WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant
Case No. D2007-0889
1. The Parties
The Complainant is Sanofi-Aventis, Gentilly, France; and Aventis Inc., Greenville, Delaware, United States of America, represented by Bird & Bird Solicitors, France.
The Respondent is Searchology, Domain Registrant, Vernon, British Columbia, Canada, represented by Rob Barker, Vernon, British Columbia, Canada.
2. The Domain Names and Registrar
The disputed domain names
are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2007. On June 19, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On June 20, 2007, eNom 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”), 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”).
On June 27, 2007, the Respondent offered to handover the disputed domains to the Complainant and provided EPP transfer keys for each of the domains to the Complainant and to the Center. The Center notified the offer of the Respondent to the Complainant and informed the parties of the possibility to suspend the proceedings in order to settle the case. On July 18, 2007, the Complainant declined the offer for suspension of the proceedings and desired the decision in accordance with paragraphs 4(1) of the Policy and 15 of the Rules. The Respondent reiterated its offer on several occasions.
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 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2007. The Response was filed with the Center on August 8, 2007.
The Center appointed Amarjit Singh as the sole panelist in this matter on September 11, 2007. 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
4.1 The Complainants are Sanofi-Aventis and Aventis Inc.
4.2 Sanofi-Aventis owns a large number of AMBIEN trademarks in more than 50 countries including the United States of America and the European Community. Aventis Inc. is also owner of numerous trademarks ALLEGRA in major countries such as the United States of America. A list of the Complainant’s worldwide trademark applications or registrations for the AMBIEN trademark is attached at Annex [6] of the Complaint and copies of some of the Complainant’s worldwide registration certificates for the AMBIEN and ALLEGRA’s trademarks are attached at Annex [7] of the Complaint.
4.3 The Complainant and its affiliates registered numerous domain names worldwide containing the AMBIEN and ALLEGRA trademarks, for example ; ; ; ; ; ; ; . Copies of the WHOIS search results for a selection of those domain names are attached in Annex [8] of the Complaint.
4.4 The other Complainant, Aventis Inc., is an incorporated company established in the United States of America and a company of the Sanofi-Aventis group. Aventis Inc. develops and sells utility drugs in the field of respiratory and allergy diseases under various trademarks, including ALLEGRA.
4.5 The Complainant’s products are also marketed in Canada, providing treatments in several therapeutic areas: cardiology, thrombosis, the central nervous system, oncology, metabolic disorders and internal medicine. Allegra � is one of the major products marketed by Sanofi-Aventis in Canada.
4.6 AMBIEN is a product manufactured by Sanofi-Aventis and is indicated for the short-term treatment of insomnia.
4.7 ALLEGRA is a product developed and sold by the Sanofi-Aventis Group and treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat.
4.8 The Respondent’s registrations consists of the Complainant’s trademark with the addition of the generic words “aid”, “sleep”; “on-line”, “online”, “order”, “prescription”, “pharmacy”, “purchase”, “sleeping-pill”, “sleep”, “cheap”, “buy”, “generic”, “order”, “pill” and the gTLD “.info”.
4.9 The domain names , , , , ,
, ,
, , were registered on July 27, 2006, and the domain names and were registered on July 28, 2007.
5. Parties’ Contentions
A. Complainant
The Complainants contend the following:
5A.1 The Complainant Sanofi-Aventis is now a multinational company present in more than 100 countries across 5 continents.
5A.2 The Complainant has a large portfolio of high-growth drugs, with 8 blockbusters pharmaceuticals in 2005: Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It enjoys firmly established positions in 7 key fast-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
5A.3 Employing approximately 97181 people worldwide, Sanofi-Aventis has a sales force of 35,030 persons, 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 Sanofi-Aventis is 103,697 millions of Euros.
5A.4 The other Complainant, Aventis Inc., is an incorporated company established in the United States of America and a company of the Sanofi-Aventis group. Aventis Inc. develops and sells utility drugs in the field of respiratory and allergy diseases under various trademarks, including ALLEGRA.
5A.5 The Complainant’s products are marketed in the United States of America through a number of channels:
- the Sanofi-Aventis subsidiary;
- alliances with Bristol-Myers Squibb for Plavix� and Avapro�, with Teva Pharmaceuticals for Copaxone� and with Procter & Gamble Pharmaceuticals for Actonel� (sales of which are not consolidated by Sanofi-Aventis);
- license agreements, in particular on Cordarone� and Depakine�.
5A.6 Sanofi-Aventis is a major player on the pharmaceutical market in the United States of America. With eight flagship products, among which Ambien and Allegra, the Group consolidated its excellent positioning in major therapeutic areas: cardiovascular, thrombosis, cancer, diabetes, central nervous system, internal medicine, metabolic disorders and vaccines.
