The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Evangelos Sopikiotis of Astoria, New York, United States of America.
The disputed domain names <amazing-ambien.com>, <ambien-drug-info.com> and <ambienorder.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2008. On September 26, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On September 26, 2008, 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 October 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2008. On October 2, 2008, the Center received by email an informal reply from the Respondent, and on October 3, 2008, the Center invited the parties to consider suspending the UDRP proceeding and exploring a possible settlement of the dispute. The Center did not receive any request of suspension from the parties, thus the proceeding continued under the relevant deadlines. The Respondent did not submit a formal Response to the Complaint, and the Center notified the Respondent's default on October 23, 2008.
The Center appointed Edoardo Fano as the sole panelist in this matter on November 3, 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.
As no formal Response was submitted, the Panel has decided to take the informal reply of the Respondent into consideration.
The language of the proceeding is English, being the language of the Registration Agreement.
The Complainant is Sanofi-aventis, one of the world's most important pharmaceutical groups.
Among others, the Complainant is the owner of the following registrations for the trademark AMBIEN in respect of pharmaceutical products:
- International Registration No. 605762, dating back to 1993;
- Community Registration No. 003991999, dating back to 2005;
- French Registration No. 93456039, dating back to 1993;
- United Kingdom Registration No. 1466136, dating back to 1991;
- Irish Registration No. 149250, dating back to 1992;
- United States Registration No. 1808770, dating back to 1993;
- Australian Registration No. 761307, dating back to 1998;
- Chilean Registration No. 521911, dating back to 1998.
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Complainant also owns several domain names for the denomination AMBIEN, having both generic and country code TLDs.
The Respondent's domain names <amazing-ambien.com>, <ambien-drug-info.com> and <ambienorder.com> were respectively registered on December 16, 2005, February 2, 2008 and March 28, 2006. The relevant webpages display advertising links to websites mainly promoting and/or offering pharmaceutical products.
The Complainant states that the disputed domain names <amazing-ambien.com>, <ambien-drug-info.com> and <ambienorder.com> are confusingly similar to its trademark AMBIEN.
Moreover, the Respondent has no rights or legitimate interests in respect of the disputed domain names since it is neither an authorized licensee of the Complainant, nor otherwise authorized to use the trademark AMBIEN. Nor does the Respondent's name relate to the trademark or any of the domain names.
The Complainant further contends that the Respondent registered and is using the disputed domain names in bad faith.
It is not likely that the Respondent was unaware of the Complainants' trademark AMBIEN at the time of the registration of the disputed domain names.
The Respondent is using the disputed domain name to divert Internet users to third party websites as the Respondent's parking websites display sponsored links which redirect traffic and potential sales of the Complainant's pharmaceutical products away from the Complainant toward unauthorized retailers or distributors of pharmaceuticals.
The Complainant requests the Panel to issue a decision that the disputed domain names be transferred to the Complainant.
The Respondent claims in his email communication of October 2, 2008, that it registers domain names in large scale using an automated process and therefore it cannot know whether a trademark right is infringed.
The Respondent also adds that when informed of a trademark infringement due to a domain name registration it immediately resolves the issue.
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the domain name 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 Panel finds that the Complainant is the owner of the trademark AMBIEN both by registration and acquired reputation and that the disputed domain names <amazing-ambien.com>, <ambien-drug-info.com> and <ambienorder.com> are confusingly similar to this trademark.
The addition of generic terms, in these cases “amazing”, “drug-info” and “order”, is not enough to avoid the confusion between the domain names and the trademark, since the added words regard characteristics of the product and the possibility to order it online.
Moreover, it is well accepted that a top-level domain, in all these cases “.com”, is to be ignored when assessing identity or confusing similarity of a mark and a domain name (See, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Complainant has therefore met the burden of proving that the disputed domain names are identical or confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).
The Complainant has not authorized the Respondent to use its trademark AMBIEN as a domain name or otherwise. Moreover, on the record, the Respondent does not appear to be known by the domain name, and has not shown any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the domain names.
The prima facie case presented by the Complainant is enough to shift the burden of proof to the Respondent to demonstrate that it has rights or legitimate interests in the domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in using the disputed domain names, e.g., under the Policy paragraph 4(c).
The Respondent does not appear to be using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. In fact, the Respondent's websites are redirecting Internet users to third party retailers' websites.
Furthermore, the Respondent is not an authorized retailer of the Complainant, according not only to the Complaint but also to the Respondent's communication of October 2, 2008.
Although depending on the circumstances, it may not be a violation of the Policy to resell or promote for resale genuine trademarked products by making reference to the trademark without the express authorization of the trademark owner, any such offering of goods or services should meet some minimum requirements (See, e.g., Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903), which stated:
“Respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods […] (bait and switch is not legitimate). The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner or that the website is the official site if, in fact, it is only one of many sales agents.”
In the present case the Respondent's websites at the domain names do not indicate the Respondent's relationship with the trademark owner and through some of the links it is possible to access the offering of goods (i.e., pharmaceuticals) by of some of the Complainant's competitors.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel is of the opinion that the disputed domain names were registered and are being used in bad faith. Specifically, the domain names were registered and are being used by the Respondent in order to divert Internet users to other websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service available on the Respondent's website.
AMBIEN is the trademark of a well-known pharmaceutical product of the Complainant for the treatment of insomnia, and the Respondent was clearly aware thereof, since all websites relating to the disputed domain names are diverting the users to online pharmacies offering to consumers “Ambien” as a “generic” drug against insomnia.
The Respondent is therefore intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's trademark (See, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Pfizer, Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; Aventis Pharma S.A. and Merrell Pharmaceuticals, Inc. v. Rx USA, WIPO Case No. D2002-0290).
In its reply, the Respondent claims that acquiring domains in large numbers using an automated process of registration, it could not know whether the disputed domain names were infringing copyright or trademark rights.
First of all, the actual content of each website corresponding to the disputed domain names inherently contradicts the Respondent's statement.
Secondly, it would not be in any case a valid reason since a domain name holder cannot be “willfully blind” to whether a domain name may infringe trademark rights (See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448).
It is in fact the registrant's responsibility to “determine whether your domain name registration infringes or violates someone else's rights” (according to paragraph 2 of the Policy).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain names in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <amazing-ambien.com>, <ambien-drug-info.com> and <ambienorder.com> be transferred to the Complainant.
Dated: November 17, 2008