The Complainant is Sanofi-Aventis, Paris, France, represented by Bird & Bird, France.
The Respondent is Yourambien.com Private Registrant, Brea, California, United States of America.
The disputed domain name <yourambien.com> is registered with New Dream Network, LLC dba DreamHost.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2008. On August 5, 2008, the Center transmitted by email to New Dream Network, LLC dba DreamHost.com (the “Registrar') a request for registrar verification in connection with the domain name at issue. On August 11, 2008, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 18, 2008. The Center verified that the Complaint together with the amended 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 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2008.
On August 21, 2008, the Respondent sent an informal email communication to the Center which stated as follows:
“Hello
We are ready to let you transfer the domain name “www.yourambien.com”
Our Lawyer is still on vacation so there is not much we can do legally
We would need to charge you 12.95 usd for the domain name
Thank you
Jack miller”
Accordingly, the Center informed the Complainant of the Respondent's informal email communication referred to above and advised the Complainant that it could consider suspending the proceedings in order to explore settlement options between the parties. No feedback was received by the Center from the Complainant.
The Respondent having not submitted any formal Response by the due date for Response, the Center accordingly, notified the Respondent's default on September 10, 2008.
The Center appointed Marilena Oprea (the “Panel”) as the sole panelist in this matter on September 22, 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.
The language of the proceedings is English.
The Complainant is a well-known multinational pharmaceutical company, present in more than 100 countries across 5 continents. The name of the parent company adopted in August 20, 2004, is Sanofi-Aventis thus preserving the brand heritage of each of the constituent companies. After the transaction completed in 2004, the Complainant became the number 1 pharmaceutical group in Europe and also number 1 in BRIC-M (Brazil, Russian Federation, India, China and Mexico), with consolidated net sales of € 28 billion in 2007.
The Complainant holds numerous AMBIEN trademarks in more than 50 countries; a list comprising of the Complainant's trademarks has been provided as Annex 5 of the Complaint. The Complainant has among others, a United States AMBIEN trademark registration No. 1808770 registered on December 7, 1993. The Complainant benefits from a large portfolio of high-growth drugs, with eight blockbusters pharmaceuticals in 2007: Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Lantus Copaxone, and Aprovel. It enjoys established positions in seven key fast-growth therapeutic fields: cardiovascular, thrombosis, diabetes, oncology, central nervous system, internal medicine and human vaccines.
With respect to domain names, Sanofi-Aventis is the holder of many registrations incorporating the AMBIEN trademark, such as: <ambien.us>, <ambien.biz>, <ambien.net>.
The product Ambien is indicated for the short term of treatment of insomnia.
Ambien was first launched in the United States of America in 1993 and enjoys significant market share in the United States of America. The Complainant has been involved as Complainant in numerous previous WIPO UDRP cases in relation to the AMBIEN trademark (see for example, Sanofi-Aventis v. Helois Lab, WIPO Case No. D2005-0607 regarding the domain name <ambienadvisor.com>; Sanofi-Aventis v. Juntech Inc, WIPO Case No. D2005-0606 regarding the domain name <online-ambien.biz>; Sanofi-Aventis v. Gabe Smith, WIPO Case No. D2005-0605 regarding the domain name <buy-ambien-online.net>; Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660 regarding the domain names <ambien-free-shipping.com>, <ambien-overnight.info>, <ambien-overnight.org>, <ambien-pharmacie.net>, <ambien-prescription.org>, <ambien-usa.net>, <ambien-5mg.org>, <cheap-ambien.net>, <cheap-ambien-no-shipping-charge.com>, <cheap-ambien-sleeping-pill.com>, <cheapest-ambien.org>, <lowest-price-ambien.com>, <order-ambien-cheap.com> and, specially SANOFI-AVENTIS v. Health Care Marketing Company, WIPO Case No. D2007-0475 <ambienforyou.com>; Sanofi-Aventis v. Miranda Kurucescu, WIPO Case No. D2007-0941 regarding the domain name <ambienforyou.biz>; and Sanofi-Aventis v. Home, WIPO Case No. D2005-1040, regarding the domain name <ambien-for-you.com>).