5A.7 The main contributors to growth in 2004 were:
Plavix�, still the Group’s best-selling product in the United States of America with 34% sales growth;
Ambien�, up by 21% and keeping its number one position on the hypnotics market;
Lovenox�, which again outperformed the market with 20% growth sales.
5A.8 The Complainant’s products are also marketed in Canada, providing treatments in several therapeutic areas: cardiology, thrombosis, the central nervous system, oncology, metabolic disorders and internal medicine. Allegra � is one of the major products marketed by Sanofi-Aventis in Canada.
5A.9 Ambien is a product manufactured by Sanofi-Aventis and is indicated for the short-term treatment of insomnia.
This product was launched in the United States of America in 1993. In 1994, “AMBIEN was considered as the market leader with 27% of total prescriptions” (see Annex [3] of the Complaint).
According to a study carried out by IMS health in December 2003, it appears that AMBIEN is the leading prescription sleep aid in the United States of America. As a matter of fact, the product demonstrated safely and effectively that it treated insomnia intermittently with no evidence of tolerance or dose escalation.
In May 2004, a study was presented at the American Psychiatric Association Annual Meeting which evaluated up to 5 nights of dosing per week, as needed, and emphasized that the improvements in sleep provided by AMBIEN did not diminish over time and that symptoms did not worsen on the days the product was not used (see Annex [4] of the Complaint).
Since 20% to 30% of the population suffers from insomnia and AMBIEN is the leading prescription sleep aid, there is no doubt that AMBIEN is very well-known.
5A.10 ALLEGRA is a product developed and sold by the Sanofi-Aventis Group and treats the symptoms of seasonal allergies, such as nasal congestion, watery eyes, sneezing and itchy throat.
As described on the website “www.”, “When it comes to relieving you seasonal allergy symptoms like sneezing, runny nose or throat, or itchy, watery red eyes, you can count on long lasting Allegra 180 mg”. (Annex [5] of the Complaint).
ALLEGRA is marketed in more than 55 countries including the United States of America and Canada.
5A.11 Considering the huge number of domain names registrations infringing the Complainant prior rights which included the trademark AMBIEN, the Complainant had to file many UDRP complaints to obtain the transfer of the contentious domain names.
To date, all the decisions rendered by UDRP panelists in respect with the trademark AMBIEN, have ordered the transfer of the disputed domain names to the Complainant (see Annex [9] of the Complaint).
5A.12 Many WIPO decisions have also ordered the transfer of domain names which include the ALLEGRA trademark (See Annex [10] of the Complaint).
5A.13 The Respondent’s registration consists of the Complainant’s trademark with the addition of the generic words “aid”, “sleep”; “on-line”, “online”, “order”, “prescription”, “pharmacy”, “purchase”, “sleeping-pill”, “sleep”, “cheap”, “buy”, “generic”, “order”, “pill” and the gTLD “.info”.
5A.14 The Complainant has prior rights in the AMBIEN and ALLEGRA trademarks, which precede the Respondent’s registration of the domain names.
5A.15 Moreover, the Complainant’s trademarks are present in over 50 countries and are well-known throughout the world.
5A.16 Furthermore, there is no license, consent or other right by which the Respondent would have been entitled to register or use the domain names incorporating the Complainant’s trademarks AMBIEN and ALLEGRA.
5A.17 As it is demonstrated above, the Respondent has no prior right in respect of the signs AMBIEN and ALLEGRA and no authorization to use this sign in any form and knows this sign perfectly well. Thus, the registrations of the disputed domain names have not been made with bona fide intention.
5A.18 The Respondent has registered 13 domain names composed of the Complainant’s trademarks. The registration of multiple domain names is also evidence of bad faith (see TV Globo Ltda. v. Green Card Transportes e Eventos Ltda.,WIPO Case No. D2000-0351; Ourisman Dodge, Inc. v. Ourisman "Okie doke" Dodge dot com and Ourificeman Dodge dot com,WIPO Case No. D2001-0108).
5A.19 It is clear that the Respondent has registered the disputed domain names with the knowledge that AMBIEN and ALLEGRA are medical products.
5A.20 In addition, due to the various communications on the Internet on that product, the Respondent, which promotes medical websites as well as products that compete with the Complainant’s products such as SEDITOL, could not ignore that AMBIEN is a leading prescription sleep aid and ALLEGRA one of the leading treatment for seasonal allergies.
5A.21 On August 17, 2006, a cease and desist letter was sent to the Respondent in order to obtain the transfer of the domain names. The Respondent never replied to that letter (See Annex [14] of the Complaint) resulting in the filing of Complaint with the Center.
