WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Inet Bulgaria
Case No. D2007-0672
1. The Parties
The Complainant is Sanofi-Aventis, Gentilly, France, represented by Bird & Bird Solicitors, France.
The Respondent is Inet Bulgaria, Bucharest, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <ambien-web.com> is registered with Gandi Sarl.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2007. On May 7, 2007, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On May 9, 2007, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2007.
The Center appointed Gary J. Nelson as the sole panelist in this matter on June 18, 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.
4. Factual Background
Complainant owns trademark registrations for the AMBIEN trademark in over 50 countries throughout the world, including Bulgaria.
Respondent registered the <ambien-web.com> after Complainant registered the AMBIEN trademark.
5. Parties’ Contentions
Complainant makes the following allegations:
Complainant is a well-known pharmaceutical company established in 2004 when two other well-known pharmaceutical companies merged, Sanofi-Synthelabo and Aventis. Today, the Complainant is the largest pharmaceutical group in Europe and the third largest in the world, with net sales of EUR 27,311 billion in 2005 alone.
Complainant is a multi-national company with a presence in more than 100 countries across five continents. Complainant controls a large portfolio of high growth drugs with at least eight blockbuster pharmaceutical sellers, such as Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. Complainant enjoys firmly established positions in seven key therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
Complainant employs approximately 97,181 people worldwide, with a sales force of 35,030 and a research staff of 17,600 working on 127 development projects.
Complainant’s Ambien product is a short-term solution for the treatment of insomnia. The Ambien product is the leading prescription sleep aid in the United States of America, and is a well-known prescription sleep aid.
Complainant owns trademark rights in AMBIEN for pharmaceutical products. Complainant has prior rights in the AMBIEN trademark which precedes Respondent’s registration of the <ambien-web.com> domain name.
The <ambien-web.com> domain name is confusingly similar to Complainant’s AMBIEN trademark.
Respondent has no right or legitimate interest in the <ambien-web.com> domain name, and Complainant has not licensed, consented or granted any right in the AMBIEN trademark to Respondent.
Respondent registered and is using the <ambien-web.com> domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of numerous trademark registrations and pending applications for AMBIEN throughout the world. Therefore, Complainant has established rights in this trademark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s <ambien-web.com> domain name is confusingly similar to Complainant’s AMBIEN trademark because it incorporates the entirety of Complainant’s trademark and merely adds the generic phrase “web,” a hyphen, and the generic top level “.com” domain name. Neither the addition of a generic phrase to another’s trademark nor a hyphen nor the addition of a generic top level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4 (a)(i) is satisfied).
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the contested domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000) (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <ambien-web.com> domain name, or that it is commonly known by any name consisting of, or incorporating the name, “Ambien,” or “Ambien-Web.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the <ambien-web.com> domain name predates Complainant’s rights in the AMBIEN trademark.
In regard to the <ambien-web.com> domain name, Respondent is currently operating a website featuring click-through opportunities for other pharmaceutical products. Because Complainant also promotes and distributes pharmaceutical products, the Panel concludes that Respondent is using the contested domain name in association with a website that competes with Complainant’s business interests. Furthermore, it is likely Respondent is receiving click-through fees each time an Internet user accesses the website at “www.ambien-web.com”, clicks on “order” and then subsequently clicks-through to any of the numerous options available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no legitimate right or interest in the <ambien-web.com> domain name.
Accordingly, the Panel concludes Respondent is not using the <ambien.com> domain name in association with a bona fide offering of goods and service pursuant to Policy, paragraph 4(c)(iii). See Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).
Complainant has proven the requirement of Policy, paragraph (a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
Respondent is using Complainant’s AMBIEN trademark to attract Internet User to a website associated with the <ambien-web.com> domain name. This website features click-through opportunities to products that compete with the products sold by Complainant under its AMBIEN trademark. This is sufficient evidence of bad faith registration and use. . See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
The Panel also finds that Respondent likely chose the <ambien-web.com> domain name with full knowledge of Complainant’s rights in the AMBIEN trademark. Respondent’s actual or constructive awareness of Complainant’s AMBIEN trademark may be inferred because the mark was registered in the United States of America and in Bulgaria, where Respondent is located, prior to Respondent’s registration of the contested domain name, and since the AMBIEN trademark is well-known in the pharmaceutical industry. See Kraft Foods (Norway) v. Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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-web.com> be transferred to the Complainant.
Gary J. Nelson
Dated: June 28, 2007