WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SANOFI-AVENTIS v. Pill Guru
Case No. D2006-0798
1. The Parties
The Complainant is SANOFI-AVENTIS of Gentilly Cedex France represented by Bird & Bird Rechtsanwälte France.
The Respondent is Pill Guru of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <ambienfacts.info>is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26 2006. On June 27 2006 the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On June 28 2006 Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) 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 June 30 2006. In accordance with the Rules paragraph 5(a) the due date for Response was July 19 2006. The Respondent did not submit any response. Accordingly the Center notified the Respondent’s default on July 20 2006.
The Center appointed Thomas Hoeren as the sole panelist in this matter on August 8 2006. 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
The Complainant is a multinational company present in more than 100 countries across 5 continents; the enterprise is the third largest pharmaceutical company in the world. During summer of 2004 SANOFI-SYNTHELABO a French pharmaceutical company announced the success of its offer for AVENTIS shares. The name of the parent company adopted on August 20 2004 is Sanofi-Aventis thus preserving the brand heritage of each of the constituent companies.
AMBIEN is a product manufactured by SANOFI-AVENTIS and is indicated for the short-term treatment of insomnia. The Complainant owns a large number of AMBIEN trademarks in more than 50 countries including the US i.e. the trademark AMBIEN no 74/345754 registered on January 5 1993 in the United States of America on behalf of Sanofi-Synthelabo for Class 5.
The Complainant either itself or through its related and controlled companies also owns key domain names which incorporate its trademark including <ambien.co.uk> <ambien.fr> and <ambien.us>.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the mark AMBIEN in which it has rights. It argues that its trademark rights in AMBIEN are established through registration and that the mere adjunction of the descriptive term “facts” in conjunction with the Complainant’s trademark does not remove the domain name in dispute from being confusingly similar.
The Complainant concludes that Internet users would be bound to think that the domain names had a connection with the Complainant. In support of this argument it refers to numerous prior UDRP decisions some involving its own company.
The Complainant again addresses the Policy by contending that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant’s rights in the trademark AMBIEN precede the Respondent’s registration of the domain name. The Complainant is present in over 50 countries and is well known throughout the world especially the United States where its AMBIEN product is the market leader. It argues that the Respondent would have not registered the domain name if it had not known that AMBIEN was one of the leading prescription sleep aids.
The Complainant states that there is no license consent or other right by which the Respondent would have been entitled to register or use domain names incorporating the Complainant’s trademark. The Complainant concludes that the Respondent has no legitimate interest in the domain name and has registered them with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.
Finally the Complainant states that the Respondent has registered and is using the domain name in bad faith for the following reasons:
- the Respondent has no prior right in the name and no authorization has been given by the Complainant concerning use of the AMBIEN trademark;
- the Respondent’s could not help but have been aware that AMBIEN is one of the leading prescription sleep aids;
- by adding the generic term “facts” the Respondent makes the Internet user believe that it is one official website to buy AMBIEN.
- the Respondent has offered the domain name to the Complainant for an average amount of USD 1000.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall 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.”
Paragraph 4(a) of the Policy states that for a complaint to be granted the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is used in bad faith.
A. Identical or Confusingly Similar
The domain name in question is confusingly similar with the trademarks registered for the Complainant. The use of the generic term “facts” in conjunction with the Complainant’s trademark AMBIEN does not remove the domain name in dispute from being confusingly similar as the generic term “facts” lacks distinctiveness (Wal- Mart Stores Inc. v. Jeff Milchen WIPO Case No. D2005-0130; see the similar case concerning the domain name <ambient-direct.com> in Sanofi-Aventis v. Ve Patel WIPO Case No. D2005-0669.
Furthermore the addition of the gTLD “.info” has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name (see Telecom Personal S.A. v. NAMEZERO.COM Inc. WIPO Case No. D2001-0015; Nokia Corporation v. Private WIPO Case No. D2000-1271).
B. Rights or Legitimate Interests
The Respondent has not filed any Response to the Complaint. Consequently the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests of the said domain name. Furthermore the Complainant has not authorized the Respondent to use its trademarks and in particular to register a domain name composed of the Complainant’s trademarks.
Thus the Panel concludes that the Complainant has demonstrated a prima facie case of Respondent’s lack of rights or legitimate interests. Consequently the second element of the UDRP has been met.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent is using the disputed domain name intentionally to attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship affiliation or endorsement of the site. Pursuant to Policy paragraph 4(b)(iv) this constitutes evidence of both bad faith registration and bad faith use for the purposes of paragraph 4(a)(iii).
The Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademarks. In all likelihood it would appear that Respondent knows that AMBIEN is a leading prescription sleep aid and uses consciously the term AMBIEN to create the impression that its website is an official homepage constructed by the Complainant. By adding the generic terms “facts” the Internet user is misled as he/she would probably get the impression that the website associated with the domain name contains official medical information or other facts related to AMBIEN. Finally the Respondent offered to sell the domain name for an average amount of USD 1000 in its mail of April 13 2006 which shows its apparent commercial interest in registering the domain name.
The Panel is thus satisfied that the Respondent registered and is using the domain name at issue in bad faith in accordance with the criteria set out under paragraph 4(b)(iv) of the Policy.
Thus the Panel concludes 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 <ambienfacts.info> be transferred to the Complainant.
Dated: August 11 2006