WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SANOFI-AVENTIS v. Whois Privacy Protection Service Inc.
Case No. D2006-0914
1. The Parties
The Complainant is SANOFI-AVENTIS, Gentilly, France, represented by Bird & Bird Solicitors, France.
The Respondent is Whois Privacy Protection Service Inc., Whois Agent, Bellevue, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ambien-rx-store.com> is registered with @Com Technology LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2006, by e-mail, and on July 19, 2006, in hard copy. On July 20, 2006, the Center transmitted by email to @Com Technology LLC a request for registrar verification in connection with the domain name at issue. On August 23, 2006, the contact service of @Com Technology LLC 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 August 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2006.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September 28, 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 trademark upon which the Complaint is based is AMBIEN. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark applications and registrations for the AMBIEN trademark around the world, including the U.S. Trademark Registration No. 1,808,770 issued December 7, 1993, and renewed as of December 7, 2003. AMBIEN trademark has been used in the United States of America since at least as early as September 16, 1992, in connection with pharmaceutical preparations for the treatment of sleep disorders (class 5). Reference is made to Annexes 5 and 6 of the Complaint.
According to the documentary evidence and contentions submitted, Complainant owns, directly or through affiliates, a number of domain names registrations around the world containing the AMBIEN trademark, including <ambien.us>. Reference is made to Annex 7 of the Complaint. An independent research conducted by the Panel has indicated that Complainant also owns the domain name <ambien.com>, which is registered with Register.com, Inc. as of April 12, 2000. This domain name resolves to a website that contains information on the Ambien product.
According to the documentary evidence and contentions submitted, Ambien is a product manufactured by Complainant and launched in the United States of America in 1993 for the short-term treatment of insomnia. It appears that Ambien is the leading prescription sleep aid in the United States of America. Complainant is a well known pharmaceutical company which resulted from the merger of Sanofi-Synthelabo and Aventis, present in a large number of countries, including the United States of America.
According to the Whois Search Results obtained by the Center, the domain name was created on June 3, 2003. According to the documentary evidence and contentions submitted, Respondent’s domain name resolved to a website which offered for sale Ambien products and provided links to web pages promoting medical products marketed by Complainant. Reference is made to Annex 11 of the Complaint. On April 11, 2006, Complainant sent an email to Respondent requesting the transfer of the disputed domain name to Complainant. There is no evidence in the proceeding that a response was received.
The Panel notes that Complainant has succeeded in securing the transfer of other disputed domain names containing the AMBIEN trademark or confusingly similar words as per the decisions handed down in Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045 ; Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-1358; and Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582 including <onlineambien.com>, <online-ambien.com>, <ambienonlinepharmavy.com>, and <buyambiens.com>; Sanofi-Aventis v. ActiveIdeas.com, Jason Peterson, WIPO Case No. D2006-0987.
5. Parties’ Contentions
Complainant argues that Respondent’s domain name consists of the Complainant’s trademark AMBIEN with the adjunction of the generic words “rx” and “store” and the gTLD “.com”, and contends that the reproduction of the AMBIEN trademark as the sole distinctive element of the disputed domain name generates a high risk of confusion with the Complainant’s trademark AMBIEN because a consumer may think that the domain name refers to the Complainant’s products.
Complainant further contends that (i) Complainant has prior rights in the trademark AMBIEN which precede the Respondent’s registration of the disputed domain name, (ii) Respondent’s domain name is used to offer for sale AMBIEN products whereas it has never been authorized to market such products and to use the trademark AMBIEN, (iii) Respondent’s site does nothing to disclaim any relationship with Complainant, (iv) Respondent does not use the domain name in connection with a bona fide offering of goods or services, and (iv) there is no license, consent or other right by which Respondent would have been entitled to register or use the disputed domain name. It also argues that Respondent has registered and is using the disputed domain name with the intention to divert consumers and to prevent Complainant from reflecting the trademark in a corresponding domain name.
Finally, Complainant argues that Respondent’s bad faith in registering and using the disputed domain name results from the following elements: (i) Respondent has no prior rights and no authorization given by Complainant regarding the trademark AMBIEN, (ii) Respondent’s awareness that Ambien is a leading prescription sleep aid in the United States of America, and (iii) the addition of words to the trademark AMBIEN mislead Internet users since it makes them believe that it is an official site of Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
Complainant relies on a number of WIPO UDRP Panel decisions to argue that the addition of generic words to a trademark is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the complainant. Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661 (involving the use of the generic terms “information” and “sales”); Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045 (citing Deutsche Bank AG v. New York TV Show Tickets, Inc., WIPO Case No. D2001-1314, and finding that a disputed domain name which consists of the complainant’s mark plus the addition of a descriptive word linked to the services that the complainant markets can be confusingly similar to a mark). This Panel concurs with such line of reasoning.
