WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Yellow Fish Designs
Case No. D2007-1767
1. The Parties
The Complainant is Sanofi-Aventis of France, represented by Bird & Bird Solicitors, France.
The Respondent is Yellow Fish Designs of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <ambienrx.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 3, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On the same day GoDaddy.com, Inc. 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 the Respondent of the Complaint, and the proceedings commenced on December 11, 2007. The Center also obtained the Registrar’s assurance that the disputed domain will remain locked for the duration of these proceedings if they have not concluded before the domain name registration expires on February 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2007. The Respondent did not submit any formal response (although its Administrative Contact, Mr. Gary Tharaldson, did acknowledge receipt of the Center’s communications). The Center duly notified the Respondent’s default on January 4, 2008.
The Center appointed Philip N. Argy as the sole panelist in this matter on January 15, 2008. 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 following facts, taken from the Complaint, are uncontested.
The Complainant was formed during 2004 as a result of a merger between the two French companies AVENTIS SA and SANOFI-SYNTHELABO. Completion of the transaction created the no. 1 pharmaceutical group in Europe (no. 3 in the world), with 2006 consolidated sales of € 284 billion in the core business and a strong direct presence in all major world markets
The new group benefits from a large portfolio of high-growth drugs, with 8 blockbuster pharmaceuticals in 2005, one of which is Ambien, an anti-insomnia drug which enjoys a firmly established position in the fast-growth therapeutic central nervous system field.
Sanofi-Aventis with 16,000 employees is a major player on the pharmaceutical market in the United States of America where the Respondent is located.
Ambien was launched in the United States of America in 1993. In 1994, “AMBIEN was considered as the market leader with 27% of total prescriptions”. According to a study carried out by IMS Health in December 2003, it appears that Ambien remains the leading prescription sleep aid in the United States of America. Since 20% to 30% of the population suffers from insomnia and Ambien is the leading prescription sleep aid, there is no doubt that AMBIEN is very well-known, both by consumers who remain awake and those who now enjoy their sleep. Sales of Ambien were up by 21% in 2004 and the product enjoys the number one position on the hypnotics market.
The Complainant owns a large number of AMBIEN trademarks in more than 50 countries including the United States of America. The Complainant and/or the US affiliate of Complainant is also the registrant of several domain names, including <ambien.fr>; <ambien.us>; <ambien.co.uk>; <ambien.net>; and <ambien.biz>.
5. Parties’ Contentions
The Complainant’s submissions and contentions are quite extensive and thorough, and supported by a considerable volume of annexed evidence, but given the lack of a Response, they can be summarized for present purposes as follows:
(i) The domain name <ambienrx.net> is confusingly similar to the AMBIEN trademark in which the Complainant has rights:
The Respondent’s registration consists of the use of the Complainant’s trademark in addition to the “Rx” symbol and the gTLD “.net”. The Rx symbol is internationally recognized as signifying a prescription medication and/or a place where they are dispensed, such as a pharmacy. The impression given by the domain name is therefore that an Internet user can obtain the Complainant’s product, which has the quality of being a prescription drug, at the Respondent’s website.
The domain name <ambienrx.net> wholly incorporates the Complainant’s registered trademark which the Complainant submits is sufficient to establish confusing similarity for the purpose of the Policy despite the addition of the letters “rx” to such mark. The Complainant says that the mere addition of “rx” to its registered trademark is insufficient to avoid confusing similarity, and it cites many previous UDRP decisions which have upheld this submission. Persons accessing the domain name would be bound to think that the domain name has a connection with the Complainant. Furthermore, the addition of the gTLD “.net” has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name. Because of the identity between the trademark AMBIEN and the disputed domain name, the Complainant says that there is a high risk of confusion, since a consumer may think that the domain name directly refers to its product.
In short, the Complainant strongly argues that the disputed domain name <ambienrx.net> is confusingly similar to the Complainant’s AMBIEN trademark.
(ii) The Respondent has no right or legitimate interest in respect of the domain name <ambienrx.net >
The Complainant’s applications/registrations for the AMBIEN trademark precede the Respondent’s registration of the disputed domain name. The Complainant’s AMBIEN trademark is used in more than 50 countries, including the United States of America, where the Respondent is located.
There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name embodying the Complainant’s trademark AMBIEN whether or not in conjunction with the Rx symbol.
There is no doubt that the Respondent is aware that AMBIEN corresponds to a trademarked medical product - the disputed domain name resolves to an active website where some information about the Complainant’s Ambien product is provided in conjunction with links to several on-line pharmacies where Ambien products or counterfeit products or placebo products and other competitor products are offered for (illegal) sale.
(iii) The domain name was registered and is being used in bad faith
The obvious bad faith of the Respondent results from the following elements:
- the Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademark;
- the Respondent’s awareness that Ambien is an anti-insomnia drug;
- the Respondent uses the domain name to attract Internet users for commercial gain.
The Respondent would not have registered the disputed domain name if it was not aware that Ambien is an anti-insomnia drug enjoying strong commercial success on the market. It is clear that the Respondent has registered the disputed domain name with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name. The Respondent has not made bona fide use of the disputed domain name because of its lack of authorization to use the AMBIEN trademark and sell the Ambien medicine.
The Respondent registered the disputed domain name on February 1, 2007.
Whilst there was no formal response to the Complaint filed by the Respondent (in the form required by paragraph 5(b) of the Rules), there were certain email communications sent by the Respondent’s Administrative Contact, Mr. Gary Tharaldson (who also described himself as “Director, SOMDJobs.com”).
