The Complainant is Sanofi-aventis of Paris, France represented by Selarl Marchais De Candé, France.
The Respondent is George Wyatt of Wilmington, Delaware, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with Intercosmos Media Group d/b/a directNIC.com. 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 Intercosmos Media Group d/b/a directNIC.com (the “Registrar”) a request for registrar verification in connection with the Disputed Domain Names. On the same date, the Registrar 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 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2011.
The Center appointed Isabel Davies as the sole panelist in this matter on June 17, 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
The Complainant contends that it has registered AMBIEN as an International trademark, registration number 605762. The AMBIEN mark designates class 5, pharmaceutical products.
The Respondent registered the Disputed Domain Names and on July 29, 2010.
The Complainant contends that the Respondent operates websites which re-direct Internet users to websites selling counterfeit or generic Ambien products in direct competition with the Complainant, at websites resolving to be the Disputed Domain Names. The Complainant has not provided any evidence that the products sold at “” are counterfeit Ambien products. 5. Parties’ Contentions A. Complainant
The Disputed Domain Names Are Confusingly Similar to the Complainant’s Mark
The Complaint contends that the Disputed Domain Names and are confusingly similar to the Complainant’s trademark AMBIEN and the Complainant’s domain name .
The Complainant contends that the Disputed Domain Names incorporate AMBIEN, a highly distinctive trademark, in its entirety. The addition of the generic and descriptive terms “pharmacy” and “drugstore” does not imply that the Disputed Domain Names are distinguished from the trademark AMBIEN with the effect that confusion is avoided. Further, the likelihood of confusion is ascertained by reason of the notoriety of the trademark AMBIEN in the present case. The Complainant contends the product Ambien is a very well established sleeping aid which is known by that name and trademarks AMBIEN around the world.
The Respondent Has No Rights or Legitimate Interests in the Disputed Domain Names
The Complainant contends that it is obvious that the Respondent does not have any legitimate interest in using the Disputed Domain Names since the name of its owner is George Wyatt which does not have any resemblance with the word “Ambien”. The Complainant further contends that the Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide trade-marks AMBIEN owned by the Complainant.
The Complainant contends that it has not granted the Respondent any license or other authorization to use its trademarks in relation with the Disputed Domain Names and there is no relationship whatsoever between the Complainant and the Respondent.
The Complainant contends that the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services but has rather used the Disputed Domain Names in order to redirect Internet users to a website selling counterfeit or generic Ambien products without prescription. By doing so, the Complainant asserts the Respondent is not making legitimate non-commercial or fair use of the Disputed Domain Names. The Complainant states that the Respondent is not affiliated with the Complainant in any way, but clearly lets users think that it is. The Complainant contends that by allowing Internet users to search for official information about Ambien on the Disputed Domain Names’ websites this adds to the impression that these are authorized sites.
Finally, the Complainant contends that the Respondent is using the Disputed Domain Names to obtain commercial gain by misleadingly directing consumers seeking the Complainant’s website or Ambien products to his website.
Registered and Used in Bad Faith
The Complainant contends that the Disputed Domain Names were registered in bad faith and are being used in bad faith.
The Complainant contends that the Respondent has registered the Disputed Domain Names in bad faith because they correspond to the Complainant’s trademarks and that this has undoubtedly been done abusively in order to take benefits from its notoriety. The Complainant states that it is one of the leaders among pharmaceutical companies, ranked first in Europe and ranked fourth in the world in the pharmaceutical industry.
The Complainant contends that the Respondent’s knowledge is also proved by the fact that the Disputed Domain Names lead to an online pharmacy which proposes for sale Ambien’s generic or counterfeit products.
The Complainant further contends that it is inconceivable that the Respondent registered the Disputed Domain Names unaware of the Complainant’s rights and reputation.
Furthermore, the Complainant contends that the Disputed Domain Names were registered for the purpose of making unfair benefit of the Complainant’s trademarks’ notoriety. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The Respondent’s Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names;
(iii) The Respondent’s Domain Names have been registered and are being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Names. A. Identical or Confusingly Similar
The Complainant is the owner of an International trademark registration number 605762, which was registered before the Disputed Domain Names were registered. The Disputed Domain Names incorporate the Complainant’s trademark in its entirety and, in addition, the words “pharmacy” or “drugstore”. The Disputed Domain Names are not identical to the trademarks held by the Complainant and the question is therefore whether there is confusing similarity.