On May 11, 2007, the Complainant sent a cease and desist letter to the Respondent requesting the transfer the of the disputed domain name to the Complainant. The Respondent did not reply to this letter.
The Respondent appears to be a United States of America entity (as confirmed by the Registrar in its verification reply), which is the current registrant of the disputed domain name.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy has been established in the present case, as follows:
(i) The domain name <yourambien.com> is confusingly similar to the AMBIEN trademarks;
The domain name consists of the AMBIEN trademark in addition to the generic word “your”, and the gTLD “.com”. These elements do not change the overall impression of the designation as being connected to the Complainant, as “yourambien.com” wholly incorporates the Complainant's registered mark, whereas the addition of the gTLD “.com” has no distinguishing capacity in a domain name.
(ii) The Respondent should be considered as having no right or legitimate interest in respect of the disputed domain name;
The Complainant has rights in the AMBIEN trademark, which predate the Respondent's registration of the disputed domain name. There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant's trademark. The Respondent did nothing to disclaim any relationship with the trademark owner on the web site at the disputed domain name. Further, the Respondent's use of the disputed domain name does not satisfy the test for bona fide use as the Respondent's website leads to an on-line pharmacy and promote medical products manufactured by competitors of the Complainant which directly compete with the Ambien product. Also, the Respondent has registered this domain name with the intention to divert consumers and to prevent the Complainant from reflecting its trademark in a corresponding domain name.
(iii) The domain name was registered and is being used in bad faith.
The Respondent has no prior rights and no authorization given by the Complainant concerning the AMBIEN trademarks. The Respondent has registered the domain name with full knowledge of the goodwill and reputation of the Complainant's Ambien product. The Respondent has registered the domain name in order to prevent the Complainant from reflecting its mark in the corresponding domain name. This is an opportunistic act, which seeks to disrupt the Complainant's business. The Respondent misleads the Internet users as they will assume that the disputed domain name is the Complainant's official web site.
The Respondent did not reply to the Complainant's contentions. As already described above, the Respondent sent an informal email communication to the Center, which contained no substantive argument or evidence and did not reply to the Complainant's contentions. Although, to a certain extend, it can be considered as a kind of recognition of the fact that it has no rights over the disputed domain name (namely the line “we are ready to let you transfer the domain name “www.yourambien.com”), the Panel deems it more appropriate to treat the Respondent as having filed no response and to further proceed to analyze the three elements of the Policy.
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”.
Pursuant to the requirements of paragraph 4(a) of the Policy, the Complainant must demonstrate that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. Nonetheless, before entering in the said analysis, the Panel deems necessary to clarify the issue regarding the appropriate identity of the Respondent.
An initial search of the Whois database by the Complainant showed the apparent registrant to be “DreamHost Web Hosting”, which is a service that allows registrants to protect their identity. The Registrar subsequently provided the Center with an “identity” of the registrant “yourambien.com Private Registrant” having however, the same physical and email address as the initial registrant. In any case, these details were forwarded to the Complainant with an invitation to amend the Complaint. Where information is available to the Center through either a communication from the Registrar or a change in the registration information, the Center generally requests that the Complainant amend its Complaint, mentioning that such amendment is commonly made by the simple addition of the newly identified registrant to the Complaint. Consequently, the amended Complaint added Yourambien.com Private Registrant as the Respondent.
The Panel must therefore identify the appropriate Respondent or Respondents in this case. This leads to the question, addressed by previous WIPO panels as well, whether a privacy service provider should be considered as the Respondent or one of the Respondents in the administrative procedure, should the identity of the real registrant be disclosed before the procedure starts. In such previous cases panels have decided either 1) treated both the initially listed registrant (privacy service provider) and the subsequently disclosed registrant as the Respondent (Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642) or 2) elected to disregard the privacy service provider entirely and to analyze only the acts of the underlying registrant (Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438).
