The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Brian Nagele of Douglassville, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 15, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On April 19, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent was 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 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2011.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on May 23, 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 is a large multi-national pharmaceutical company engaged in the development and marketing of medicines. One of the Complainant’s products, a treatment for insomnia, is sold throughout the world under the trade mark AMBIEN.
The Complainant has registered trade marks for AMBIEN in many countries for pharmaceutical products, the oldest of which is the French mark (trade mark number 93456039) registered on February 19, 1993. The Complainant has also registered the domain name on April 12, 2000.
The disputed domain name was registered on July 24, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trade marks in that it includes the AMBIEN trade mark in its entirety: the further words “no prescription” which follow the Complainant’s trade mark are said to be descriptive or generic and therefore do not avoid confusion from arising. In fact, the Complainant avers that these additional words, which have medicinal connotations, increase the likelihood of confusion in that they imply that AMBIEN is being used to describe the Complainant’s medicinal product.
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. In support of this submission, the Complainant points to the following. First, the Respondent’s name bears no resemblance to the Complainant’s trade marks. Second, the Complainant has not licensed or otherwise authorized the Respondent’s use of the trade marks. Third, the Respondent is using the disputed domain name to run an online pharmacy selling products which compete with the Complainant’s Ambien product, but not the Complainant’s product.
The Complainant contends that the domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion. The Complainant believes that it is inconceivable that the Respondent was unaware of the Complainant’s trade mark at the time he registered the disputed domain name in view of the fact that AMBIEN is a well known and distinctive trade mark and the Respondent is in the business of selling medicinal products. Accordingly, the Respondent is said to have registered and to be using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To be satisfied that the Complaint is made out and to order the transfer of the disputed domain name the Panel must be satisfied that each of the following three elements set out under paragraph 4(a) of the Policy is made out:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has rights in the trade mark AMBIEN by virtue of trade mark registrations throughout the world.
The disputed domain name includes the trade mark followed by the words “no” and “prescription”. Given that the trade mark is used by the Complainant in relation to pharmaceutical products, i.e. products which typically require a prescription, these additional words do little to avoid confusion from arising; if anything, they only serve to increase confusion because they suggest that the “ambien” part of the disputed domain name is, indeed, a reference to the Complainant’s medicinal product. This finding is supported by the decisions of previous panels – see, for example, Roche Products Inc. v. Slava c/o DynadotPrivacy, WIPO Case No. D2010-1862.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade marks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its AMBIEN trade mark. Furthermore, there is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent uses the disputed domain name to operate an online pharmacy. This is plainly a commercial enterprise.
The Respondent has a limited product range that does not appear to include the Complainant’s Ambien product (or any other product of the Complainant). All of the products sold by the Respondent using the disputed domain name appear to be medicines for providing pain relief. Although the products sold by the Respondent do not appear to be direct substitutes for the Complainant’s Ambien product (pain killers vs. sleep inducing drug), in the Panel’s view, the Respondent’s use of the disputed domain name is prima facie not bona fide, because it uses the Complainant’s trade mark to sell medicinal products that do not originate from the Complainant.
The Panel’s view is that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name such that the burden shifts to the Respondent to rebut that case. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. In the absence of any Response by the Respondent, the Panel draws the inference that the Respondent has no rights or legitimate interests in the disputed domain name – see, for example, Betsson Malta Limited v. John Droker,WIPO Case No. D2010-0883, and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
It seems very unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant’s AMBIEN trade mark. Ambien is a made up word with no natural meaning in the English language. It has been used for many years by the Complainant to promote an insomnia medicine which, in recent years, has consistently ranked among the top 50 medicines by value in the United States. The likelihood of the Respondent choosing this same word to sell medicines without prior knowledge of the Complainant’s product is therefore extremely improbable.
The most likely explanation for the Respondent including the Complainant’s trade mark in the disputed domain name (absent any indication to the contrary from the Respondent), is that the Respondent was seeking to attract Internet users to its website by falsely suggesting that his website had some connection with the Complainant.
The Panel, therefore, concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Charters Macdonald-Brown
Sole Panelist
Dated: June 6, 2011
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