The Complainant is Sanofi-aventis, of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.
The Respondent is N/A, Radashkevich Andrey, of Ufa, Russian Federation.
The disputed domain name <ambienwithoutaprescription.org> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2008. On December 18, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 18, 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” 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 the Respondent of the Complaint, and the proceedings commenced on December 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 14, 2009.
The Center appointed Marilena Oprea as the sole panelist in this matter on January 21, 2009. 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. Sanofi-Aventis has been formed during the year 2004 as a result of the merger between the two French companies, Aventis SA and Sanofi-Synthelabo. After the transaction completed in 2004, the Complainant became the number 1 pharmaceutical group in Europe and number 4 in the world, with consolidated net sales of Euros 28 billion in 2007.
The Complainant holds numerous AMBIEN trademarks, all these being registered and used by Sanofi-Aventis notably in connection with goods in class 5, pharmaceutical products. The Complainant has among others, an International registration for AMBIEN trademark No. 605 762 registered on August 10, 1993, designating, among others the Russian Federation.
With respect to domain names, Sanofi-Aventis is the holder of many registrations incorporating the AMBIEN trademark, such as: <ambien.org>, <ambien.com>, <ambien.net>.
The product Ambien is indicated for the short term treatment of insomnia.
On August 27, 2008, the Complainant sent a cease and desist letter to the Respondent requesting the transfer of the disputed domain name to the Complainant. The Complainant sent the letter to the e-mail address for the registrant indicated in the WhoIs database, and received a reply from an e-mail address that appeared to be a privacy service address at “firstname.lastname@example.org”; in the reply the Complainant is told “that Estdomains is the Domain Registrar, not the hosting company” and is advised to search for the domain name holder at “http://www.whois.sc/”. The Complainant asserts that further searches were conducted, however, no information was available at the indicated web address.
The disputed domain name was registered on January 6, 2008.
The Respondent appears to be a Russian entity (as confirmed by the Registrar in its verification reply as the current registrant of the disputed domain name).
At the time of the filing of the Complaint, the disputed domain name was being used to offer for sale a variety of goods including the Complainant's and its competitors' products.
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 <ambienwithoutaprescription.org> is confusingly similar to the AMBIEN trademark;
The domain name consists of the AMBIEN trademark in addition to the descriptive terms “without a prescription”, terms commonly used in relation to medication. This is insufficient to differentiate the disputed domain name from the Complainant's trademark AMBIEN.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
The Respondent does not have a legitimate interest in the disputed domain name since DOMAIN MANAGER has no resemblance with the distinctive word AMBIEN. Further, the Respondent's use of the disputed domain name does not satisfy the test for bona fide use as the Respondent's website contains a link that leads to an online pharmacy offering various medical products manufactured by competitors of the Complainant. The Complainant is not making a legitimate non-commercial or fair use 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.
(iii) The domain name was registered and is being used in bad faith.
The Respondent has registered the domain name with knowledge that Ambien is a medical product, moreover, the packaging of the Ambien product is reproduced on the home page of the Respondent's website. The Respondent, knowing the goodwill and reputation of the Ambien product, has registered the domain name in order to benefit commercially from the likely confusion with the Complainant's trademark. This is an opportunistic act, which seeks to disrupt the Complainant's business. Also, the domain name is being used in bad faith as the Respondent's website leads Internet users to an online pharmacy where they can order the Complainant's competitors' products as well. Thus, the disputed domain name is being used for commercial gain to misleadingly divert consumers. Furthermore, the response received to the Complainant's cease and desist letter shows that the Respondent does not intend to stop using the Complainant's trademarks and its behavior to keep its identity secret is another sign of bad faith.
The Respondent did not reply to the Complainant's contentions.
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 accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel 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.
The search of the WhoIs database by the Complainant showed the registrant to be “N/A”. Further, the Registrar of the disputed domain name confirmed the fact that the holder of the disputed domain name is “N/A”, and the technical and administrative contact as being “Radashkevich Andrey”, both having the same address.
Unfortunately, the response to the cease and desist letter sent by the Complainant does not aid to clarify the Respondent's identity.
Nor does, the Respondent's default to provide a Response in the present procedure provide further clarity as to the proper identity of the Respondent.
Paragraph 1 of the Rules defines “Respondent” as the holder of a domain-name registration against which a complaint is initiated. Accordingly, the Center addressed the Complaint to the registrant, “N/A, Radashkevich Andrey”, via the contact details provided, namely an email copy addressed to the email address “email@example.com” and other email addresses indicated in the WhoIs database, and a hard copy of the Complaint was delivered on January 11, 2009 at its physical address.
The Panel is satisfied that the Complaint was properly notified to the Respondent, that “N/A, Radashkevich Andrey” is the registrant of the disputed domain name and therefore the Respondent.
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 January 6, 2008.
Accordingly, the Complainant has trademark rights and the trademarks predate the domain name.
A wide variety of panelists have considered that the addition of generic words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the Complainant (see Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL (a/k/a P.E.P.S.I) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
Further, in cases with domain names composed of a trademark and descriptive words such as “online-prescription” or “prescription”, previous panelists have ordered the transfer of these domain names to the Complainant (see Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889; Sanofi-aventis v. One star Global, WIPO Case No. D2006-0583).
The Panel agrees with these previous UDRP panels and concludes that adding the descriptive term “without a prescription” 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 <ambienwithoutaprescription.org> domain name, after disregarding the “.org” generic top level domain, is confusingly similar to the Complainant's AMBIEN trademark.
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 Panel is satisfied that 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 and there is no evidence to suggest that the Respondent has made a bona fide use of the disputed domain name, or is commonly known by this name, or is making any legitimate noncommercial or fair use of the domain name. Instead, the Respondent uses the domain name for an online pharmacy offering medical products, Ambien and other products manufactured by competitors of the Complainant.
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.
The trademark AMBIEN itself has no dictionary meaning, therefore the term “ambien” is highly distinctive.
In the Panel's view, there is no doubt in this case that the domain name was initially registered with the Complainant's trademark and corresponding product in mind as the domain name incorporates entirely the Complainant's mark AMBIEN together with the descriptive terms “without a prescription”.
Moreover, the domain name is used to offer medical products, both of the Complainant and its competitors.
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.
In the Panel's view, the Respondent used the Complainant's widely-known trademark in the pharmaceutical industry to attract Internet users to its website for commercial gain.
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 <ambienwithoutaprescription.org> be transferred to the Complainant.
Dated: February 3, 2009