WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-aventis v. Whoisguard, tvforever, michael trinidad Case No. D2009-1671 1. The Parties
The Complainant is Sanofi-aventis of Paris, France, represented by Cabinet Fontaine Law Firm, France.
The Respondents are Whoisguard of Westchester, California, United States of America; and tvforever, michael Trinidad of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2009. On December 8, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 8, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 16, 2009. 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” 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 December 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 7, 2010.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on January 11, 2010. 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 pharmaceutical company. The Complainant is the registered owner of a number of trademark registrations of AMBIEN in more than 50 countries including:
- AMBIEN, American trademark registration no. 1 808 770 dated December 7, 1993, covering goods of the international class 5, as follows:
“Pharmaceutical preparations for the treatment of sleep disorders”
- AMBIEN CR, American trademark registration no. 3 276 106 dated August 7, 2007, covering goods of the international class 5, as follows:
“Pharmaceutical preparations for the treatment of sleep disorders”
- AMBIEN, Canadian trademark no. TMA437, 514, filed on May 29, 1991 and registered on December 30, 1994, covering goods of the international class 5, as follows:
“Pharmaceutical preparations for the treatment of sleep disorders”
- AMBIEN, French trademark registration no. 93 456 039 dated February 19, 1993, covering goods of the international class 5, as follows: “Pharmaceutical preparations”
- AMBIEN, International trademark registration no. 605 762 dated August 10, 1993, registered under priority of the French trademark registration No. 93 456 039 above-mentioned, and covering goods of the international class 5, as follows: “Pharmaceutical preparations”
- AMBIEN, Community trademark registration No. 003991999 dated November, 28, 2005, covering goods of the international class 5, as follows:
“Pharmaceutical preparations”
All the above trademarks contain the distinctive word “Ambien” and the registration dates are prior to the registration date of the disputed domain name .
The Complainant also owns key domain names which incorporate its trademark AMBIEN, including , , , , and .
The Respondent registered the disputed domain name on January 7, 2009.
The website of the disputed domain name is an online pharmacy for the online sale of pharmaceutical products. At the time the Complaint was filed, the homepage of the website had set headers, which listed “Valium”, “Ativan”, “Xanax”, “Clalis”, “Viagra”, “Tamiflu”, “Lunesta” and “Ambien” etc. with their prices. On the right side of the website, there were headers listed as “Anti Viral”, “Anti-depressant”, “Herbal Products”, “Insomnia”, “Men's Health”, “Pain medicine”, “Stop Smoking” and “Weight Loss”. 5. Parties' Contentions A. Complainant
The Complainant Sanofi-aventis identifies itself one of the world's largest pharmaceutical companies, with business presence in more than 100 countries across five continents. The Complainant is listed in Paris (EURONEXT: SAN) and New York (NYSE: SNY) and it is notably doing business in the United States, where Sanofi-aventis Group has subsidiaries including Sanofi-Synthelabo Inc., Aventis Pharmaceuticals Inc. and Sanofi Pasteur Inc.
Ambien is one of the Complainant's top 15 products and is used for the short-term treatment of sleeping disorders. It was launched in the United Stated of America in 1993, and has occupied a leading market position since its introduction on the American market. Ambien has been reported in many articles of press in the United States and other countries. In September 2005, the Complainant launched a new version of its Ambien product, named Ambien CR, the first and only extended release prescription sleep medication, specifically indicated for the long term treatment of insomnia. The U.S. Food and Drug Administration (FDA) has duly approved Ambien CR product. In 2006, the advertising budget of the Complainant for the launching of Ambien CR reached USD208 million according to TNS Media Intelligence. The trademarks AMBIEN and AMBIEN CR have gained and enjoy a substantial goodwill and a valuable reputation all around the world, as designating the Complainant's medicine against insomnia. It is submitted that the high reputation of AMBIEN is notably established by the fact that main search engines, especially American ones (Google, Yahoo, Altavista, Lycos), systematically list the Complainant's web sites as their first result when one types the word “Ambien”.
The Complainant alleges that the disputed domain name wholly incorporates the Complainant's registered marks and is confusingly similar to the famous trademark AMBIEN owned by the Complainant.