Complainant also argues that the words “rx” and “store” have been found to be generic by certain WIPO UDRP Panel decisions where the Panel ordered the transfer of the disputed domain names. Sanofi-Aventis v. Billionaire Club, WIPO Case No. D2004-0805 (finding that the domain name <accompliarx.com> is confusingly similar to the complainant’s trademark ACOMPLIA because the suffix “rx” is a generic term lacking distinctiveness); Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (finding that the suffix “store” in the domain name <acomplia-store.com> is a generic word used in trade).
This Panel finds that the Complainant’s contentions are warranted. The trademark AMBIEN is distinctive, the words “rx” and “store” are generic and descriptive, and in this type of combination the trademark AMBIEN stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
The addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name and does not affect a finding that the disputed domain name is confusingly similar to Complainant’s registered trademark. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in the WIPO URDP Panel decisions has been that a complainant is required to make out an initial prima facie case, respondent carrying the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
The Panel finds that the Complainant has done enough to establish a prima facie case. In fact, Respondent is not commonly known by the disputed domain name, the principal element of the disputed domain name is the Complainant’s trademark and domain name, and there is no evidence of any license, consent or other right by which Respondent would be entitled to register or use a domain name incorporating Complainant’s trademark AMBIEN. The Panel accepts Complainant’s contention that Respondent is probably aware that Ambien corresponds to a medical product and, therefore, to a trademark given the fact that Ambien was launched in the United States of America in 1993 and has been a leading prescription sleep aid in that country.
The Panel also agrees that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use as established in prior WIPO UDRP Panel decisions. There are various factors that must be considered in determining whether an offering of goods is bona fide where no relationship exists between the trademark or service mark owner and the owner of the disputed domain name. Gerd Petrik v. Johnny Carpella, WIPO Case No. D2004-1043; Pfizer Inc. v. Websites, WIPO Case No. D2004-0730; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
These factors may include (a) whether complainant has acquiesced in the use of its trademark, and whether it has tacitly acquiesced through the passage of time; (b) whether the disputed domain name is the only name that respondent can use to describe its business; (c) whether there is a prominent disclaimer permitting Internet users to know the precise relationship, if any, between the registrant and the trademark owner; (d) whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under Paragraph 4(a)(iii).
The Panel has found already that Complainant has not consented to the use at issue and it is clear that the disputed domain name is not the only name that Respondent can use to describe its business. Further, the Panel agrees that the evidence and circumstances of this case indicate that the disputed domain name was registered to divert Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship or affiliation, or endorsement of Respondent’s domain name. The Panel also finds that Respondent, by defaulting to respond, has failed to provide the Panel with any evidence that the circumstances set forth in paragraph 4(c) of the Policy would be present. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
All of Complainant’s contentions to support the proposition that the disputed domain name has been registered and used in bad faith have already been addressed by the Panel. In fact, the Panel has found that Respondent has no prior rights and no authorization from Complainant to use the trademark AMBIEN, that Respondent was probably aware that Ambien is a leading prescription sleep aid in the United States of America, and that the addition of the generic words “rx” and “store” to the trademark AMBIEN misleads Internet users by inducing them to believe that this is a domain name of Complainant or endorsed by Complainant.
In addition, the fact that the Respondent has chosen as the key part of its domain name the word “ambien”, which is identical to the Complainant’s trademark and domain names, is an indication that registration of the disputed domain name was made in bad faith. However, there are certain additional issues which need to be addressed.
First, an independent survey on the “www.ambien-rx-store.com” website was conducted by the Panel by attempting to reach that website on October 10 and 11, 2006, but the attempts made were unsuccessful. The Panel notes that the Center also failed to retrieve the same URL on August 31, 2006. The Panel finds that Respondent’s change of the function for the disputed domain name was arguably intended to avoid a finding of bad faith in the present proceeding given the fact that such change occurred after Respondent received an email from Complainant requesting the transfer of the disputed domain name to Complainant.
Second, the fact that Respondent’s domain name may no longer be resolving to the website which offered for sale Ambien products and provided links to web pages promoting medical products marketed by Complainant does affect a finding of bad faith use. The question of determination of bad faith when the domain name is not actively used has been addressed before by the WIPO UDRP Panel decisions and the consensus view in that respect is that:
“The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2).
The facts of this case clearly indicate (i) that the word “Ambien” was sufficiently known in the USA market, as a product name, a trademark and a domain name, (ii) that Respondent did not respond to the complaint, (iii) that the registrant of the disputed domain name is a “privacy protection service” allowing the beneficiary of the registration to be concealed, and (iv) that Respondent has not provided any evidence of good faith use and is trying to hide its previous bad faith use of disputed domain name.
In short, the manner in which Respondent used and is using the domain name <ambien-rx-store.com> demonstrates that the disputed domain name was registered, was used, and is still being used in bad faith. Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <ambien-rx-store.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Dated: October 11, 2006