WIPO Arbitration and Mediation Center
Sanofi-Aventis v. Joseph Black
Case No. D2006-1127
1. The PartiesThe Complainant is Sanofi-Aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Joseph Black, San Diego, California, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <ambieneffect.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2006. On September 5, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 5, 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. On September 8, 2006, the Complainant submitted a communication requesting a suspension of the proceedings. On September 11, 2006, notification of suspension of the administrative proceedings, until October 11, 2006, was given. On September 29, 2006, the Complainant requested a reinstitution of the proceedings. 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 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2006.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on October 30, 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 (or related companies) is the registered owner, or the applicant, of the AMBIEN mark (hereinafter: the Mark) in over 50 countries. By way of example, the Mark was registered in the United States of America on December 7, 1993, on the International Register under the Madrid Arrangement on August 1, 1993, with the country of origin being France (February 19, 1993), and in Great Britain and Northern Ireland (May 31, 1991).
5. Parties’ Contentions
The Complainant has alleged the following salient facts.
The Complainant is a large multinational company in the pharmaceutical area with a presence in over 100 countries. In the summer of 2004, Sanofi-Synthelabo, a French pharmaceutical company, acquired the shares of the Aventis company. The name Sanofi-Aventis was adopted for the parent company, thereby preserving the brand heritage of each of the constituent companies.
Following the formal merger of Sanofi-Synthelabo with Aventis in December 2004, the resulting company, Sanofi-Aventis, is now the largest pharmaceutical company in Europe and the third largest pharmaceutical company in the world, with consolidated pro forma sales in 2004 in the amount of 25 billion Euros and expenditures of 4 billion Euros in research and development in that year. The Complainant employs over 97,000 employees world-wide, including over 17,000 engaged in 127 research and development projects, with 56 projects in advanced stages and 71projects in pre-clinical development.
The Complainant has a large portfolio of high-growth drugs in seven major therapeutic areas, including cardiovascular, thrombosis, oncology, metabolic disorders, central nervous system, internal medicine and human vaccines. The Complainant benefits from nine flagship products: Ambien, Lantus, Lovenox, Taxotere, Eloxatin, Allegra and Actonel.
The Complainant markets its products in the United States of America through a number of different channels, including through its U.S. subsidiary as well as through alliances with other companies and license agreements. The Complainant maintains a website dedicated to the U.S. market at the following Internet address: “www.sanofi-aventis.us.”
As noted above, the Ambien product is one of the Complainant’s flagship products. The Ambien product is designed for use as a prescription sleep aid for the short-term treatment of insomnia. Already in 1994, a year after its launch in the U.S., Ambien became the market leader with approximately 27% of the total prescriptions for prescription sleep aids.
According to a study carried out by IMS health in 2003, it appears that Ambien is the leading prescription aid in the U.S, and the product demonstrated that it delivers safe and effective results for its users with no evidence of tolerance or dose escalation. In a study presented to the American Psychiatric Association in 2004, it was found that the improvements in sleep provided by Ambien did not diminish over time. Further, the symptoms treated did not worsen on the days that the product was not used.
By virtue of the large number of registrations and applications of the AMBIEN mark, and the fact that up to 30% percent of the population suffers from insomnia, the AMBIEN mark enjoys substantial goodwill and is quite well-known in the U.S. and throughout the world.
The Domain Name <ambieneffect.com> is confusingly similar to the AMBIEN trademark in which the Complainant has Rights.
The Respondent’s domain name registration consists of the Complainant’s trademark with the addition of the word “effect” and the gTLD “.com”. Numerous panelists have considered that the addition of a generic word to a trademark does not change the overall impression of the designation as being connected to the Complainant. See, e.g., Telstra Corporation Ltd. v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; 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; Pepsico Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; American Online Inc. v. Chris Hoffmann, WIPO Case No. D2001-1184; <ambien-side-effects. Info> Sanofi-Aventis v. Darko, WIPO Case No. D2005-1357.
The addition of the gLTD “.com”, which is required for registration of the domain name, does not have distinguishing capacity (Telecom Personal v. namezero.com, Inc., WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271; Sano-Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045).
Based on the foregoing, there is a high risk of confusion that a consumer may think that the domain name <ambieneffect.com> directly refers to the Complainant’s products.
The Respondent has no right or legitimate interest with respect to the domain name <ambieneffect.com>.
The Complainant has prior rights in the mark AMBIEN as a result of wide-spread registration of the mark and use thereof, all of which precede Respondent’s registration of the Domain Name in 2006.
Moreover, Respondent’s use of the Domain Name does not meet the standard for bona fide use established in prior WIPO decisions (see generally Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, for a discussion of the requirements for bona fide use by the Respondent).
