The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Steven Rook of California, United States of America.
The disputed domain name <orderambien.name> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2009. On November 23, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 23, 2009, 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 November 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 15, 2009.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on December 30, 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 Complainant Sanofi-aventis is a multinational pharmaceutical company located in France. The Complainant offers a wide range of prescription drugs to treat patients with serious diseases and is well known all over the world. It has leading positions in 7 major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. In the field of central nervous system, Sanofi-aventis developed and sells throughout the world a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN. AMBIEN product was first launched in 1993 in the United States of America and has been occupying a leading market position since its introduction.
The Complainant has provided evidence of a number of trademark registrations of AMBIEN:
- International trademark AMBIEN, no. 605762 registered on August 10, 1993 in class 5, duly renewed and designating Algeria, Germany, Belarus, Benelux, Bulgaria, the People's Republic of China, Croatia, Egypt, Spain, Russian Federation, Hungary, Kazakhstan, Lichtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, San Marino, Slovakia, Slovenia, Sudan, Switzerland, Ukrainian, The Socialist Republic of Viet Nam, Yugoslavia;
- French trademark AMBIEN, no. 93456039 registered on February 19, 1993 in class 5 and duly renewed;
- United Kingdom trademark AMBIEN, no. 1466136 registered on May 31, 1991 in class 5 and duly renewed;
- Community trademark AMBIEN, no. 003991999 registered on November 28, 2005 in class 5;
- Australian trademark AMBIEN, no. 761307 registered on May 6, 1998 in class 5 and duly renewed;
- Irish trademark AMBIEN, no. 149250 registered on May 29, 1992 in class 5 and duly renewed;
- American trademark AMBIEN, no. 1808770 registered on December 7, 1993 in class 5 and duly renewed.
The Complainant or its subsidiaries has also registered domain names <ambien.com>, <ambien.org>, <ambien.net>, <ambien.info>, <ambien.biz>, <ambien.us>, <ambien.fr>, <ambien.eu> and <ambiencr.com>.
All the above trademarks and domain names contain the distinctive word “ambien” and the registration dates are prior to that of the Domain Name <orderambien.name>.
The Respondent registered the Domain Name <orderambien.name> on December 7, 2007.
The website of the Domain Name is an online pharmacy for online sale of various kinds of pharmaceutical products including Xanax, Clalis, Viagra and Ambien. The homepage of the website under the Domain Name at the time the Complaint was filed has visible advertisements for the online sale of Ambien with detailed definition and introduction information concerning Ambien. When clicking “Buy Ambien Online”, the user is directed to another website “www.us-pharmacy.us” for the online sale of AMBIEN products. Under the “Buy Ambien Online” header and a section of introductory text, the website of the Domain Name also provides a header “Resources”, which lists “Cialis Online”, “Buy Cialis”, “Viagra”, “Cheap Viagra” and “Buy Valium” with related links, which direct users to other websites for these pharmaceutical products.
The Complainant asserts that it is the registered owner of the trademark AMBIEN. The Complainant contends that the disputed domain name entirely reproduces the trademark AMBIEN which has no particular meaning. This reproduction of the Complainant's trademark in its entirety is confusingly similar to the Complaint's trademark despite the addition of the descriptive word “order”. See Forest Laboratories, Inc. v. WhoisGuard Protected, WIPO Case No. D2008-0005. The adjunction of the descriptive word “order”, as it means “to command” or “to buy”, does not obviate the confusing similarity between the disputed domain name and the AMBIEN trademark.
The Complainant cites previous WIPO UDRP cases in which the Panel has already found the domain names to be confusingly similar to the trademarks at issue despite the adjunction of the word “order” together with the distinctive trademark AMBIEN. See Sanofi-aventis v. Evangelos Sopikiotis, WIPO Case No. D2008-1459; Sanofi-Aventis v. Secure Whois Information Service /DNS Admin, WIPO Case No. D2006-1206; Sanofi-aventis v. Alma Navaro, WIPO Case No. D2005-1042.
Based on the above arguments, the Complainant contends that the disputed domain name <orderambien.name> is confusingly similar to the trademarks in which the Complainant has rights.