B. Respondent
The Respondent, in its Response consented to the transfer of the disputed domain names to the Complainant and submitted that having known the infringement of the Complainant’s trademark, it did not desire to retain the disputed domain names. The Respondent did not claim any ownership in the disputed domains and apologized for registering the same. The Complainant declined the offer, as aforesaid, and desired the decision in accordance with the Policy and the Rules.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. It is therefore appropriate, to examine the issues in the light of the evidence.
Paragraph 4 of the Policy provides that the onus of proof is on the Complainant. It has been established by previous panels in UDRP proceedings that the standard of proof is generally on the balance of probabilities.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names of the Respondent be transferred to the Complainant or cancelled:
1. The domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain names; and
3. the domain names have been registered and are being used in bad faith.
That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
6A.1 Sanofi-Aventis owns a large number of AMBIEN trademarks in more than 50 countries including the United States of America and the European Community. Aventis Inc. is also owner of numerous trademarks ALLEGRA in major countries such as the United States of America or Canada. A list of the Complainant’s worldwide trademark applications or registrations for the AMBIEN trademark is attached at Annex [6] of the Complaint and copies of some of the Complainant’s worldwide registration certificates for the AMBIEN and ALLEGRA’s trademarks are attached at Annex [7] of the Complaint. Given the large number of the Complainant’s registrations for AMBIEN and ALLEGRA trademarks worldwide, it is presumably not practicable to annex to the Complanit copies of all the global trademark filing or registrations.
6A.2 The Complainant and its affiliates registered numerous domain names worldwide containing the AMBIEN and ALLEGRA trademarks, for example ; ; ; ; ; ; ; . Copies of the WHOIS search results for a selection of those domain names are attached in Annex [8] of the Complaint. Given the large number of domain names registered by the Complainant, it is presumably not practicable to annex to the Complaint details of all these domain names.
6A.3 The Respondent’s registration consists of the Complainant’s trademark with the addition of the generic words “aid”, “sleep”; “on-line”, “online”, “order”, “prescription”, “pharmacy”, “purchase”, “sleeping-pill”, “sleep”, “cheap”, “buy”, “generic”, “order”, “pill” and the gTLD “.info”.
6A.4 A wide variety of panelists have considered that the addition of generic words to trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant (see Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS COMPUTER INDUSTRY,WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services,WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja,WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman,WIPO Case No. D2001-1184).
6A.5 In relation to domain names which include a trademark and for instance the term “aid”, the panelists took the view that the use of the generic and descriptive terms in conjunction with the Complainant’s trademark does not remove the domain names in dispute from being confusingly similar, the generic terms lacking in distinctiveness. In a recent case, the Panel ordered, in particular, the transfer of the domain name to the Complainant, considering, in relation to the first of the three required elements under the Policy, that “the mere addition of a generic word to a registered trademark has consistently been deemed insufficient to avoid confusing similarity under previous panel decisions under the UDRP similar to the present case” (see Sanofi-Aventis v. After Hours Hosting,WIPO Case No. D2006-0469).
6A.6 The same solution was reached regarding the domain names composed of the Ambien trademark and the generic word “sleep”. Indeed, in a recent case, the Panel ordered the transfer of the domain name to the Complainant, considering in relation to the first element that “the addition of the descriptive word “sleep” to the mark does nothing to dispel a connection in the public mind between the pharmaceutical name and its owner, the Complaint”. (See Sanofi-Aventis v. Clickstream Marketing LLC,WIPO Case No. D2005-0769).
6A.7 Concerning domain names composed of a trademark, and generic words such as “online”, “order”, “prescription” or “purchase”, the Panelist ordered the transfer of these domain names to the Complainant (Sanofi-aventis v. Beres,WIPO Case No. D2006-0877; Sanofi-aventis, Aventis Pharmaceuticas Inc, Aventis Pharma SA v. Conor O’ConnorWIPO Case No. D2006-1310; Sanofi-aventis v. One star Global,WIPO Case No. D2006-0583; Sanofi-Aventis v. ActiveI, Jason Peterson, WIPO Case No. D2006-0987).
6A.8 Therefore, and after analyzing different UDRP cases, there is no doubt in the Panel’s mind in the present case that the reproduction of the AMBIEN and ALLEGRA trademarks, as the sole distinctive element of the domain names concerned, generates confusion. Indeed, persons accessing the domain names would be likely to think that the domain names have a connection with the Complainant.
6A.9 Furthermore, the addition of the gTLD “.info”, 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 (see Sanofi-Aventis v. ProtectF/RegisterF,WIPO Case No. D2006-1272).