The Respondent has used the Domain Name to offer links to websites promoting various health products. In doing so, nothing in the Respondent’s website disclaims nor dispels any possible suggestion that the operator of the site might be the owner of the mark AMBIEN, or that the website is connected to the Complainant (see Sanofi-Aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769).
There is no license, consent or other right by which the Respondent would have been authorized to register a domain name incorporating the Complainant’s trademark AMBIEN.
The Registrant would not have selected the word “ambien” as the principal component of its domain name except for the fact that Ambien is the name of a well-known medical product.
Use of a domain name in order to divert consumers for commercial gain cannot be characterized as fair use (Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066).
The Domain Name should be considered as registered and being used in bad faith.
The Complainant alleges bad faith on the part of the Registrant for the following reasons.
1. The Respondent has no prior right in the AMBIEN mark nor has it received any authorization to use it.
2. The Respondent was surely aware that Ambien is a leading prescription sleep aid.
3. The use of the word “ambien” misleads Internet users to believe that the website of the Respondent is an official site of the Complainant.
The factual and legal bases for points (1) to (3) have been set forth above in the previous section.
4. After receipt of the cease and desist letter, Respondent offered to sell the domain name in an amount in excess of the costs of registration. On July 17, 2006, the Complainant sent a cease and desist letter to the then registrant—Homeland Defense International, which offered to sell the domain name for the amount of $500.00, a sum in excess of the out-of- pocket direct expenses in registering the domain name. In August 2006, Homeland Defense International transferred the domain name <ambieneffect.com> to the Registrant.
It is recognized that an offer by a registrant which to sell a domain name for valuable consideration in excess of the registrant’s out-of-pocket expenses constitutes evidence of bad faith on the part of the registrant (see AstraZeneca AB v. Alvaro Collazo, WIPO Case No. D2005-0367). This is especially so when the main activity of the Respondent is to trade for gain in domain names that make use of the trademarks of others.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements to support the transfer of a domain name:
(i) the domain registered by the Respondent 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 interests in respect of the domain name; and
(iii) the Respondent has registered and is using the domain name in bad faith.
The Center has taken the required steps to provide actual notice of the Complaint to the Respondent in compliance with the Rules. Pursuant to paragraph 5(b)(i) of the Rules, the Respondent was then called upon to provide a full and complete response to the statements and allegations made in the Complaint to support the conclusion that the Respondent should retain registration and use of the disputed domain name.
The Respondent did not file any such response. Under paragraph 14(b) of the Rules, in the event of default, “… the Panel shall draw such inferences therefrom as it considers appropriate.” As stated in the Panel in Sanofi-Aventis v. Darko, WIPO Case No. D2005-1357, “the Respondent’s default entitles the Panel to infer that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and rules and principles of law that it deems applicable.”
In particular, in the absence of the filing of any response by the Respondent, the Panel deems that the Respondent has continued to use of the Domain Name in an identical or similar manner.
A. Identical or Confusingly Similar
The Complainant has submitted evidence of its registration of the mark AMBIEN in various countries, including the United States of America, the United Kingdom and Australia. The Complainant has also provided information about the world-wide scope of its activities in the pharmaceutical industry, including the marketing and sale of the Ambien product. While this Panel is not convinced that the AMBIEN mark should be deemed a “well-known” mark within the meaning of applicable domestic law, the evidence is sufficient to support the conclusion that Ambien is a successful product in its field and that the Mark recognized by relevant consumer population.
It is well-established that the addition of the gTLD “.com”, which is required for registration of the domain name, has no distinguishing capacity in this context. The relevant comparison for determining confusing similarity is between the word “ambien” and the combination “Ambien effect.”
The word “effect”, in the context of the Complainant’s activities in the pharmaceutical industry, is generic or at best descriptive. Stated otherwise, the word “effect” is associated with the use of medicines. (See Sanofi-Aventis v. Darko, WIPO Case No. D2005-1357 in connection with the use of the words “side effects” in juxtapose with the word “ambien”). Thus, the word “effect” cannot be deemed to have any distinguishing capacity with respect to the challenged domain name.
Since neither “.com” nor “effect” enjoys any distinguishing capacity, the only relevant portion of the Domain Name is the word Ambien, which is identical to the Mark. In such a situation, confusion is presumed.
Assuming arguendo that the word “effect” cannot be dismissed as totally lacking in distinctive capacity does not change the Panel’s position. The dominant portion of the Domain Name is the word “ambien.” When the Domain Name is taken as a whole and compared with the Mark, the conclusion remains: there is confusion between them.