The Panel agrees with the Complainant that the addition of the words “drugstore” or “pharmacy” is not sufficient to render the Disputed Domain Names dissimilar or to prevent customer confusion. (See F.Hoffman-La Roche AG v. Pinetree, Development, Ltd.,WIPO Case No. D2006-0049; Roche Products Inc. v. Slava c/o Dynadot Privacy, WIPO Case No. D2010-1862 and Roche Products Inc. v. Peter Tonderby/Tonderby Designs Ltd, WIPO Case No. D2006-0698).
Numerous UDRP panels have held that the incorporation of a complainant’s trademark in a disputed domain name can be powerful evidence of confusing similarity between the disputed domain name and the complainant’s trademark (Nokia Group v. Mr Giannattasio Mario, WIPO Case No. D2002-0782).
The words “drugstore” and “pharmacy” are common terms in English language, which are connected with the Complainant’s goods for which its trademarks are registered. The Panel notes the decision Sanofi-Aventis v Demand Domains, Inc.WIPO Case No. D2008-1484, in which the panel stated “Internet users may simply assume that the Domain Name must resolve to an online drugstore at which the Complainant’s AMBIEN drug is marketed.”
For the reasons stated above, the Panel holds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraphs 4(c)(i)(iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interest in a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert to consumers.
A complainant must show a prima facie case that the respondent lacks rights or legitimate interest in a disputed domain name, after which the burden of production passes to the respondent. ( See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant contends that the Respondent’s websites re-directs Internet users to a website selling generic Ambien and counterfeit Ambien products. Further, it contends that the Respondent’s websites are misleading Internet users by offering to search for official information about Ambien giving the impression that the sites are officially authorized by the Complainant. The Complainant has not provided any evidence that the products for sale on the website that Internet users are redirected to through the Respondent’s websites are counterfeit.
The Panel finds that the terms used by the Respondent are not used to identify its business, or the business of the resulting website, to which the Disputed Domain Names are linked, but were intended to take advantage of mistakes consumers are likely to make when intending to enter the Complainant’s website. This does not constitute legitimate use of the disputed domain name. (See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784).
The Panel cannot find the webpage shown at Annex 12 of the Complainant’s evidence. Further, the Panel cannot find any reference to AMBIEN on the Respondent’s websites. These seem to have been removed. However, in the absence of a Response, the Panel accepts the Complainant’s evidence that the Respondent’s website did redirect Internet users to “” which sold generic Ambien products when Internet users clicked on the link “BUYAMBIEN”. The Panel finds that the webpage shown at Annex 12 of the Complainant’s evidence gives the impression that it is an official Ambien website. Further, the Panel finds that redirecting Internet users to a website selling generic Ambien products does not give the Respondent the right to register and use the Complainant’s trademark as a domain name without the consent of the holders of the trademark. Thus, the Respondent is prevented from having prior rights to or legitimate interests in the disputed domain names as against the Complainant (see Aventis Pharma S.A. and Merrell Pharmaceuticals v. Rx USA, WIPO Case No. D2002-0290).
The Respondent has not submitted a Response to explain why the Disputed Domain Names were used in such a way when there is no obvious connection between the Respondent and the Complainant. As stated in paragraph 15 of the Rules, the Panel can only make its decision based on the information and evidence submitted before it and, given the circumstances, the Panel deems that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds it inconceivable that the Respondent could have registered the Disputed Domain Names without having the Complainant’s AMBIEN trademarks in mind. The Panel finds that the Respondent acted intentionally. The drugs-related content of the Respondent’s websites also confirms that the Respondent must have been aware of the meaning of AMBIEN when it registered the Disputed Domain Names.
The Disputed Domain Names are dedicated to attract Internet users, for commercial gain, to online pharmacies in the belief that they have some connection with the Complainant’s trademark as to source, affiliation or endorsement, when in fact there is no such connection. The sites accessed through the Disputed Domain Names, which include the Complainant’s trademark AMBIEN and the descriptive terms “pharmacy” or “drugstore”, are selling sleeping aid products in direct competition with the Complainant. Therefore, the Panel finds that the Respondent’s sites at the Disputed Domain Names create a likelihood of confusion with the Complainant’s AMBIEN trademark and that the Respondent did so intentionally to attract Internet users for commercial gain.
Accordingly, for the reasons discussed above, the Panel finds that the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
The Panel finds the Disputed Domain Names are registered and are being used in bad faith and the Complainant has therefore met 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 Disputed Domain Names and be cancelled, as requested by the Complainant.
Isabel Davies
Sole Panelist
Date: July 4, 2011
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