WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Artie Toothaker
Case No. D2006-0256
1. The Parties
The Complainant is Sanofi-aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Artie Toothaker, Stratford, Iowa, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyambien.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2006. On March 1, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 3, 2006, eNom 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 March 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2006.
The Center appointed Peter G. Nitter as the sole panelist in this matter on May 26, 2006. 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 is one of the three largest pharmaceutical companies in the world. The Complainant is a multinational company present in more than 100 countries across 5 continents. The Complainant benefits from a large portfolio of drugs, with 8 flagship products: Plavix, Lovenox, Aprovel, Axotere, Eloxatin, AMBIEN, Allegra and Actonel.
AMBIEN is a product manufactured by the Complainant and is indicated for the short-term treatment of insomnia. According to a study carried out by IMS health in December, 2003, it appears that AMBIEN is a leading prescription sleep aid in the United States of America.
The Complainant owns a large number of AMBIEN trademarks in more than 50 countries, including the United States.
The Complainant and its affiliates have registered numerous domain names worldwide containing the AMBIEN trademark, for example <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net> and <ambien.biz>.
The Respondent has registered the domain name <buyambien.com>.
5. Parties’ Contentions
The domain name is confusingly similar to the trademark of the Complainant. The Respondent’s registration consists of the Complainant’s trademark with the addition of the generic word “buy” and the gLTD “.com”. Because of this identity, there is a high risk of confusion, since a consumer may think that the domain name directly refers to the Complainant’s products.
The Respondent is making a commercial use of the Complainant’s trademark without the Complainant’s consent, since the disputed domain is redirected to a web site that offers to sell a large number of medicine products. The addition of words to the trademark AMBIEN is misleading Internet users to believe that it is the official web site of the Complainant.
The Respondent has made no bona fide use of the disputed domain name because of the lack of authorization to use the trade mark AMBIEN. Furthermore, using the domain name at issue in order to divert costumers for commercial gain cannot be characterized as fair use. The Respondent has obviously registered and used the domain name in bad faith.
The Respondent must have known about the AMBIEN trademark, as it is a leading prescription for sleep aid in the United States, where the Respondent is located. There is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the disputed domain name in order to disrupt the Complainant’s business.
The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party can in itself be considered as a disruption of the business of the rightful owner.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
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 domain name at issue is not identical to the Complainant’s trademark, and the question is therefore whether there is confusing similarity between the domain name and the Complainant’s trademark.
The domain name at issue consists of the Complainant’s trade mark AMBIEN, together with the generic word “buy.” The mere addition of a generic word to a registered and well-known trademark has consistently been deemed insufficient to avoid confusing similarity under previous panel decisions under the Policy similar to the present case. In Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043, the panel stated:
“The Panel finds that adding generic words to a domain name such as “new”, “best” and “buy” 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 “new, “best” and “buy” do not serve any distinguishing function but rather describe the nature of the service offered on the relevant website.”
The following domain names have all been found to be confusingly similar to the AMBIEN trademark: <ambienadvisor.com> (Sanofi-Aventis v. Helois Lab, WIPO Case No. D2005-0607), <online-ambien.biz> (Sanofi-Aventis v. Juntech, Inc., WIPO Case No. 2005-0606), <buy-ambien-online.net> (Sanofi-Aventis v. Gabe Smith, WIPO Case No D2005-0605), <ambien-free-shipping.com>, <ambien-overnight.info>, <ambien-overnight.net>, <ambien-pharmacie.net>, <ambient-prescription.org>,<ambient-usa.net>, <ambient-5mg.org>, <cheap-ambien-sleeping-pill.com>, <cheapest-ambien.org>, <lowest-price-ambien.com> and <order-ambien-cheap.com> (Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
B. Rights or Legitimate Interests
The panel in Do the hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, summarized 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 interests, 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 the domain name.
The Complainant in this matter has established a prima facie case to which the Respondent has not reacted. The Panel finds that the Respondent’s failure to file a response indicates a lack of legitimate interests. 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 not only 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 finds it is unlikely that the Complainant would grant the Respondent any right to use its AMBIEN trademark in connection with such activity, and 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. See Sanofi-aventis v. Alma Navaro, WIPO Case No. D2005-1042.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
There are several circumstances indicating that the Respondent must have been aware of the Complainant’s trade mark at the time of his registration of the domain name at issue. The Complainant has shown that its trademark is well known, and as the Complainant’s products bearing the trade mark AMBIEN are being sold on the Respondent’s web site corresponding to the domain name at issue it is clear to the Panel that the Respondent was aware of the Complainant’s trade mark when he chose to register the contested domain name.
The content on the Respondent’s web site is furthermore, in the view of the Panel, an indication of the Respondent’s intent to take advantage of the Complainant’s fame and goodwill.
Hence, on the background of the facts and documentation presented to the Panel, the Panel is satisfied that the Respondent has registered and is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website.
Pursuant to Policy, paragraph 4(b) (iv), the Panel therefore finds evidence of both bad faith in registration and bad faith use, for the purposes of paragraph 4(a)(iii) and so the Complainant has also established this final limb of its case.
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 <buyambien.com> be transferred to the Complainant.
Peter G. Nitter
Date: June 9, 2006