WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Davie Kearney
Case No. D2006-0861
1. The Parties
The Complainant is Sanofi-Aventis, of Gentilly, France, represented by Bird & Bird, France.
The Respondent is Davie Kearney, of Miami, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names <ambien-i.com> and <buy-ambien-here.com> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2006. On July 7, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 8, 2006, 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 July 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2006.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on August 11, 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 the third largest pharmaceutical company in the world, present in more than 100 countries across 5 continents. It is the result of the combination of Sanofi-Synthélabo (itself the result of a merger between Sanofi and Synthélabo in 1999) and Aventis. On August 20, 2004, Sanofi-Synthélabo adopted the name Sanofi-Aventis, thus preserving the brand heritage of each of the constituent companies. As of December 31, 2004, Aventis merged into Sanofi-Aventis. The Complainant had 2004 consolidated sales of €25 billion and €4 billion Research and Development expenditures. It employs over 97 000 employees worldwide and has a sales force of over 35 000 persons, as well as more than 17 600 research staff with 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development. The Complainant’s stock market capitalization is approximately 2 700 000 000 euros.
In the United States, the Complainant’s products are marketed through a number of channels, including a Sanofi-Aventis subsidiary, alliances with other pharmaceutical companies and license agreements.
AMBIEN is a trademark registered in several countries, including the United States, used in relation with a product a manufactured by the Complainant which is now the leading prescription sleep aid in the United States. The Complainant and its affiliates registered numerous domain names worldwide containing the AMBIEN trademark, for example <ambient.fr> and <ambient.us> and <ambient.biz>.
“At the time of filing of the Complaint, the domain name resolves to a website containing advertising and offering links to online pharmacies and products, including sleep aids.”
5. Parties’ Contentions
The domain names consist of the Complainant’s registered trademark AMBIEN with the addition of the letter “i” and the generic words “buy”, “here” and the gTLD “.com”. A wide variety of panelists have considered that the addition of generic words to trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant (see Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS Computer Industry, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).
In relation to domain names that include a trademark and for instance the term “buy” or other generic terms, panelists in previous decisions under the Policy took the view that the use of the generic and descriptive terms in conjunction with the Complainant’s trademark does not remove the domain names in dispute from being confusingly similar, the generic terms lacking in distinctiveness (see F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; and Sanofi-Aventis v. Domain Guru, WIPO Case No. D2005-1359). The same applies as regards the addition of the letter “i” since it constitutes the abbreviation of the word “info”.
There is a high risk of confusion, since a consumer may think that the domain names directly refer to the Complainant’s products.
The Complainant has prior rights in the trademark AMBIEN, which precede the Respondent’s registration of the domain names. Moreover, the Complainant’s trademark is present in over 50 countries including the US and is well-known throughout the world. Furthermore, the Respondent’s sites, “ does nothing to disclaim any relationship with the trade mark owner. It did nothing to dispel any possible suggestion that it might be the trade mark owner, or that the website might be the, or a, official site of the Complainant.” (see Sanofi-Aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769. Therefore, the Respondent’s use does not satisfy the test for bona fide use established in prior WIPO UDRP decisions (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903)
There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain names incorporating the Complainant’s trademark AMBIEN.
The Complainant submits that is no doubt that the Respondent is aware that AMBIEN corresponds to a medical product and therefore to a trademark. Indeed, the Respondent would have not registered the disputed domain names if it had not known that AMBIEN was a leading prescription sleep aid. As a result, it seems that the Respondent, which has no legitimate interest in respect of the domain names <ambien-i.com> and <buy-ambien-here.com> has registered these domain names with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in corresponding domain names.
The Respondent has made no bona fide use of the disputed domain names 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. In addition, due to the various communications on the Internet on that product, the Respondent, which offers to sell AMBIEN products, could not ignore that AMBIEN is a leading prescription sleep aid. There is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the disputed domain names in order to prevent the Complainant from reflecting the mark in corresponding domain names. It is an opportunistic act, which seeks to disrupt the Complainant’s business. Furthermore, the Respondent proposes on the contentious websites links to AMBIEN and to competitive products such as sonata or links to portal websites (see Sanofi-Aventis v. Milton R. Benjamin, WIPO Case No. D2005-0544)
The Complainant contends that an Internet user who tries to connect to the web sites to which the domain names resolve may believe that they are official web sites of the Complainant. Making Internet users that a web site is the official web site of another for commercial gain and increasing the risk of confusion by using generic terms establishes the bad faith of the registrant under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) are both domain names identical or confusingly similar to such trademark or service mark.
On the first question, the Complainant has established rights in the AMBIEN trademark.
On the second question, the domain names incorporate a trademark used in relation with a pharmaceutical product and generic words, namely in the first case the letter “i” a common prefix and suffix in domain names, and in the second case the words “buy” and “here”, which may lead consumers to believe that a product or service may be ordered online at that online location. The addition of those elements to the trademark heighten the risk of confusion. When a domain name wholly incorporates a Complainant’s mark and adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. See, inter alia, 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; Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The Panel thus finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain names based on the Complainant’s prior use of the AMBIEN mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain names.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There were no elements introduced in evidence to show that the Respondent is or was commonly known by either one of the domain names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain names. On the contrary, the evidence suggests that the Respondent is using the domain names for commercial gain.
In the case of a reseller, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (at 2.3), a “reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner.” This requirement is not met in the instant case.
Consequently, the Panel finds that the Complainant has successfully made a prima facie case, which the Respondent has failed to rebut. The Panel thus finds that Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s web site or location or of a product.
There is ample evidence of the situation described in paragraph 4(b)(iv).
Apart from the famous nature of the Complainant’s marks, the domain names are both confusingly similar to the Complainant’s mark AMBIEN. It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered domain names consisting of a trademark used in relation with a prescription pharmaceutical, the letter “i” (common in Internet domain names) and the words “buy here.”
A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g., Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and/or indicating a good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461. In fact, based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be infringing to the Complainant’s mark.
The Panel thus finds for the Complainant on this third element of the test.
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, <ambien-i.com> and <buy-ambien-here.com> be transferred to the Complainant.
Daniel J. Gervais
Dated: August 21, 2006