The Complainant further argues that the Respondent does not possess any rights or legitimate interests with regard to the Domain Name. The Complainant notes that the Respondent does not appear to have satisfied the eligibility requirements to register the Domain Name as a “personal name”, since it would appear from the publicly-available WhoIs records that the Respondent's name is Steven Rook. Moreover, the Complainant contends that it has not authorized the Respondent to use its mark, that there is no relationship between the parties, and that the Respondent has no prior rights or legitimate interests to justify the use of the AMBIEN mark in the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and used in bad faith. As to bad faith registration, the Complainant states that given the notoriety of its AMBIEN mark, it is clear that the Respondent registered the Domain Name with full knowledge of, and intent to profit from the appearance of an association with, this mark. As to bad faith use, the Complainant notes that at the time of the filing of the Complaint the Domain Name was being used in connection with an online pharmacy service, where Internet users could allegedly purchase generic versions of the Complainant's Ambien medication. The Complainant asserts that the Respondent was most likely generating commercial gain through the sale of such products, as well as through the use of pay-per-click links from the advertisements which were displayed on the site.
The Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
Based on the above-discussed evidence, the Panel finds that the Complainant has proven that it is the owner of the trademark AMBIEN.
The Domain Name consists of the Complainant's trademark to which the gtld suffix “.name” has been appended, and the generic term “order” has been added as a prefix. By simply affixing the generic term “order” to the Complainant's trademark and registering such combination of words in the textual string of the Domain Name, the Respondent has created confusing similarity between the Domain Name and the trademarks of the Complainant. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903.
The Panel further notes the WIPO UDRP cases cited by the Complainant, in which previous panels have determined that other domain names have been found to be confusingly similar to the Complainant's AMBIEN trademark despite the adjunction of the word “order” before the trademark.
Accordingly, the Panel finds the Domain Name is confusingly similar to the Complainant's trademark AMBIEN, in which the Complainant has rights.
The Complainant has brought evidence to establish a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, once a complainant has made such a case the burden of proof shifts to the respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The respondent has failed to file a Response. The Panel finds that the Respondent's failure to file a Response may be indicative of a lack of rights or legitimate interests. See Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317.
Accordingly, the Panel finds the Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4 (b) of the Policy states that any of 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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.
AMBIEN is the trademark for a well-known pharmaceutical product of the Complainant for the treatment of insomnia, and the Complainant has registered a number of trademarks and domain names reproducing the distinctive mark AMBIEN. The trademark AMBIEN, and also the Complainant's domain name <ambien.us>, were registered in the United States before the registration of the Domain Name. The website under the Domain Name at one time contained information about pharmaceutical products and the homepage of the Domain Name had provided a detailed definition of and introduction to Ambien. It is very likely that the Respondent was well aware of Complainant's position in the pharmaceutical market and the trademark AMBIEN prior to registering the Domain Name. The Respondent “knew or should have known” of the registration and use of the trade mark prior to registering the domain name constitutes bad faith. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
The Panel further finds that the Respondent has deliberately used the Domain Name as a referral portal to divert Internet users to another website, “www.us-pharmacy.us”, allegedly offering to sell online AMBIEN products. The website under the Domain Name also has a header “Resources”, which lists “Cialis Online”, “Buy Cialis”, “Viagra”, “Cheap Viagra” and “Buy Valium” with related links for sale of these pharmaceutical products, which direct users to other websites for these products. The Panel accepts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This amounts to evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy.
In light of the above, the Panel finds that the Domain Name has been registered and is being used in bad faith pursuant to the Policy.
As a further observation, the Panel notes the Complainant's allegations that the goods advertised on the website operating at the Domain Name are not, in fact, its authentic trademarked goods, but are instead generic versions of their products. The Panel notes, however, that even if the Ambien-branded products appearing on the site are, in fact genuine, this would not be a dispositive factor in the case. This is because the Respondent appears to have used the website under the Domain Name to sell both pharmaceutical products of the Complainant and a great number of other kinds of pharmaceutical products of other companies. Generally speaking, in order to be considered bona fide, an offering must meet several requirements (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481), including:
- A respondent must actually be offering the goods or services at issue;
- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant's relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;
- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.
It comes to the Panel's attention that the Oki Data case involved parties in an existing distributor relationship, but the Phillip Morris decision involved parties that were not in a distributor relationship. In any event, the facts in this case indicate that the Respondent may have used the website under the Domain Name to sell both the trademarked goods and a great number of other goods. This does not meet the requirements of bona fide offering as shown above. For all of the above reasons, the Panel is satisfied that the Complainant has established the requirement of showing bad faith under the third element of the Policy.
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 <orderambien.name> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: January 12, 2010