Paragraph 1 of the Rules defines “Respondent” as the holder of a domain-name registration against which a complaint is initiated. As the Registrar provided the information regarding the disputed domain name registrant before the procedure started (see also WIPO Case No. D2007-1438 above), and Yourambien.com Private Registrant is the domain name holder currently listed with the Whois database, the Panel elects to treat Yourambien.com Private Registrant as the proper Respondent in this case.
The Center notified the Complaint to the registrant, Yourambien.com Private Registrant, via the contact details provided, namely an email copy and a hard copy of the Complaint sent on August 20, 2008 to its physical address.
Accordingly, the Panel is satisfied that the Complaint was served to the registrant of the disputed domain name.
There are two requirements that a complainant must establish under this paragraph, namely: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
The Complainant holds numerous trademark registrations worldwide for the trademarks AMBIEN filed since 1991.
The disputed domain name was registered on March 19, 2007.
Accordingly, the Complainant has trademark rights and the trademarks predate the domain name.
As found in previous cases, e.g. Sanofi-Aventis v. Home, WIPO Case No. D2005-1040 “[t]he Panel finds that adding generic words to a domain name such as “for” and “you” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “for” and “you” do not serve any distinguishing function but rather describe the nature of the services offered on the relevant website.”
The Panel agrees with the previous UDRP panels and concludes that adding the generic term “your” to a domain name incorporating entirely a trademark, does not prevent the domain name from being confusingly similar to the Complainant's registered trademarks, therefore <yourambien.com> domain name, after disregarding the “.com” generic Top Level Domain, is confusingly similar to the Complainant's AMBIEN trademarks.
As per the above mentioned, the Panel finds that the Complainant has established the first element of the Policy, namely that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
The Complainant has provided a prima facie showing that it has had no relationship with the Respondent and has not granted the Respondent any right to use its trademarks. Thus, the burden of proof on this element shifts to the Respondent; either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or by providing other relevant acceptable grounds.
The Respondent failed to submit any substantive response. As prior WIPO UDRP panels have found (see for example, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001), the silence of a respondent might support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name.
Furthermore, there is no evidence to suggest that the Respondent has made a bona fide use of the disputed domain name, or been known by this name, or is making any legitimate noncommercial or fair use of the domain name. In fact, the Respondent uses the domain name for an on-line pharmacy to promote medical products manufactured by competitors of the Complainant, either presented as generics of the Ambien product, or other products.
For these reasons, the Panel finds that the Complainant has established the second element of the Policy, namely that the Respondent has no rights or legitimate interests in respect of the domain name.
There is no doubt in this case that the domain name was initially registered with the Complainant's trademarks and corresponding product in mind as the domain name incorporates entirely the Complainant's mark AMBIEN. Moreover, the domain name leads to a website consisting of an on-line pharmacy. Indeed, Internet users may be led to believe that this is the Complainant's official web site.
Paragraph 4(b)(iv) of the Policy lists as one of the typical situations which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith:
“by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent used the Complainant's widely-known trademark in the pharmaceutical industry to attract Internet users to its website for commercial gain.
Moreover, at the time the Complaint was filed and at the time of this Decision, the domain name resolved to a page that offers visitors “generics of AMBIEN”, as well as other competing products. As previous panels have stated the “registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”- Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
The Respondent has no rights or any authorization whatsoever from the Complainant with regard to its AMBIEN trademarks.
Further, the Respondent has not replied to the Complainant's cease and desist letter, has not contested any of the allegations made by the Complainant in the Complaint, and did not provide any evidence of any legitimate commercial, or fair use of the disputed domain name.
For all these reasons, the Panel finds that the Complainant has established the third element of the Policy, namely that the disputed domain name was registered and is being used 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, <yourambien.com> be transferred to the Complainant.
Marilena Oprea
Sole Panelist
Dated: October 6, 2008