Complainant is Sanofi-Aventis, Paris, France, represented by Bird & Bird, France.
Respondent is PLUTO DOMAIN SERVICES PRIVATE LIMITED, Mumbai, Maharashtra, India.
The disputed domain name, <buyambien.com>, is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On October 1, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On October 7, 2008, Lead Networks Domains Pvt. Ltd. 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 Complainant on October 8, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 13, 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” or “UDRP”), 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 Complaint, and the proceedings commenced on October 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for a Response was November 4, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 5, 2008.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 19, 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.
Complainant attached to the Complaint trademark registration records for AMBIEN from various countries throughout the world. The registration records date back to at least 1991. Some of the registrations are in the name of Complainant and some are in the name of Synthelabo, which Complainant appears to assert is Complainant's predecessor.
Respondent registered the domain name <buyambien.com> (“Respondent's domain name”) on November 7, 2007. Complainant attached web page printouts to its Complaint which show that Respondent's domain name leads to a website with links to information concerning various drugs, including links to websites that purport to sell AMBIEN and competitive drugs without prescriptions.
Complainant asserts that it is one of the largest pharmaceutical companies in the world, and that its predecessor launched the AMBIEN pharmaceutical treatment for insomnia at least as early as 1993. Complainant asserts that it has a strong presence in India, where Respondent is located. Complainant also asserts that AMBIEN is one of the leading treatments for insomnia. As noted above, Complainant has presented evidence of many trademark registrations around the world, dating back to at least 1991. Some of those trademark registrations are in the name of Sanofi-Aventis. Complainant has provided evidence that it or its apparently related companies also have registered many domain names that use the AMBIEN trademark, including <ambien.fr>; <ambien.us>; <ambien.co.uk>; <ambien.com>; <ambien.net> and <ambien.biz>. Complainant also notes that it has prevailed in many domain name disputes where domain names have incorporated the AMBIEN trademark, including Sanofi-aventis v. Grzegorz kowalski, WIPO Case No. D2006-0258 (July 6, 2006) (transferring <buyambienonline.info>), Sanofi-aventis v. Artie Toothaker, WIPO Case No. D2006-0256 (June 9, 2006) (transferring the disputed domain name at issue in this case, <buyambien.com>), Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372 (April 24, 2006) (transferring <buyambien.info>) and Sanofi-Aventis v. Webinterfaces LLC, WIPO Case No. DWS2005-0003 (February 2, 2006) (transferring <buyambien.ws>). Complainant asserts that the disputed domain name incorporates Complainant's entire AMBIEN trademark along with the generic word “buy” and the gTLD “.com”, and is therefore confusingly similar to Complainant's trademark. Complainant further asserts that the AMBIEN trademark is well known around the world, that Respondent has done nothing to disclaim any relationship with Complainant, that Complainant has not licensed Respondent to use the AMBIEN trademark, that Respondent registered the disputed domain name because of the domain name's association with Complainant, and that Respondent therefore has no right or legitimate interest in the domain name. Finally, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith because Respondent's use is not authorized, Respondent must have known of Complainant's trademark rights, Respondent is using the disputed domain name to link to products that compete with AMBIEN (among other things), and Respondent is misleading Internet users into believing that Respondent's website is associated with Complainant. Complainant also asserts that the disputed domain name has been offered for sale, but Complainant presented no evidence on this last point.
The Respondent did not reply to the Complainant's contentions.
Pursuant to Rules paragraph 15, panelists in domain name disputes “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they deem] applicable.”
Under Policy paragraph 4(a), Complainant must prove the following:
(i) Respondent's domain name 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 respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
Under Policy paragraph 4(a)(i), Complainant must show that the domain name at issue is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
The numerous registration certificates attached to the Complaint demonstrate that Complainant has rights in the mark AMBIEN. Respondent's domain name consists of the generic word “buy”, plus Complainant's trademark “AMBIEN”, plus the generic top level domain “.com”. The “Ambien” portion of the disputed domain name is identical to Complainant's trademark. The addition of the word “buy” at the beginning of the disputed Respondent's domain name does not remove the confusing similarity between the disputed Respondent's domain name and Complainant's trademark. United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (October 5, 2007) (“[n]umerous [UDRP] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No.. D2001-0087 (May 2, 2001)”).
