WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SANOFI-AVENTIS v. Jason Trevenio
Case No. D2007-0648
1. The Parties
The Complainant is SANOFI-AVENTIS of Paris, France, represented by Selarl Marchais De Candé of Paris, France.
The Respondent is Jason Trevenio of New York, United States of America.
2. The Domain Names and Registrar
All of the disputed domain names:
are registered with Abacus America Inc. dba Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2007.
On May 2, 2007, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain names at issue, all of which were specified in the request. On May 3, 2007, Aplus.Net Internet Services, a division of Abacus America Inc. dba Names4Ever, transmitted by email to the Center its response to the Center’s request, objecting to the Center having made its enquiry by email and insisting that such enquiries be made by courier or post.
In response to the Center’s question: “May we kindly request you to confirm that the specified domain names are registered with you”, Aplus.Net Internet Services stated: “The domain names are associated with an Aplus reseller account”. It further stated that “The Respondent is not an Aplus account holder”, confirmed that the Respondent is listed as the registrant of the domain name <ambienisdangerous.com> and provided the contact details for the Respondent in connection with that domain name. Apart from the reference quoted above to “The domain names” (plural), Aplus.Net Internet Services made no mention of any of the other domain names to which the Center’s enquiry was specifically directed.
On May 16, 2007, faced with this singularly unhelpful response from the Registrar, the Center checked the Whois data for each of the disputed domain names from “www.betterwhois.com”, which confirmed in each case that the registrar of record is Abacus America Inc. dba Names4Ever and that the registrant name and contact details are those of the Respondent.
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”).
Although there is no evidence that the Respondent received actual notice of the Complaint, either physically or electronically, nevertheless the Panel is satisfied that the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice of the Complaint to the Respondent. Accordingly, pursuant to paragraph 2(f)(iii) of the Rules, notice of the Complaint is deemed to have been given to the Respondent on May 18, 2007, being the date on which the Center’s email communications were transmitted to him.
The Panel is therefore satisfied that the Center formally notified the Respondent of the Complaint in accordance with the Rules, paragraphs 2(a) and 4(a), and the proceedings commenced on May 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2007.
The Center appointed Alan L. Limbury as the sole panelist in this matter on June 20, 2007. 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.
On July 4, 2007, the Center notified the parties that the Panel, on its own motion pursuant to the Rules, paragraph 10(c), had extended the time for the provision of its decision to the Center until July 11, 2007.
4. Factual Background
The Complainant is the largest pharmaceutical group in Europe and the third largest in the world, with operations in more than 100 countries. Amongst its blockbuster pharmaceuticals is a drug for the treatment of insomnia, sold under the Complainant’s trademark AMBIEN. That mark has been registered by the Complainant or its predecessors in numerous countries, the earliest registration being that in the United Kingdom, No.1,466,136, since May 31, 1991, for pharmaceutical preparations and substances in Class 5. The Complainant is also the registrant of numerous “ambien” domain names in the gTLD and ccTLD name spaces.
The disputed domain names (set out below in abbreviated form) were registered on the following dates:
April 17, 2006: ambienrape.com/net/org and ambien-rape.com/net/org.
April 24, 2006: ambienwatch.com/net/org.
September 7, 2006: ambienisdangerous.com and ambiensex.com/net.
Each of the domain names leads to a slightly different parking home page. Each home page offers the relevant domain name for sale for US$125 and contains links to other websites offering for sale various goods or services, some of which comprise therapeutic products. The websites reached via the “www.ambiensex.com” and “.org” home pages contain links to pornographic websites.
5. Parties’ Contentions
The Complainant seeks the transfer to it of all the domain names. It contends that each is “identical or similar” to trademarks and domain names in which the Complainant has rights. They entirely reproduce the AMBIEN trademark. The added terms “isdangerous”, “sex”, “rape” and “watch” in the secondary position after the trademark and before the gTLD are used descriptively, are of secondary importance and are insufficient to suppress the likelihood of confusion stemming from the use of the word “ambien”, the main and attractive word.
