The Complainant is Sanofi-aventis of Gentilly, France, represented by Selarl Marchais De Candé, France.
The Respondent is Sergii c/o Dynadot Privacy of San Mateo, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2011. On April 14, 2011, the Center transmitted by email to Dynadot, LLC. a request for registrar verification in connection with the disputed domain name. On April 14, 2011, Dynadot, LLC. 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” 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 April 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2011.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on May 31, 2011. 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
According to the Complaint, the Complainant is a multinational company present in more than 100 countries across 5 continents; the enterprise is the fourth largest pharmaceutical company in the world.
It has been formed during the summer of 2004 further the merger between the two French companies Aventis SA and Sanofi-Synthelabo.
Sanofi-Aventis offers a wide range of high-growth drugs.
In the field of central nervous system, Sanofi-Aventis developed and sells throughout the world a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN.
The disputed domain name was registered on April 1, 2010.
The website of the disputed domain name is an online swiss pharmacy for online sale of various kinds of pharmaceutical products including Xanax, Vicodin, Ativan and Ambien. The homepage of the website has visible advertisements for the online sale of Ambien with detailed definition and introduction description concerning Ambien. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to its AMBIEN trademark, considering that reproduces entirely the trademark AMBIEN which has no particular meaning. This reproduction of the Complainant's trademark in its entirety is confusingly similar to the Complaint's trademark despite the addition of the descriptive words “buy without a prescription” (Forest Laboratories, Inc. v. WhoisGuard Protected,WIPO Case No. D2008-0005).
Actually, the terms "buy without a prescription" enhance the connection with the Complainant's trademarks since they are commonly used in relation to medication, like it is done for AMBIEN. These words have a clear and direct descriptive meaning in respect of pharmaceutical products, for which prescriptions are required. These terms lead the Internet users to think that they can obtain some AMBIEN drugs without prescription when it is not.
Moreover Sanofi-Aventis is the owner of the trademark AMBIEN registered in several countries, as following indicated:
- AMBIEN French trademark No. 93 456 039 registered on February 19, 1993 in class 5 and duly renewed;
- AMBIEN International trademark No. 605762 registered on August 10, 1993 in class 5, duly renewed
and designating Algeria, Germany, Belarus, Benelux, Bulgaria, The People’s Republic of China, Croatia, Egypt, Spain, Russian Federation, Hungary, Kazakhstan, Lichtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, Saint Marin, Slovakia, Slovenia, Sudan, Switzerland, Ukrainian, Vietnam, Yugoslavia, Montenegro, Italia and Serbia;
- AMBIEN American trademark with the serial number 74345754 registered on December 7, 1993 in
class 5 and duly renewed;
- AMBIEN Community trademark No. 3 991 999 registered on November 28, 2005 in class 5 .
The Complainant has also registered the following domain names:
- registered on April 12, 2000;
- registered on November 19, 2001.
The Complainant requests that the disputed domain name be transferred to it. 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 disputed 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 disputed 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 there from, as it considers appropriate. A. Identical or Confusingly Similar
Based on the above mentioned evidence, the Panel finds that the Complainant has proven that it is the owner of the trademark AMBIEN.
The disputed domain name consists of the Complainant's trademark with the addition of the generic words "buy without a prescription". Moreover the Respondent has created confusing similarity between the disputed domain name and the trademarks of the Complainant.
As numerous prior UDRP panels have held in similar cases, it is clear that the disputed domain name is confusingly similar to the Complainant's trademark AMBIEN (noting the panel found similarly in the case regarding the domain name (Sanofi-Aventis v. N/A,WIPO Case No. D2009-0705). B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting pursuant to any rights or legitimate interests with respect to registering the disputed domain name.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark AMBIEN.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent uses the disputed domain name to provide links to an online pharmacy apparently through which generic AMBlEN products and others products of the Complainant's competitors are being offered for sale.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
The Respondent has intentionally registered the disputed domain name in order to offer generic version of competitor's products by misleading Internet users who may search for official information about AMBIEN.
Therefore, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent is using the disputed domain name to obtain commercial gain by misleadingly diverting consumers.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
First of all, regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 [the Respondent’s] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its registered trademark AMBIEN as a well-known pharmaceutical product of the Complainant for the treatment of insomnia, sold only with a prescription.
Again, by registering and using the disputed domain name incorporating the Complainant’s well-known registered trademark, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.
Furthermore, the fact that the disputed domain name includes the Complainant’s well-known trademark AMBIEN, held and used in commerce by the Complainant for several years prior to the date the Respondent became the registrant of the disputed domain name, the Respondent must have likely known and been aware of the Complainant’s rights in this mark at the time the Respondent registered the disputed domain name, which includes the Complainant’s mark, is a further factor supporting a conclusion of bad faith.
In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to the third condition of paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Eva Fiammenghi
Sole Panelist
Dated: June 14, 2011
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