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and Mediation Center
Sanofi-Aventis v. Gabe Smith
Case No. D2005-0605
1. The Parties
The Complainant is Sanofi-Aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Gabe Smith, Distrito Federal, Mexico.
2. The Domain Name and Registrar
The disputed domain name <buy-ambien-online.net> is registered with Go
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2005. On June 10, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 13, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 28, 2005. 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”), 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 June 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2005.
The Center appointed Gerd F. Kunze as the sole panelist
in this matter on July 27, 2005. 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,
4. Factual Background
The Complainant is one of the world’s largest pharmaceutical companies. It was created as of December 31, 2004, through the merger of Sanofi-Synthйlabo with Aventis. It is a multinational company with presence in more than 100 countries all over the world, including Mexico, where the products of the Complainant are marketed through a number of channels.
AMBIEN is a product manufactured by the Complainant and is indicated for the short-term treatment of insomnia. It was launched in the United States in 1993, and is considered to be the leading prescription sleep aid in that country. In May 2004, a study was presented at the American Psychiatric Association Annual Meeting that underscored that the improvements in sleep provided by AMBIEN did not diminish over time and symptoms did not worsen on days the product was not used.
The Complainant owns a large number of trademark registrations for the word AMBIEN in class 5 in more than 50 countries including the USA (registration No. 1808770, dated December 7, 1993), Mexico (registration No. 518064 dated February 12, 1996) and international registration No. 605 762, dated August 10, 1993.
These facts are documented by the Complainant.
The Complainant and its affiliates also registered many domain names worldwide containing the trademark AMBIEN, including the domain names <ambien.fr,> <ambien.us> and <ambien.co.uk>, <ambien.com> and <ambien.net>.
On April 18, 2005, the representatives of the Complainant wrote to the Respondent and demanded the disputed domain name to be transferred to the Complainant.
The Respondent registered on January 10, 2005, the domain name <buy—ambien-online.net>. The domain name leads to a website of the Registrar, where, under the heading: “Coming Soon” it is mentioned that the domain name is parked for free, as a courtesy of GoDaddy.com.
The Respondent failed to reply to the letter of the
representatives of the Complainant, dated April 18, 2005.
5. Parties’ Contentions
The Complainant submits that (A) the domain name <buy-ambien-online.net> is identical or confusingly similar to its trademark AMBIEN in which it has rights; It points out in this connection that many Panel decisions have considered that the addition of the terms “buy” and “online” to the Complainant’s trademark cannot exclude confusing similarity; (B) the Respondent has no rights ore legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit a Response. It
has therefore not contested the allegations of the Complaint and the Panel shall
decide on the basis of Complainant’s submissions, and all inferences that
can reasonably be drawn there from (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <buy-ambien-online.net> consists of the trademark AMBIEN of the Complainant, combined with the generic terms “buy” and “online” and the gtld “.net”.
The distinctive part of the domain name is identical with the Complainant’s trademark and the text of the domain name, as composed of its three elements invites the user to purchase the AMBIEN product online. Since the gtld “.net” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark, there can be no doubt that the domain name is confusingly similar to the Complainant’s trademark. Internet users, typing the Respondent’s domain name will expect to arrive at a website of the Complainant and will be confused when being confronted with a website of the Registrar, where the Registrar has parked the domain name and is advertising its services.
B. Rights or Legitimate Interests
The word AMBIEN is not a descriptive word. It is known as the trademark of the Complainant’s product that is the leading prescription sleep aid in the United States.
The Complainant has not licensed or otherwise consented to the use of its trademark AMBIEN to the Respondent. The Respondent apparently does not use, nor has made any preparations to use, the domain name <buy-ambien-online.net> in connection with a bona fide offering of goods or services. He cannot therefore be commonly known by that domain name. Furthermore, the Respondent does not make any non-commercial use of the domain name. The Respondent simply has parked for free the domain name on a website of the Registrar. Failing any submission of the Respondent the Panel therefore is satisfied that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Respondent does not actively use his domain name and he has never offered it to the Complainant for sale. It has therefore to be considered whether the simple registration and stockpiling of the domain name, taking into account all circumstances of the case, may be considered to be registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
(i) Registration in bad faith
The Respondent cannot have ignored that “AMBIEN” is a protected trademark of the Complainant in the United States. This can be deducted from the fact that the trademark AMBIEN has been registered in the United States (in the United States registration of a trademark in the USPTO amounts to constructive notice under 15 U.S.C. paragraph 1072) and in Mexico and that AMBIEN is the leading prescription sleep aid in the United States. Furthermore, the Complainant has rightly pointed out, that the Respondent registered the domain name only a few months after the publication of the results of a study at APA showing that AMBIEN is safe and effective with longer-term use. Finally, in view of all these circumstances, it cannot reasonably be imagined that the Respondent constructed the domain name <buy-ambien-online.net>, as an invitation for Internet users to buy a product named AMBIEN, if he had not known the product of the Complainant.
Departing from this assumption it is difficult to conceive that the Respondent had any good faith intention to use the domain name <buy-ambien-online.net>, when registering it.
In the absence of any submission of the Respondent, these findings, together with the findings under section 6(B) that the Respondent has no rights or interests in the domain name, leads the Panelist to the conclusion that the domain name <buy-ambien-online> has been registered in bad faith.
(ii) Use in bad faith
For the Complaint to succeed, it also has to prove that the Respondent is using the domain name in bad faith.
The Administrative Panel in Telstra Corporation Limited v. Nuclear Marshmallows
(WIPO Case No. D2000-0003), convincingly
argued that the provisions of the Uniform Policy in paragraph 4(b) support the
assumption that inaction is within the concept of a domain name being registered
and used in bad faith (paragraph 4a(iii) of the Policy). It depends therefore
on all circumstances of the case whether it can be said that the Respondent
is acting in bad faith.
The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b) (I) - (iii) of the Policy can constitute that the domain name is being used by the Respondent in bad faith.
The Panelist considers that the sum of the following circumstances justifies such conclusion:
- The Complainant's trademark AMBIEN enjoys in view of its use for the leading prescription sleep aid a reputation in the United States.
- The Respondent has submitted no evidence whatsoever of any good faith use of the domain name <buy-ambien-online.net>.
- Neither has the Respondent communicated to the Complainant any plan for a bona fide use of his domain name.
- By registering <buy-ambien-online.net> the Respondent has precluded the Complainant from using its mark in a corresponding domain name
- In contrast to the Telstra decision the Respondent, after registration of the domain name <buy-ambien-online.net> did even not remain totally inactive. It made use of the possibility offered by the Registrar to park for free its domain name, using the slogan: “Coming soon”, on a website provided by the Registrar, where the services of the Registrar are offered.
- at the same time, the existence of the domain name furnishes the Respondent with an instrument that allows it to activate a website in such a manner as to divert Complainant’s customers to its website where they would expect to be able to buy the Complainant’s product AMBIEN online.
- absent any submission of the Respondent, it is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being trademark infringement or an infringement of consumer protection legislation.
- Respondent has chosen not to respond to the Complaint and not to cooperate with the Complainant to resolve the dispute.
Taking into account these particular circumstances the Panel concludes that
the Respondent's passive holding of the domain name satisfies the requirements
of paragraph 4(a)(iii) of the Policy that the domain name has been registered
an is being used in bad faith.
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 <buy-ambien-online.net> be transferred to the Complainant
Gerd F. Kunze
Dated: August 10, 2005