Specifically, the Complainant contends that case law has held that confusing similarity is established when a domain name wholly incorporates a complainant’s trademark in its entirety despite the addition of other words: Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (<okidataparts.com>); that where a domain name consists of a registered trademark followed by a generic term, the latter is not a distinguishing feature and does not lessen the likelihood of confusion with a trade mark: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 (<nasdaqstockexchanges.com> and others); that the addition of descriptive terms does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademarks: Aventis, Aventis Pharma S.A. v. John Smith, WIPO Case No. D2004-0624 (<aventisfoundationlottery.com> and others); and that confusingly similarity has been found even though, arguably, no-one is likely to believe that companies of the standing of the Complainant are in any way associated with websites which incorporate their principal trademarks in conjunction with the word “sex”: General Electric Company v. Basalt Management, WIPO Case No. D2000-0925 (<generalelectricsex.com>) and Frog Planete v. Eskiv Alex, WIPO Case No. D2005-0446 (<allopass-sex.com>).
The Complainant says the Respondent has no rights or legitimate interests in respect of the domain names because the websites are parking websites leading to others offering goods and services for sale; the name of the Respondent is Jason Trevenio; there is no relationship between the parties and the Complainant has not licensed or otherwise permitted the Respondent to apply for any domain name incorporating the AMBIEN mark.
The Complainant says the domain names were registered and are being used in bad faith. As to registration, before he registered them, the Respondent must have known of the drug named Ambien and of the Complainant’s “ambient” domain names and websites; and he registered twelve domain names, all comprising the AMBIEN trademark together with generic terms. As to use, all the domain names lead to parking sites which offer the domain name for sale at US$125 and also lead to other sites offering goods or services for sale. Such use generates pay-per-click revenue for the Respondent. This falls within paragraph 4(b)(iv) of the Policy.
The Complainant also points to the pornographic sites as demonstrating use in bad faith and says the only purpose of the domain names is to disrupt the business of a competitor.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name 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 domain name has been registered and is being used in bad faith.
The Respondent having failed to file a Response, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
The Complainant has registered trademark rights in the word “ambien”.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The top level domains “.com”, “.net” and “org” are to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Likewise the content of the Respondent’s websites must be disregarded: A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900.
None of the domain names at issue here is identical to the Complainant’s mark.
Although the Complainant has contended that the domain names are “similar” to its mark, the relevant test is whether the domain names are “confusingly similar”. It is necessary to show that the public is likely to be confused as to trade origin: America Online, Inc v. Jonathan Investments Inc, and AOLNEWS.COM, WIPO Case No. D2001-0918.
The question has been framed as follows: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will believe that the domain name is associated in some way with the Complainant?”: America Online, Inc v. Jonathan Investments Inc, and AOLNEWS.COM, WIPO Case No. D2001-0918.
This formulation seems more appropriate to a test of misleading similarity than to a test of confusing similarity, since confusion in this context, in the sense of bewilderment or failing to distinguish between things, is a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. A more accurate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”
As regards the domain names comprising the Complainant’s mark AMBIEN followed by “sex”, “rape” (with and without the inconsequential hyphen) and “watch”, none of those descriptive words sufficiently distinguishes the domain name from the mark as to avoid likely confusion. In this Panel’s view people are likely to wonder whether those domain names are associated in some way with the Complainant. People unfamiliar with the indications for which the drug is prescribed or recommended are likely to wonder whether it is a treatment for sexual dysfunction or to be taken by women who have been raped, to avoid pregnancy. People are likely to wonder whether <ambienwatch.com> is for feedback to the Complainant as to the effects of the drug, although some might also wonder whether this may be associated with an unrelated “consumer watchdog” involved in monitoring the drug.
This Panel concludes that all these domain names are confusingly similar to the Complainant’s mark. The Complainant has established this element of its case in relation to these domain names.
As regards the domain name <ambienisdangerous.com>, the domain name itself conveys a message highly critical of the drug. Are people likely to wonder whether this domain name is associated with the Complainant?
