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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Cybertrust

Case No. D2006-0848

 

1. The Parties

The Complainant is Sanofi-Aventis of France, represented by Bird & Bird, France.

The Respondent is Cybertrust of Ohio, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <my-ambien-rx.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2006. On July 5, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 5, 2006, Go Daddy Software 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 10, 2006. The Center verified that the Complaint together with the amendment to 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 July 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2006.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on August 15, 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 the third largest pharmaceutical company in the world, present in more than 100 countries across 5 continents. It is the result of the combination of Sanofi-Synthйlabo (itself the result of a merger between Sanofi and Synthйlabo in 1999) and Aventis. On August 20, 2004, Sanofi-Synthйlabo adopted the name Sanofi-Aventis, thus preserving the brand heritage of each of the constituent companies. As of December 31, 2004, Aventis merged into Sanofi-Aventis. The Complainant had 2004 consolidated sales of €25 billion and €4 billion Research and Development expenditures. It employs over 97 000 employees worldwide and has a sales force of over 35 000 persons, as well as more than 17 600 research staff. The Complainant’s stock market capitalization is approximately 2 700 000 000 euros.

In the United States of America, the Complainant’s products are marketed through a number of channels, including a Sanofi-Aventis subsidiary, alliances with other pharmaceutical companies and license agreements.

AMBIEN is a trademark registered in several countries, including the United States of America, used in relation with a product manufactured by the Complainant which is now the leading prescription sleep aid in the United States of America. The Complainant and its affiliates registered numerous domain names worldwide containing the AMBIEN trademark, for example “ambient.fr” and “ambient.us” and “ambient.biz”.

At the time of filing, the domain name resolved to a web site offering online sales of medical products including the Complainant’s AMBIEN product.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s registration consists of the Complainant’s trademark AMBIEN with the addition of the generic words “my” and “rx” (a common abbreviation for prescription medicines) and the gTLD “.com.” There is thus a high risk of confusion, since a consumer may think that the domain name directly refers to the Complainant’s products.

The Complainant has prior rights in the trademark AMBIEN, which precede the Respondent’s registration of the domain name. Moreover, the Complainant’s trademark is present in over 50 countries including the US and is well-known throughout the world. Furthermore, the Respondent’s site does nothing to disclaim any relationship with the trade mark owner. The Respondent’s use does not satisfy the test for bona fide use established in prior WIPO decisions (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Furthermore, 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 AMBIEN.

Regarding domain names composed of a trademark and the word “my,” in a previous decision under the Policy a panelist took the view that “the use of the generic term ‘my’ […] do[es] not avoid confusion, since at least some internet users are liable to assume that the Domain Name identifies an online pharmacy of or approved by the Complainant for its “Cialis” product” (Lilly Icos LLC v. Loris Mosser, WIPO Case No. D2005-1157). Therefore, there is no doubt that the reproduction of the trademark AMBIEN, as the sole distinctive element of the domain name, generates confusion. The addition of the gTLD “.com,” which is required for registration of the domain name, has no distinguishing capacity in the context of domain name and do not alter the value of the trademark represented in the domain name.

There is no doubt that the Respondent is aware that AMBIEN corresponds to a medical product and therefore to a trademark. Indeed, the Respondent would have not registered the disputed domain name if it had not known that AMBIEN was a leading prescription sleep aid. As a result, it seems that the Respondent, which has no legitimate interest in respect of the disputed domain name, has registered it with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name.

The obvious bad faith of the Respondent results from his absence of prior rights and of any authorization given by the Complainant concerning the AMBIEN trademarks; the Respondent’s awareness that AMBIEN is a leading prescription sleep aid; the addition of generic words to the trademark AMBIEN in the domain name, which is an attempt to mislead Internet users into believing that the web site to which the domain name resolves is an official web site of the Complainant.

There is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. It is an opportunistic act, which seeks to

disrupt the Complainant’s business. Furthermore, the Respondent proposes on the disputed web site links to competitive products.

B. Respondent

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

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.C).

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

Pursuant to 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

On the first question, the Complainant has established rights in the AMBIEN trademark.

On the second question, the domain name incorporates a trademark used in relation with a pharmaceutical product, the word “my”, which is generic in the Internet context—and “rx” which is a generic abbreviation for pharmaceutical prescriptions. The addition of those elements to the trademark heighten the risk of confusion, is confusingly similar to the Complainant’s mark. When a domain name wholly incorporates a complainant’s mark and adds generic words, many prior Panels have found that to be sufficient to establish confusing similarity for purposes of the Policy. See, inter alia, 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; Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

The Panel thus finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on the Complainant’s prior use of the AMBIEN mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainant’s mark.

In the case of a reseller, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (at 2.3), a “reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner.” This requirement is not met in the instant case.

Consequently, the Panel finds that the Complainant has successfully made a prima facie case, which the Respondent has failed to rebut. The Panel thus finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

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

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

Apart from the famous nature of the Complainant’s marks, the domain name is confusingly similar to the Complainant’s mark AMBIEN. It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered a domain name consisting of a trademark used in relation with a prescription pharmaceutical and the letters “rx,” which are a well known abbreviation for prescriptions. The Panel agrees with the Complainant that the addition of the generic word “my” should not alter this finding.

In addition, a number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g., Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and/or indicating a good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461. It is very difficult to conceive that the Respondent chose to register the domain name by accident. In fact, based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing to the Complainant’s marks.

The Panel thus finds for the Complainant on this third element of the test.

 

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, <my-ambien-rx.com> be transferred to the Complainant.

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Daniel J. Gervais
Sole Panelist

Dated: August 29, 2006