Accordingly, the Complainant has satisfied the first element of the test.
B. Rights or Legitimate Interests
Here, as well, it is noted that the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
The Panel notes three suggested grounds under Policy 4(c), whereby a Respondent may support a claim that it has a legitimate right and interest in the Domain Name. These three grounds are as follows:
i. Before notice of the dispute, the Respondent used the Domain Name in connection with a bona fide offering of goods or services;
ii. The Respondent has commonly been known by the Domain Name, even in the absence of any trademark or service mark rights;
iii. The Respondent has made 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.
The Respondent has not filed any response to support a claim under any of these grounds. Nevertheless, the question still remains whether the information and documentation, as submitted by the Complainant, point to any possible conclusion to the contrary. The Panel has not made any independent inquiry regarding any information or documentation.
The Complainant has adduced a print out of a webpage from the URL “www.ambieneffect.com”, dated August 25, 2006, that purports to contain links that direct the user to websites that promote health products. The links are all in French and no further information about the contents of these websites is provided. No other documentation has been submitted in connection with the website, nor is there any suggestion that the website contains any links or contents in English or any other language than French.
The Complainant has provided a copy of an extract of an International Registration for the mark AMBIEN, dated August 10, 1993, with the country of origin being France. The Complainant has provided no specific evidence of the extent to which the Ambien product has been marketed and sold in France or in other French-speaking countries, as would be expected to be provided in such a situation. Nevertheless, based on the Complainant’s assertion that the Ambien product is sold in numerous countries, the fact of registration of the AMBIEN trademark in France, and given that France is the home country of the Complainant, the Panel is of the view that there is sufficient support under the circumstances for the conclusion that the AMBIEN product is recognized by French-speakers with respect to medical products.
That being so, the issue is whether the use by the Respondent of the AMBEIN mark as part of the Domain Name can be deemed a bona fide offering of goods or services, as provided for in Policy 4(c)(i). While the exact contents of the links on the website are not detailed by the Complainant, the information contained on the attached webpage indicates that the links are related to medical products and the health industry.
Given the extent and scope of the use and registration by the Complainant of the AMBIEN mark in the medical field, one can reasonably conclude that the use of the Domain Name, prior to notice of the dispute, was not in connection with a bona fide offering of goods or services. The Respondent would not have registered the Domain Name if it was not familiar with the Complainant’s AMBIEN mark. Further, the Registrant was not the beneficiary of any license, consent or other right by which it was entitled to register or use the Domain Name containing the AMBIEN mark.
Accordingly, the Complainant has satisfied the second part of the test.
C. Registered and Used in Bad Faith
Once again, it is noted that the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Section 4(b) of the Policy sets out a non-exhaustive list of circumstances which point to bad faith conduct by the Respondent as follows:
(1) The circumstances indicate that the Respondent has registered the domain name primarily to sell or otherwise transfer it to the Respondent, or a competitor of the Complainant, who is owner of the trademark, for valuable consideration.
(2) The domain name has been registered to prevent the Complainant from reflecting its mark in a corresponding domain name.
(3) The domain name has been registered primarily for the purpose of disrupting the business of a competitor.
(4) The use of the domain name indicates an intention to attract Internet users to your website, for commercial gain, by creating a likelihood of confusion.
The Panel senses some unease in pigeon-holing the conduct of the Respondent precisely into one of the four exemplars set out in the Rules. Neither sub-Rule 4(b)(ii) nor 4(b)(iii) seems apposite under the circumstances. Sub-Rule 4(b)(i) comes closer to the target, but the reference to the “primary” purpose of the registration gives reason for pause, inasmuch as some use has been made of the website.
The circumstances that appear most on point are those that are described in sub-Rule 4(b)(iv). The Panel can imagine circumstances in which a user will be led to the Domain Name and enter the site upon the mistaken belief that the site is somehow connected to that of the Complainant. Even if the user, after visiting the site, realizes his error, he or she may be tempted to make use of the services that appear to be available.
Ultimately, however, as the introduction to Rule 4(b) itself makes clear, the list set out therein is only by way of example. Bad faith can be evidenced in a myriad of ways, and it is ultimately a futile task to attempt to catalogue all such indicia within the context of rules, guidelines and the like. Under the circumstances, there is a reasonable basis to conclude that the Respondent intended to exploit the rights of the Complainant in the AMBIEN mark. Such conduct constitutes bad faith within the meaning of the Rules.
Accordingly, the Panel is of the view that the Respondent has registered and used the Domain Name in bad faith.
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 <ambieneffect.com> be transferred to the Complainant.
Neil J. Wilkof
Dated: November 13, 2006