Numerous cases have held that a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy: e.g. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Nikon, Inc. and Nikon Corporation v. Technilab., Inc, WIPO Case No. D2000-1774; Lancôme Parfums et Beauté & Cie v. SL, Proteccion de Dominios, WIPO Case No. D2001-0910 and Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101. Some panels have also recognized that even in such situations “there may be some cases where a domain name which incorporates in full another party’s registered trademark will not be confusingly similar to that trademark because sufficient additional letters or numbers have been added to the registered mark to remove any confusion”: The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
None of the cases on which the Complainant relies addressed the situation in which the descriptive words appended to the trademark conveyed an explicit or implied repudiation of any association with the trade mark owner. The rationale of those cases, however, in accord with the passage just quoted from The Ritz Hotel case, recognizes that the relevant question is whether the appended words are “distinguishing features [which] change the likelihood of confusion”: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 or whether those words “have such an influence upon the overall impression [as to] exclude the likelihood of confusion”: Aventis, Aventis Pharma S.A. v. John Smith, WIPO Case No. D2004-0624. The same approach was adopted in the recent case of Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., WIPO Case No. D2007-0678. See also Sanofi-aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769: “the addition of the descriptive word “sleep” to the [AMBIEN] mark does nothing to dispel a connection in the public mind between the pharmaceutical name and its owner, the Complainant”.
Consistent with this approach, it has been held that:
“Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with … language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark”: Lockheed Martin v. Dan Parisi, WIPO Case No. D2000-1015, followed on this point in Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC, WIPO Case No. D2001-1121.
Most of the debate in relation to the “[trademark] sucks.com” and similar cases has been over whether the pejorative term appended to the mark sufficiently distinguishes the domain name from the mark as to dispel the likelihood of confusion.
What appears to be the majority position in this debate is reflected in Societé Air France v. MSA, Inc. WIPO Case No. D2007-0143, in relation to the domain name <airfrancesuck.com>, in which the learned panel said:
“… the key point is that, regardless of the meaning of “suck”, the distinctive element of the Domain Name is the trademark AIR FRANCE, which will be recognized by search engines as such. In the context of the Internet, therefore, which is where Domain Names have use and value, it is quite clear to the Panel that the Domain Name <airfrancesuck.com> will benefit from online searches for “Air France” because of the public recognition of the Complainant’s name and mark. And if search engines can be confused by such uses – and they may well disregard non-distinctive, or descriptive, suffices [sic] such as “suck” or “flights” (to use another example quoted by the Complainant) then, in this context, the Panel considers that it is eminently reasonable to argue that the Domain Name is confusingly similar to the Complainant’s trademark. Indeed, the evidence of the manner in which the Domain Name is being used serves to confirm that this Domain Name has been adopted by the Respondent with the intention to benefit from online confusion which can arise from the incorporation of the AIR FRANCE mark as the leading and distinctive element of the Domain Name, irrespective of whether or not the English meaning of the appended word “suck” is intelligible to the human reader. The Panel therefore finds that, for the purposes of the Policy, the contested Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and the requirements of Paragraph 4(a)(i) of the Policy are met”.
The facts of this case are strikingly similar. It is unlikely that people will type “ambienisdangerous” into their browsers but it is likely that they will type “ambien” and that search engines would fail to distinguish between “ambien” and “ambienisdangerous” when presenting the search results. But in this Panel’s view, confusion of search engines is not necessarily the same as confusion of people.
In determining whether the domain name <ambienisdangerous.com> is confusingly similar to the AMBIEN trademark, the relevant question in this Panel’s view is whether, as a result of such a search, people presented with the domain name by way of a link to its corresponding web site are likely to wonder whether the domain name is associated in some way with the Complainant.
In this Panel’s opinion, the fact that a search engine is “confused” in the sense that it picks up “ambienisdangerous” in a search initiated by the word “ambien” is irrelevant. In the view of this Panel, in this particular case, people are not likely to be confused by the inclusion of “ambienisdangerous.com” in the search results, for the very reason that the domain name itself conveys to people an intelligible message inconsistent with an association with the Complainant. To people, as distinct from search engines, the meaning of the words appended to the trademark is important and relevant in determining whether confusing similarity exists.
