World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Marek Cernevic

Case No. D2010-1331

1. The Parties

The Complainant is Sanofi-aventis of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.

The Respondent is Marek Cernevic of Vilnius, Lithuania.

2. The Domain Names and Registrar

The disputed domain names <buyambienwithoutaprescription.com> and <cheapambien.net> are registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2010. On August 6, 2010, the Center transmitted by email to Gandi SARL request for registrar verification in connection with the disputed domain names. On August 6, 2010, Gandi SARL 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 August 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2010. The Respondent sent three email communications to the Center on August 18 and 19, 2010 in relation to this proceeding but did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.

The Center appointed Ladislav Jakl as the sole panelist in this matter on September 20, 2010. 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 the Registration Agreement for the disputed domain name is in English, the Complainant requests the Panel to decide that the language of the administrative proceedings in this case is English. The Respondent did not submit any comments regarding this question. Gandi SARL indicated that the specific language of the registration agreement as used by the Respondent for the disputed domain name is English. Pursuant the Rules, paragraph 11, in absence of an agreement between the parties, the language of the administrative proceeding shall be the language of the registration agreement. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein decides that the language of the administrative proceedings is English (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836).

4. Factual Background

The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:

The Complainant’s Sanofi-aventis company has been formed during the year 2004 as a result of merger between the two French companies Aventis and Sanofi-Synthelabo. Sanofi-aventis is a multinational company settled in more than 100 countries around the world. The new group benefits from a large portfolio of high-growth drugs. In the field of central nervous system, Sanofi-aventis developed and sells throughout the world drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN.

The Complainant has the following rights in the trademark AMBIEN: French trademark No. 93 456 039 registered on February 19, 1993; to international trademark No. 605762 registered on August 10, 1993; United Kingdom of United Kingdom and Northern Ireland trademark No. 1466136 registered on June 19, 1997; Hong Kong trademark No. 1998 03 699 registered on June 19, 1997; United States of America trademark No. 74345754 registered on December, 1993; Canadian trademark No. LMC437514 registered on December 30, 1994; Australian trademark No. 761 307 registered on May 6, 1998; Community trademark No. 3 991 999 registered on November 28, 2005; Japanese trademark No. 4 194 957 registered on October 2, 1998; and Irish trademark No. 149 250 registered on May 29, 1992. All these trademarks are registered in class 5 of the international classification and are widely used by the Complainant’s Sanofi-aventis for pharmaceutical products.

The Complainant has also registered the domain name <ambien.com> on April 12, 2000.

The disputed domain names <buyambienwithoutaprescription.com> and <cheapambien.net> were registered on March 26, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant states that the dominant parts of disputed domain names <buyambienwithoutaprescription.com> and <cheapambien.net> comprise the word “ambien”, which is identical to the registered trademarks AMBIEN, which have been registered by the Complainant as trademarks in numerous countries all over the world and registered domain name <ambien.com>. The addition of the suffixes “buy”, “withoutaprescription” and “cheap” are not relevant and will not have any impact on the overall impression of the dominant part of the name AMBIEN, instantly recognizable as a world famous trademark. As the Complainant and its trademarks are widely known for conducting of his business, said suffixes are rather fitted to strengthen the impression that the disputed domain names belong to, or are affiliated with the Complainant. As well, the addition of the respective top-level domain “.com” and “.net” does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determining the confusing similarity between the trademark AMBIEN and the disputed domain names.

As to legitimate interests, in respect of the disputed domain names, the Complainant contends that it is obvious that the Respondent does not have any rights or legitimate interests in using the litigious domain names <buyambienwithoutaprescription.com> and <cheapambien.net> since the name of its owner is “Marek Cernevic” and has not any resemblance with the word “ambien”. Furthermore the Complainant contends that the Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known trademark AMBIEN, that the Complainant has never granted the Respondent any license or other authorization to use its trademarks in relation with the disputed domain names and therefore there is no relationship between the Complainant and the Respondent. Moreover, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, so as to confer a right or a legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy.

