World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Marie Birtel

Case No. D2011-0694

1. The Parties

The Complainant is Sanofi-Aventis of Paris, France, represented by Selarl Marchais De Candé, France.

The Respondent is Marie Birtel of Stowe, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ambienpharmacylist.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2011. On April 20, 2011, the Center transmitted by email to Moniker Online Services, LLC (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On April 21, 2011, the Registrar 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 April 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2011.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on May 31, 2011. 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.

4. Factual Background

According to the Complaint, the Complainant further the merger between the two French companies Aventis SA and Sanofi-Synthelabo became the 2nd pharmaceutical group in Europe and 4th in the world.

The new group Sanofi-aventis offers a wide range of patented prescription drugs to treat patients with serious diseases and 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.

The disputed domain name was registered on November 23, 2009. In its Complaint, the Complainant provided evidence that the website associated with the disputed domain name is used as an online pharmacy for different types of drugs.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name reproduces the Complainant’s trademark AMBIEN, which has no particular meaning and is therefore highly distrinctive, in its entirety.

The Complainant has protected its mark AMBIEN by filing for and obtaining trademark registrations in various jurisdictions throughout the world, and has obtained an International Registration.

All the following trademarks are registered notably in connection with class 5 of the international classification i.e. pharmaceutical products.

- AMBIEN French trademark no. 93456039 registered on February 19, 1993 in class 5 and duly renewed;

- AMBIEN International trademark no. 605762 registered on August 10, 1993 in class 5, duly renewed and designating Algeria, Germany, Belarus, Benelux, Bulgaria, China, Croatia, Egypt, Spain, Russian Federation, Hungary, Kazakhstan, Liechtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, San Marino, Slovakia, Slovenia, Sudan, Switzerland, Ukraine, Vietnam, Montenegro, Italy and Serbia;

- AMBIEN United States trademark no. 1808770 registered on December 7, 1993 in class 5 and duly renewed;

- AMBIEN Community trademark no 003991999 registered on November 28, 2005 in class 5 .

The Complainant has also registered the following domain name devoted to Ambien pharmaceutical products:

<ambien.com> registered on April 12, 2000

Copies of all the above trademark registrations and of the domain name have been provided to the Panel as annexes 6, 7, 8, 9, and 10 of the Complaint.

The Complainant alleges that it has used its AMBIEN marks in commerce and obtained trademark registrations long before the Respondent registered the disputed domain name <ambienpharmacylist.com >.

The disputed domain name is confusingly similar to the Complainant’s widely known AMBIEN mark. The disputed domain name incorporates the entirety of the Complainant’s AMBIEN mark, in combination with the descriptive terms “pharmacy list”. The addition of these descriptive terms does not distinguish the disputed domain name from the Complainant’s AMBIEN trademark, but rather increases the likely consumer confusion and clearly infringes Complainant’s marks.

The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for bona fide offering of legitimate goods.

The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.

Consequently, there is no relationship whatsoever between the parties.

The Respondent has used the website located at the disputed domain name to create a likelihood of confusion with the Complainant’s trademarks and domain name as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of pharmaceutical products advertised for sale on it.

Internet users are led to believe that it is the Complainant who proposes to sell the AMBIEN products on this website. Indeed, the word AMBIEN is clearly put forward on the website and mentioned in almost each line of the text.

Moreover the Respondent’s website has links to pharmaceutical websites where competitors’ products are advertised for sale.

The Respondent, by registering the disputed domain name and using it to advertise, offer for sale and sell the Complainant’s products, at a minimum, has registered the disputed domain name 1) attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, and of the goods being sold on the website, and 2) primarily for the purpose of disrupting the business of a competitor, which is a circumstance of bad faith registration and use pursuant to Policy, paragraph 4(b)(iii).

The Complainant requests that the disputed domain name be cancelled.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (See Oki Data Americas Inc v. ASD. Inc, WIPO Case No. D2001-0903)

In the present case, the disputed domain name incorporates the Complainant’s widely known registered trademark AMBIEN. The addition of the words “pharmacy list” is purely descriptive and, it may be added, is also misleading in view of the range of the Complainant’s products sold under the Complainant’s registered trademark AMBIEN; and, furthermore, the addition of these words does not serve to distinguish, for Policy purposes, the disputed domain name from the Complainant’s registered trademark AMBIEN (see, Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582).

In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years.

The first element of the Policy has, therefore, been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

whether before any notice to the Respondent of the dispute, there is any evidence of the 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;

whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not responding to the Complaint.

Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s widely known registered trademark AMBIEN. In the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark AMBIEN inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below). The consequential tarnishing of the Complainant’s trademark AMBIEN and also the goodwill that the Complainant has established in this trademark through its promotion, advertising and commercial use of the same, sufficient evidence of which has been provided to the Panel, are done by the Respondent without any right or legal justification for doing so.

The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel notes in this regard that competing products are also listed for sale on the website associated with the disputed domain name.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to demonstrate rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

Finally, the failure of the Respondent to reply to the Complaint or take any part in the present proceedings is, again in the view of the Panel, a further indication of lack of interest on the part of the Respondent to sustain its rights.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 [the Respondent’s] web site or location or of a product or service on its web site or location.”

Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain name for commercial purposes, is trading on the Complainant’s valuable goodwill established in its widely known registered trademark AMBIEN.

Again, by having registered and used the disputed domain name incorporating the Complainant’s widely known registered trademark AMBIEN for commercial purposes and without the authorization of the Complainant, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.

Furthermore, the fact that the disputed domain name includes the Complainant’s well-known trademark AMBIEN, held and used in commerce by the Complainant for several years prior to the date the Respondent became the registrant of the disputed domain name and the fact that, the Respondent must have known and been aware of the Complainant’s rights in this mark at the time the Respondent registered the disputed domain name, which includes the Complainant’s mark, is a further fact or supporting a conclusion of bad faith.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 name <ambienpharmacylist.com> be cancelled.

Eva Fiammenghi
Sole Panelist
Dated: June 14, 2011

 

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