First, on December 6, 2007, in an email to both the Center and the Complainant’s representative, Mr. Tharaldson acknowledged receipt of the Complaint and said the following:
“To all concerned, I’ve said it a thousand times now … give me the new owners contact info so I can enter it into GoDaddy and I will transfer the account.
I don’t want any trouble!”
Secondly, in reply to the Center’s acknowledgement of the December 6 email, Mr. Tharaldson emailed both the Center and the Complainant’s representative on December 10, 2007 in the following terms, apparently reflecting some change of heart:
“I’m not giving up Ambirx.net unless I’m ordered to do so. I got your complaint and it’s crap.
I CAN own this site! If you want it so bad, you’ll have to make me an offer.
In the mean time, my site will remain a site that reports the “side-effects” of Ambien.
Good day, and I anxiously await the WIPO decision.”
6. Discussion and Findings
Although the Complainant’s submissions are formally uncontested, it has the burden of demonstrating that the requirements of paragraph 4(a) of the Policy are made out, and particularly in light of the email communications referred to in section 5, the Panel believes it proper to consider the submissions, and the evidence, and to make formal findings. Also, under paragraphs 10 and 15(a) of the Rules, the Panel regards this as desirable a desirable course to take in any event.
A. Identical or Confusingly Similar
The Complainant has extensively demonstrated its rights in the trademark AMBIEN for its anti-insomnia medicine. In the Panel’s view, a domain name comprising the trademark of well known medicine as its root, combined with “rx”, is confusingly similar to the trademark. According to MedicineNet.com (http://www.medterms.com/script/main/art.asp?articlekey=7934):
“The symbol “Rx” is usually said to stand for the Latin word “recipe” meaning “to take.” It is customarily part of the superscription (heading) of a prescription.”
The Complainant’s contentions, supported by extensive authority, are quite sound in this regard. As this Panel also noted in Wal-Mart Stores, Inc. v. xc2, WIPO Case No. D2006-0811, confusing similarity is not tested by reference to the content of the website to which the disputed domain resolves, but by reference to the inherent likelihood of the disputed domain name to confuse Internet users as to the trade origins of any products that might be found at a site to which the domain resolves. The present case is an example of such a situation – the confusing similarity is created by the use of ‘rx’ in conjunction with the Complainant’s trademark, which removes any doubt a consumer may have had about the trade origins of the products to be offered on any site to which such a link might lead.
The Panel has no hesitation in finding the disputed domain to be confusingly similar to the Complainant’s well established trademark AMBIEN.
B. Rights or Legitimate Interests
The Respondent has not formally asserted any basis for its use of AMBIEN in the disputed domain name. However, having noted in particular the second email set out in section 5.B., the Panel observes that the disputed domain name at the time of writing this decision resolves to a site that commences with the following text:
“THIS WEBSITE IS NOT AFFILIATED WITH SANOFI-AVENTIS OR ANY OTHER PHARMICUTICAL [sic] COMPANY.
THE SOLE PURPOSE OF THIS WEBSITE IS TO MAKE THE PUBLIC AWARE OF SIDE-EFFECTS FROM THE DRUG – AMBIEN”
Although this might appear designed to provide some legitimacy to the Respondent’s use of the AMBIEN trademark, it is clear from the documentary evidence submitted by Complainant that, apart from the fact that the present text appears to be quite recent, at the time the Complaint was filed, and for some time prior to that, the website had an entirely different complexion: namely, to sell Ambien products or competitive products. For the reasons advanced by the Complainant, the Panel comfortably concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The change to the Respondent’s website after this proceeding commenced, to assume the mantle of a legitimate critique site about side effects of Complainant’s product, gives rise to a strong inference of a lack of bona fides. As the Complainant amply demonstrates by evidence submitted with the Complaint, the Respondent’s website at time of Complaint was very clearly of quite a different complexion, and plainly dedicated to the sale of anti-insomnia preparations both under the Complainant’s trademark and also those described as “more POWERFUL than AMBIEN”.
Use of the domain name <ambienrx.net > to redirect Internet users to on-line pharmacies selling pharmaceuticals such as genuine or more usually counterfeit Ambien, without requiring physical examination by a doctor, is potentially harmful to public health, especially to Internet users who purchase Ambien products under the mistaken impression that they are dealing with the Complainant. Even if those users have been examined and have been prescribed Ambien by their physician, it is just as likely that the user will be directed to a site selling counterfeit or competitive products. This public detriment is properly to be taken into account in assessing the Respondent’s bona fides because in this Panel’s view such a cavalier disregard for public health is strong evidence of bad faith.
Previous WIPO panellists have stated that selling or purchasing prescription medication without any doctor’s examination or prescription, and consequently in violation of Public health regulations, can constitute evidence of the respondent’s bad faith. For example, in Lilly ICOS LLC v. Tudor Burden, WIPO Case No. D2004-0794, the panel took this view and noted:
“Complainant’s Cialis product is available only with a physician’s prescription, and is manufactured, labelled, and sold in strict compliance with US Food and Drug Administration (FDA) and other health authority laws and regulations…[t]he products sold on Respondent’s website are…illegal and potentially dangerous”.
The change to the nature of the website to which the disputed domain name resolves, which appears to have been made after the initiation of this proceeding, and in the face of the Complainant’s explicit observations to the contrary in the Complaint, support the Panels finding that the disputed domain name is being used in bad faith by the Respondent. The registration was plainly in bad faith given the use to which the domain name was initially put, and the Respondent’s obvious familiarity with the Complainant’s product.
Accordingly, the Panel formally finds that the disputed domain name was registered and is being used in bad faith.
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ambienrx.net> be transferred to the Complainant.
Philip N. Argy
Dated: January 23, 2008