6A.10 In conclusion, the Panel considers and holds that the domain names ; ; ; ; ; ; ; ; ; ; ; ; are confusingly similar to the Complainant’s trademarks AMBIEN and ALLEGRA.
B. Rights or Legitimate Interests
6B.1 Paragraph 4(c) of the Policy lists the following three non-exclusive methods for determining whether Respondent has rights or legitimate interests in a disputed domain name:
“(i) before any notice to you 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 (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 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.”
6B.2 As to the circumstances under paragraph 4(c)(i) of the Policy, Complainant has not consented to the Respondent’s use of the domain names, which incorporates the Complainant’s trademarks AMBIEN and ALLEGRA or the marks as are deceptively similar thereto.
6B.3 The disputed domain names have apparently been used by the Respondent to redirect to a website promoting medical websites as well as medical products, such as Seditol or Paxil. A copy of the web pages relating to the disputed domain names is attached at Annex [13] of the Complaint.
6B.4 Furthermore, the Respondent’s site appears to do “nothing to disclaim any relationship with the trademark owner”, or to dispel any possible suggestion that it might be the trademark owner, or that it might be an official site of the Complainant. (See Sanofi-Aventis v. ClickStream Marketing LLC,WIPO Case No. D2005-0769).
6B.5 The notion of bona fide has notably been discussed by the panel in the UDRP decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, where it was held that, to be bona fide within paragraph 4(c)(i) of the Policy, the offering must meet several minimum requirements, being that:
- the Respondent must actually be offering the goods or services at issue;
- the Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and
- the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
There is no doubt in the Panel’s mind in the present case that the Respondent does not use the domain names in connection with a bona fide offering of goods or services.
6B.6 It is obvious that the Respondent is aware that AMBIEN and ALLEGRA correspond to medical products and therefore to trademarks.
6B.7 In the Panel’s view, the Respondent would have been unlikely to have registered the disputed domain names if it had not known that AMBIEN was a leading prescription sleep aid and ALLEGRA a well-known treatment for seasonal allergies. In its reply, the Respondent submitted that having been altered to the infringement of Complainant’s trademarks, it did not desire to retain the disputed domain names.
6B.8 The Respondent has no authorization to use the trademarks AMBIEN and ALLEGRA. Furthermore, using domain names in order to divert consumers for commercial gain cannot be characterized as a fair use. (T v. Daniel Deamone, WIPO Case No. D2001-1066).
6B.9 As a result, the Panel is satisfied that the Complainant has succeeded in establishing that the Respondent, has no rights or legitimate interests in respect of the domain names ; ; ; ; ; ; ; ; ; ; ; ; .
C. Registered and Used in Bad Faith
6C.1 For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
6C.2 Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 our documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the marks in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
6C.3 Under Paragraph 4(b)(iv) of the Policy, bad faith can be shown by circumstances indicating that Respondent deliberately used the domain name for commercial gain to divert Internet users based on a likelihood of confusion with the Complainant’s marks.
6C.4 In the present case, the Panel notes in particular the following elements:
- the Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN and ALLEGRA trademarks;
- the registration of multiple domain names including famous trademarks;
- the Respondent’s apparent awareness that AMBIEN is a leading prescription sleep aid and that ALLEGRA is one of the leading treatment for seasonal allergies;
- the addition of generic words to the trademark AMBIEN and ALLEGRA misleading Internet users since it makes them believe that the websites are the Complainant’s official website.
6C.5 In the present case, there is in the Panel’s mind little doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN and ALLEGRA products, has registered the disputed domain names in order to benefit commercially from likely confusion with the Complainant’s marks and possibly also to (and at least with knowledge that it may) prevent the Complainant from reflecting the marks in corresponding domain names. It is an opportunistic act, calculated to free-ride on the Complainant’s marks, which may have the effect of disrupting the Complainant’s business.
6C.6 The Panel further notes that the Respondent’s registration of the disputed domain names and the direction to the website or websites thereon appear calculated to make the Internet user believe that the websites are some of the official websites to buy AMBIEN or ALLEGRA products.
6C.7 It appears from these facts and the Panel so finds that the domain names
; ; ; ; ; ; ; ; ; ; ; ; have been registered and used in bad faith.
6C.8 The Panel also notes that there appears to be some indication on the record that the Respondent may be willing to settle the matter, although there is no indication before the Panel of agreement between the Parties as to any formal settlement. The Panel is also aware that there have been previous decisions in which panels have in certain circumstances been prepared to order transfer of genuine unilateral consent. However, in light of the Panel’s above findings on the three elements, it is not necessary for the Panel in the present case to consider that issuer further here.
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,
be transferred to the Complainant.
Amarjit Singh
Sole Panelist
Dated: September 25, 2007
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