, which provides that bad faith may be evidenced by use by the Respondent of a domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating the likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Panel finds that the registration by the Respondent of domain names that incorporate the trademarks of other parties as shown by the Complainant constitutes an engagement in a pattern of such conduct.
The Panel also finds that the Respondent is intentionally diverting Internet users to its website by exploiting the confusing similarity between the disputed domain name and the Complainant’s AMBIEN trademark and that the Respondent is engaging in such conduct in order to reap a commercial benefit.
Consequently, the Panel holds that paragraph 4(b) of the Policy has been satisfied and thus, that the Complainant has discharged its onus in showing that the Respondent has registered and used the disputed domain name in bad faith. The Panel does not consider it necessary to deal with the additional evidence of bad faith.
In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel finds that the Complainant has established that:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s AMBIEN trademark;
(ii) that the Respondent has no rights or legitimate interest with respect to the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel grants the Complainant’s request that the disputed domain name <order-ambien-here.com> be transferred to it.
Charné Le Roux
Dated: November 22, 2005