As to bad faith, the Complainant says that the Respondent has registered the disputed domain names, which correspond to the pharmaceutical trademarks and domain name of the Complainant, in order to abusively take benefits from its notoriety and that is inconceivable that the Respondent registered these domain names unaware of the Complainant’s rights and reputation. Moreover, the Respondent registered these domain names primarily for the purpose of selling them for valuable consideration and to make unfair benefit of the Complainant’s trademarks notoriety. The disputed domain names were not only registered in bad faith but are used by the Respondent in bad faith. The Complainant argues that the Respondent is using disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its websites.

In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel to order that the disputed domain names <buyambienwithoutaprescription.com> and <cheapambien.net> be cancelled.

B. Respondent

The Respondent did not reply to the Complainant’s contentions by way of formal Response. Howeverm he did reply in 3 emails stating that he would remove content “from the domains” and referencing the “NS servers” being out of his control.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Complainant states that disputed domain names <buyambienwithoutaprescription.com> and <cheapambien.net> are confusingly similar to the Complainant’s trademark AMBIEN, seeing that they incorporate that trademark in its entirety and that the addition of the suffixes “buy”, “withoutaprescription” and “cheap”, as well as the addition of the top-level domain “.com” and “.net” do not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity between the trademark AMBIEN and the disputed domain names.

Therefore the Complainant contends that the disputed domain names are confusingly similar to the trademark of the Complainant.

The Panel goes out from the principle that the test of identity or confusing similarity under the Policy is generally confined to a comparison of the disputed domain names and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812.

There is no doubt that the disputed domain names <buyambienwithoutaprescription.com> and <cheapambien.net> incorporate the trademark AMBIEN as a part of them.

The words “buy”, “withoutaprescription” and “cheap” are common, generic terms that do not give any distinctiveness to the disputed domain names. Mere addition of a descriptive term by way of prefix to a complainant’s mark does not adequately distinguish a domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBCHoldings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717; Sanofi-Aventis v. Pluto Domain Services Private Limited, WIPO Case No. D2008-1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705.

As well the inclusion of the gTLD suffix “.com” and “.net” does not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310).

Accordingly, by registering the disputed domain names, the Respondent created a likelihood of confusion with the Complainant’s trademark AMBIEN. Moreover, it is likely that disputed domain names could mislead Internet users in thinking this is in some way associated with the Complainant.

For all the above cited reasons, the Panel concludes that disputed domain names are confusingly similar to the Complainant’s trademark in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

The Complainant contends that it has exclusive rights for AMBIEN and no licence, permission or authorization was granted to use AMBIEN in the disputed domain names of the Respondent. Furthermore, it is obvious that the Respondent uses disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark AMBIEN. The disputed domain names clearly allude to the Complainant. The Complainant argues that there is no reason why the Respondent should have any right or interest in disputed domain names.

Based on the Complaint, the Panel finds that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant’s trademark or to seek registration of any domain name incorporating said trademark.

The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademark of the Complainant. The Panel notes that the submitted use of the disputed domain names is to display a parking-site on which click-through-advertisements appear. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainant’s trademarks AMBIEN at the time it registered the disputed domain names. Due to the fact that the disputed domain names direct Internet users to a web page relating to the Complainant’s business and history, the Respondent cannot have ignored the Complainant’s business reputation at the time of registration of these domain names.

The use by the Respondent of disputed domain names suggest that it is aware of the Complainant and the websites associated with the disputed domain names will likely cause consumers to believe that the domain names are affiliated with or owned by the Complainant.

The Panel further finds that by using the Complainant’s trademark to draw Internet users to a site offering what appears to be competing or at least related goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant’s business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658; Sanofi-Aventis v. Alexandr Ivanov, WIPO Case No. D2009-1397.

For the above cited reasons the Panel finds that the disputed domains names were registered and are being used in bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. Decision

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 <buyambienwithoutaprescription.com> and <cheapambien.net> be cancelled.

Ladislav Jakl
Sole Panelist
Dated: October 4, 2010

 

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