Unlike those “sucks” cases in which confusing similarity has been found, such as Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC, WIPO Case No. D2001-1121, Berlitz Investment Corp v. Stefan Tinculesue, WIPO Case No. D2003-0465, and Koninklijke Philips Electronic N.V v. In Seo Kim, WIPO Case No. D2001-1195, the words “is dangerous” have no slang meaning which might not be intelligible to people whose mother tongue is not English. A similar conclusion was reached in relation to the appended word “fraud” in The Royal Bank of Scotland Group plc v. natwestfraud.com and Umang Malhotra, WIPO Case No. D2001-0212, followed in FMR Corp. v. Native American Warrior Society, Lamar Sneed, Lamar Sneede, WIPO Case No. D2004-0978 in relation to the appended words “fraud” and “theft”, in which the learned panel said: “a company is not likely to use as the URL of its website a domain name that communicates an inherently and necessarily negative message about the company”.
The ordinary meaning of the words “is dangerous” is plain. There is no room in this case to argue that those words might be understood as a banal and meaningless appendage to the well-known trademark and therefore lead people to wonder whether the domain name is associated with the Complainant in some way, as was found in Société Accor v. M. Philippe Hartmann, WIPO Case No. D2001-0007 (finding <accorsucks.com> confusingly similar to ACCOR). In Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812 (finding <boycottwalmart.com> not confusingly similar to WALMART) the clearly distinguishing term was the prefix, not, as here, the suffix to the trademark.
As in America Online, Inc v. Jonathan Investments Inc, and AOLNEWS.COM, WIPO Case No. D2001-0918 (finding <fucknetscape.com> not confusingly similar to NETSCAPE), even though in the present case the distinguishing term is not the prefix but the suffix of the well-know trademark AMBIEN, it is in this Panel’s view inconceivable that people would wonder whether the Complainant’s blockbuster drug Ambien is associated with the domain name <ambienisdangerous.com>.
Accordingly the Panel finds that the Complainant has failed to establish that the domain name <ambienisdangerous.com> is confusingly similar to its AMBIEN mark.
What follows applies only to the domain names other than <ambienisdangerous.com> (“the remaining domain names”).
B. Rights or Legitimate Interests
The Complainant’s assertions suffice to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain names on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in those names: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
In the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interests in the domain names, for the reasons given by the Complainant.
The Complainant has established this element as regards the remaining domain names.
C. Registered and Used in Bad Faith
There is no direct evidence before the Panel as to the Respondent’s knowledge of the AMBIEN mark, nor of his intent when the domain names were registered in 2006. However, the only evidence of use of the domain names before the Panel leads to the conclusion that people becoming aware of the domain names, via search engines for example, are likely to be confused into wondering whether the Respondent’s websites are associated with the Complainant. The fact that the website content might dispel such confusion is irrelevant because by the time the person visits the site the “initial interest confusion” has already been created.
The sponsored links available at the Respondent’s websites are of the kind from which it may be expected that the Respondent makes commercial gain. Accordingly, in the absence of a Response, the Panel finds that Respondent is using the domain names intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the affiliation of the Respondent’s web sites.
Under the Policy, paragraph 4(b)(iv), this finding is evidence of both bad faith registration and bad faith use. Accordingly, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.
The Complainant has established this element as regards the remaining domain names.
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-rape.com>, <ambienrape.com>, <ambien-rape.net>, <ambienrape.net>, <ambien-rape.org>, <ambienrape.org>, <ambiensex.com>, <ambiensex.net>, <ambienwatch.com>, <ambienwatch.net> and <ambienwatch.org> be transferred to the Complainant.
For all the foregoing reasons, the Complaint in relation to the domain name <ambienisdangerous.com> is denied.
Alan L. Limbury
Dated: July 11, 2007