Indeed, the use of an associated word such as “buy” suggests that the disputed domain name may be an authorized site from which to purchase the product from Complainant or a licensee, thereby contributing to confusion. See, e.g., F. Hoffmann-La Roche AG v. Brian Robinson, WIPO Case No. D2007-0659 (June 27, 2007) (“Confusing similarity is especially acute in this case where the generic term ‘buy' has been tagged onto Complainant's VALIUM trademark and where that term simply relates to the availability of VALIUM-branded products on the Internet”) and Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101 (March 16, 2005) (“Here, Respondent's addition of the descriptive word ‘buy' to Complainant's CIALIS brand pharmaceutical product suggests that Respondent's web site is a source from which a consumer might purchase Complainant's CIALIS brand pharmaceutical product. The addition of ‘buy' does not in any way distinguish Respondent from Complainant, and indeed suggests an affiliation, using Complainant's trademark to promote Respondent's business”). Similarly, the addition of “.com” at the end of the domain name also does not remove the confusing similarity between Respondent's domain name and Complainant's trademark; United Consumers Club, Inc. v. Texas International Property Associates, supra) (“The addition of the .com top level domain also does nothing to dispel the confusing similarity between Respondent's domain name and Complainant's trademark.”).
Similar principles were applied by another panel to determine that this very domain name <buyambien.com> is confusingly similar to Complainant's AMBIEN trademark. Sanofi-aventis v. Artie Toothaker, supra. This panel agrees with that conclusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that Policy paragraph 4(a)(i) is satisfied.
The Complainant also must demonstrate that the Respondent has “no rights or legitimate interests in respect of the domain name”. Policy paragraph 4(a)(ii). “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c).
“Ambien” does not appear to be an English word and Respondent's combination of the word “buy” with Complainant's trademark indicates that Respondent – PLUTO DOMAIN SERVICES PRIVATE LIMITED would not be commonly known as <buyambien.com>. The use of the disputed domain name <buyambien.com> in connection with a website that offers pharmaceutical drugs for sale appears to be designed to trade on the goodwill associated with Complainant's trademark. Such use is not considered a bona fide or a fair use under the Policy; Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806 (February 19, 2008) (“Screens from Respondent's website presently accessible to the Panel online show that the disputed domain name is being used to promote products of Complainant's competitors, and links to online pharmacies. The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in or fair use of, the domain name”). See also Sanofi-aventis v. Artie Toothaker, supra).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name, and that Policy paragraph 4(a)(ii) is satisfied.
The Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he 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 [the Respondent 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 [Respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location.”
Complainant asserts that Respondent is not authorized to use Complainant's AMBIEN trademark, that Respondent was aware of the trademark when it registered the disputed domain name, and that Respondent is using the disputed domain name to link Internet users to competitive products (among other things), while confusing users into believing that Respondent's website is affiliated with Complainant. The unauthorized use of Complainant's trademark to sell competitive products constitutes bad faith under paragraph 4(b)(iv) of the Policy. Hoffmann-LaRoche Inc. v. sasha rutova, WIPO Case No. D2008-0746 (July 8, 2008); Sepracor Inc. v. graphicsmachine.com, WIPO Case No. D2007-0646 (June 28, 2007); and Sanofi-aventis v. Grzegorz kowalski; Sanofi-aventis v. Artie Toothaker; Sanofi-aventis v. Edith Van Der Linden; Sanofi-Aventis v. Webinterfaces LLC, supra.
The factors under paragraph 4(b) of the Policy are nonexclusive. AMBIEN is a prescription drug and the materials attached to the Complaint as well as the Panel's own visit to the “www.buyambien.com” website indicate that the disputed domain name leads to online sites that purport to sell AMBIEN without a prescription. Indeed, there is an apparently rotating link on Respondent's domain name which states “Ambien without a prescription”. The use of a domain name that is confusingly similar to a prescription drug, in order to sell the drug without a prescription, presents a potentially serious public health risk and is a bad faith use of the domain name. Sepracor Inc. v. Shonkin Inc., WIPO Case No. D2008-1258 (October 29, 2008); Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344 (October 27, 2008); Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-0682 (July 2, 2008) (“The evidence is clear that the sales of the ACCUTANE product or competitive products were made possible by the use of the website of the Respondent associated with the domain name in dispute to reach online pharmacies, which is illegal in the U.S. and that such sales result from the confusion created by the domain name in dispute and the well known Trademark of the Complainant. These activities have been considered as causing harm to the public and the Complainant and are showing use of the domain name in bad faith”).
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that Policy paragraph 4(a)(iii) is 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 name <buyambien.com> be transferred to the Complainant.
Bradley A. Slutsky
Dated: December 2, 2008