The Complainant argues that the Respondent has no prior rights in the name AMBIEN, and the Respondent has never been authorized to use the AMBIEN trademark and is not a licensee of the Complainant. The Complainant contends that the Respondent does not operate a business, have a corporate name, company, products or services under the name AMBIEN and has no rights to any trade name or registered trademark including AMBIEN. The Complainant further contends that the Respondent has never carried on business under any name resembling “Ambien”, in connection with a bona fide offering of goods and services.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant alleges that the Respondent has been aware of AMBIEN, given the goodwill and reputation of the Complainant's AMBIEN trademark. The Complainant argues that if the Respondent had not known the name “Ambien” as the well-known Complainant's trademark designating the leading prescription sleep aid, it would never have created a domain name incorporating such a name. The Complainant further argues that the Respondent's awareness is established from the fact that the Respondent has taken active steps to conceal its true identity, by operating under the “WhoisGuard” protected name.
The Complainant contends that the disputed domain name is being used in bad faith. The Complainant argues that the disputed domain name is used to offer for sale competing medical products and Ambien products, which is not in connection with a bona fide offering of goods and services. The Complainant contends that the Respondent clearly intents to divert Internet users by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship or affiliation, or endorsement of the Respondent's trade. The Complainant further contends that the disputed domain name is obviously connected with the Complainant and its products, and its very use by the Respondent with no connection to the Complainant suggests opportunistic bad faith.
The Complainant argues that, on May 19, 2009, the Complainant sent a cease and desist letter to the Respondent but the Respondent failed to reply. The Complainant asserts that the fact the Respondent failed to reply to the demand letter and refused to transfer the disputed domain name to its legitimate owner, corroborates bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name the Complainant must prove that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the documents provided by the Complainant, the Panel is satisfied that the Complainant has well proven that it is the owner of the trademarks AMBIEN and the high reputation of the trademark AMBIEN.
The disputed domain name wholly incorporates the Complainant's trademark AMBIEN. It only differs from the Complainant's trademarks with the addition of the gTld suffix “.info” and the components “next” and “day”, which are generic terms. The relevant part of the domain name to be considered for identity and similarity is the “ambien-next-day”. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Lilly ICOS LLC v. The Counsel Group, LLC,WIPO Case No. D2005-0042.
AMBIEN is a very distinctive trademark of the Complainant's well-known products, with high reputation internationally, and it is the only distinctive part of the disputed domain name. The addition of the generic words to the Complainant's trademark does not help to alleviate its confusing similarity to the Complainant's trademark. The Panel finds the disputed domain name is confusingly similar to the Complainant's trademark AMBIEN, in which the Complainant has rights. B. Rights or Legitimate Interests
As the Complainant stated, the Complainant has not authorized the Respondent to use the AMBIEN trademark and the Respondent is not a licensee of the Complainant. The Panel is persuaded that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Panel notes that the Respondent has failed to file a Response to prove its rights or legitimate interests under paragraph 4(c) of the Policy, establishing rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be present, 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 your 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 mark 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 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 your web site or location or of a product or service on your web site or location.”
The Complainant Sanofi-aventis is one of the world's largest pharmaceutical companies and is listed in Paris (EURONEXT: SAN) and New York (NYSE: SNY). AMBIEN is the trademark for one of the Complainant's top 15 products and the Complainant has registered a great number of trademarks and domain names reproducing the mark AMBIEN. The trademark AMBIEN and AMBIEN CR were also registered in the United States and the Complainant owns domain name . AMBIEN has occupied a leading market position, particularly on the American market since it was launched in the United Stated of America in 1993. The Complainant has set up regional sales offices, research centers, manufacturing bases and distributors in many cities in the United State. In 2006, the advertising budget of the Complainant for the launching of the Complainant's new product AMBIEN CR reached USD208 million. Many articles of press reported AMBIEN including those in the United Stated. The trademark AMBIEN and AMBIEN CR of the Complainant have gained and enjoy a substantial goodwill and valuable reputation in the United States and all over the world.
The website of the domain name is an online pharmacy selling trademarked products and other pharmaceutical products. It is very likely that the Respondent knew of the Complainant and Complainant's trademark based on the high reputation of the trademark and its successful business in the United Stated and the world. Here, the fact that the Respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name constitutes bad faith. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. The Panels finds that the disputed domain name has been registered in bad faith.
The Panel further notes that the Respondent has used the disputed domain name to offer for sale both the Complainant's trademarked products and other medical products including competing products. It indicates that the Respondent intentionally attempted to attract Internet users to its web site or other on-line location to buy goods on its web site including competing products, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or a product or service on its web site or location. The Panel finds the fact that the Respondent has traded on the fame of the Complainant's trademark to offer for sale of competing products to the Complainant's products amounts to evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel also notes that the Respondent failed to reply to the cease and desist letter sent by the Complainant. Prior panels have held that a failure to respond to a cease and desist letter can be further evidence of bad faith. See Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946.
In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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, be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Dated: January 25, 2010
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