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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Dan Myers

Case No. D2008-1024

 

1. The Parties

Complainant is Sanofi-aventis (“Complainant”) of Paris, France.

Respondent is Dan Myers an individual located of United Kingdom of Great Britain and Northern Ireland (“Respondent”).

 

2. The Domain Names and Registrar

The Domain Names at issue are <genericambien.com> and <ambiensleepingpill.com> (the “Disputed Domain Names”). The Registrar is GoDaddy.com, Inc. (the “Registrar”) located in Scottsdale, State of Arizona, United States of America.

 

3. Procedural History

On July 7, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On July 14, 2008, the Center received hardcopy of the Complaint. On July 11, 2008, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On July 8, 2008, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the Registrar of the Disputed Domain Names and that the Disputed Domain Names are registered in Respondent’s name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On July 15, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules. The due date for Response was August 4, 2008.

On August 5, 2008, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On August 12, 2008, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

 

4. Factual Background

Complainant was formed during the year 2004 as a result of a merger between the two French companies Aventis SA and Sanofi-Synthelabo. Completion of the merger created the largest group in Europe and the third largest in the world, with consolidated sales of € 500 million in 2005. Complainant employs over 97,000 people worldwide and has a sales force or over 35,000 people, as well as more than 17,600 research staff with 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development. The stock market capitalization of Complainant is in excess of € 103 million.

Complainant 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. Complainant is a major player on the worldwide pharmaceutical market in particular in the United States of America. In the field of central nervous system, Complainant developed and sells throughout the world a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN. Complainant is the owner of numerous international trademark registrations for AMBIEN.

Complainant is also the owner of numerous domain names which incorporate the AMBIEN mark: for example and without limitation <ambien.com>, <ambien.org> and <ambien.net>. These domain names resolve to the website “www.ambiencr.com” on which Complainant presents the product sold under the AMBIEN mark. All of the relevant registrations of the AMBIEN mark and the AMBIEN domain names were prior to the registration of the Disputed Domain Names.

 

5. Parties’ Contentions

A. Complainant’s contentions

Complainant contends that it has worldwide registrations of the AMBIEN mark which serve as prima facie evidence of its ownership and the validity of the AMBIEN mark.

Complainant argues that the Disputed Domain Names are confusingly similar to the AMBIEN mark, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the term AMBIEN with the addition of the descriptive terms “generic” and “sleepingpill.”

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Complainant alleges that the primary website for Respondent is “www.yesmeds.com” which is an online pharmacy. Both of the Disputed Domain Names resolve to the website “www.yesmeds.com”.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(i) of the Policy because he has not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services.

Complainant alleges that the use of the Disputed Domain Names is for no other purpose than to capture Internet traffic by creating confusion with Complainant’s AMBIEN mark and to direct that traffic to Respondent’s online pharmacy. Complainant further alleges that this cannot be a bona fide use.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(ii) of the Policy because he is not commonly known under either of the Disputed Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the AMBIEN mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(iii) of the Policy because it is not making a legitimate non-commercial or fair use of the Disputed Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondent has deliberately registered the Disputed Domain Names to attract the attention of Internet users searching for the Ambien product. This cannot be seen as a legitimate non-commercial or fair use.

iv. Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy. Specifically Complainant alleges that the actions of Respondent meet the criteria of bad faith under paragraph 4(b)(iv) of the Policy because Respondent is using the Disputed Domain Names to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s AMBIEN mark.

B. Respondent’s contentions

Respondent has chosen not to respond to the allegations and contentions of Complainant.

 

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.”

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System s.a.s., NAF Case No. 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. 0094957 and Gorstew Limited and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. 0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that 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 legitimate interests in respect of the domain name; and

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has worldwide registrations of the AMBIEN mark which serve as prima facie evidence of its ownership and the validity of the AMBIEN mark.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has chosen not to contest this allegation.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the AMBIEN mark.

Identity or Confusing Similarity

Complainant further contends that the Disputed Domain Names are identical with or confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Complainant argues that the Disputed Domain Names are confusingly similar to the AMBIEN mark, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the term AMBIEN with the addition of the descriptive terms “generic” and “sleepingpill.”

Respondent has not contested the assertions by Complaint that the Disputed Domain Names are confusingly similar to the trademark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that the trademark QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel notes that the entirety of the AMBIEN mark is included in each of the Disputed Domain Names. The addition of “generic” and “sleepingpill” are non-distinctive

Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the AMBIEN mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii), because Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Complainant alleges that the primary website for Respondent is “www.yesmeds.com” which is an online pharmacy. Both of the Disputed Domain Names resolve to the website “www.yesmeds.com”.

The Panel finds that the redirection of Internet traffic to Respondents online pharmacy website using the confusingly similar Disputed Domain Names is not a bona fide offering of goods or services, that Respondent is not known by either of the Disputed Domain Names and that he is making improper commercial use of the Disputed Domain Names.

The Panel further finds that Respondent has no relationship with or permission from Complainant for the use of the AMBIEN mark.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii). Specifically Complainant alleges that the actions of Respondent meet the criteria of bad faith under paragraph 4(b)(iv) of the Policy because Respondent is using the Disputed Domain Names to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant's AMBIEN mark.

Respondent has chosen not to contest these allegations.

For the foregoing reasons, the Panel finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

 

7. Decision

The Panel concludes (a) that the Disputed Domain Names <genericambien.com> and <ambiensleepingpill.com> are confusingly similar to Complainant’s registered AMBIEN mark, (b) that Respondent has no rights or legitimate interests in the Disputed Domain Names and (c) that Respondent registered and used the Disputed Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <genericambien.com> and <ambiensleepingpill.com> be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: August 31, 2008