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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Conciergebrain.com

Case No. D2005-0660

 

1. The Parties

The Complainant is Sanofi-Aventis Gentilly, France, represented by Bird & Bird Solicitors, France.

The Respondent is Conciergebrain.com, Northridge, California United States of America.

 

2. The Domain Names and Registrar

The disputed domain names:
<ambien-free-shipping.com>
<ambien-overnight.info>
<ambien-overnight.org>
<ambien-phamacie.net>
<ambien-prescription.org>
<ambien-usa.net>
<ambien-5mg.org>
<cheap-ambien.net>
<cheap-ambien-no-shipping-charge.com>
<cheap-ambien-sleeping-pill.com>
<cheapest-ambien.org>
<lowest-price-ambien.com>
<order-ambien-cheap.com>

are all registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2005. On June 23, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On that same day Wild West Domains, Inc. 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. The Center verified that 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 July 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2005.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 11, 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, paragraph 7.

 

4. Factual Background

The Complainant is the third largest pharmaceutical company in the world with a business presence in more than 50 countries. AMBIEN is one of the Complainant’s three flagship products and is used for the short-term treatment of insomnia. It was first launched in the USA in 1993, and virtually since its introduction has occupied a leading market position.

The Complainant, either itself or through its related and controlled companies, owns a large internationally registered portfolio for the AMBIEN trade mark. These include, by way of example only, US Trade Mark Registration No. 1808770 from December 1993, and International Trade Mark registration No. 605762 from October 1993, both registered in international trade mark class 5 in respect of relevant products. Without contest from the Respondent, all appear to be valid and subsisting.

The Complainant, either itself or through its related and controlled companies, also owns key domain names which incorporate its trade mark, including <ambien.co.uk>, <ambien.fr>, and <ambien.us>.

The Complainant markets its products in the United States through its local affiliate, Sanofi-Synthelabo Inc., and through a number of other alliances and licensees.

The Respondent registered the following disputed domain names:

<ambien-free-shipping.com>
<ambien-overnight.info>
<ambien-prescription.org>
<ambien-usa.net>
<ambien-5mg.org>
<cheap-ambien-no-shipping-charge.com>
<cheap-ambien-sleeping-pill.com>
<lowest-price-ambien.com>
<order-ambien-cheap.com> in December, 2004 and

<ambien-overnight.org>
<ambien-phamacie.net>
<cheap-ambien.net>
<cheapest-ambien.org>

in January 2005. Under each name it operates or operated a website which promotes the sale of the Complainant’s product, together with other manufacturers’ products.

In April 2005, the Complainant’s Solicitors sent a cease and desist letter to the Respondent demanding transfer of the disputed domain names and indicating that this Complaint would be lodged if they were not satisfied. The Respondent did not reply. The Complainant now seeks transfer of domain name under the provisions of the Policy.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are all confusingly similar to a mark in which it has rights. It argues that its trade mark rights in AMBIEN are established through registration and that the mere adjunction of descriptive or otherwise non-distinctive matter is not sufficient to escape the finding of similarity and does not change the overall impression of the domain names as being connected with the Complainant.

In particular, it argues that the domain names consist of the Complainant’s mark together with generic words or abbreviations which either refer to the condition of sale ( eg.,”free-shipping” ; “overnight” ), or are commonplace in the medical market ( eg., “pharmacie” ; “5mg” ) or refer to the place of sale ( “usa”), together with gTLDs which are inconsequential in terms of avoiding confusion. The Complainant concludes that Internet users would be bound to think that the domain names had a connection with the Complainant. In support of this argument it refers to numerous prior UDRP decisions, some involving its own company.

The Complainant again addresses the Policy by contending that the Respondent has no rights or legitimate interests in the disputed domain names because the Complainant’s rights in the trade mark AMBIEN precede the Respondent’s registration of the domain names. The Complainant is present in over 50 countries and is well known throughout the world, especially the United States where its AMBIEN product is the market leader. It argues that the Respondent would have not registered the domain names if it had not known that AMBIEN was one of the leading prescription sleep aids. The Complainant states that there is no license, consent or other right by which the Respondent would have been entitled to register or use domain names incorporating the Complainant’s trade mark. On its websites the Respondent has links which promote AMBIEN products as well as medical products manufactured by competitors of the Complainant, some of which directly compete with the AMBIEN product, such as SONATA, manufactured by King Pharmaceuticals Inc. The Complainant concludes that the Respondent has no legitimate interest in any of the domain names and has registered them with the intention to divert consumers and to prevent the Complainant from reflecting the mark in corresponding domain names.

Finally, the Complainant states that the Respondent has registered and is using the domain names in bad faith for the following reasons:

- the Respondent has no prior right in the name and no authorization has been given by the Complainant concerning use of the AMBIEN trade mark;

- the Respondent has registered numerous domain names which incorporate the mark;

- the Respondent’s could not help but have been aware that AMBIEN is one of the leading prescription sleep aids;

- the addition of generic descriptors to the trade mark AMBIEN misleads internet users since it makes them believe that the Respondent’s sites are official web sites of SANOFI-AVENTIS;

- the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the disputed domain names in order to prevent the Complainant from reflecting the mark in corresponding names. It is an opportunistic act, which seeks to disrupt the Complainant’s business;

- merely holding a domain name that is identical or confusingly similar to a trade mark belonging to a third party, in itself, can be considered as disrupting the business of the rightful owner;

- the Respondent failed to reply to the Complainant’s Solicitors’ demand letter and has therefore refused to transfer the disputed domain names to its legitimate owner, the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply. According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

Having considered the Complainant’s case and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel has no hesitation in finding that the Complainant has rights in the trade mark AMBIEN; rights which predate any rights in the domain names by more than ten years.

Clearly the disputed domain names and the Complainant’s trade mark are not identical. The Panel agrees with the Complainant that the “.com” and other gTLD designations are inconsequential for the purposes of comparison, but there remains the question of whether the trade mark and the 13 “ambien” prefixed and suffixed names are confusingly similar.

This Panel follows what it regards as a consensus view that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark, assessed independently of extraneous marketing or use considerations. That is to say, extraneous of the circumstances and ways in which the mark and the domain name are put to use. Nevertheless, it is true that a great many trade marks create their own context and so it follows that other words or signs used in association with a trade mark will be understood in the atmosphere of that mark. There will be words such as “buy”, “shop” cheap” which by their very nature add nothing to a trade mark, but there are words too which may in one context lend distinctiveness and shape a new brand, but be purely trivial when put alongside a different trade mark.

In this case, the disputed domain names each consist of the Complainant’s trade mark, plus a word or number or conventional shorthand which does nothing to dispel a connection in the public mind between the pharmaceutical name and its owner, the Complainant.

In Sanofi-Aventis, v. US-Meds.com, WIPO Case No. D2004-0809, where Sanofi-Aventis was again the complainant, the panelist reasoned:

“The domain names in dispute are comprised of the Complainant’s trademark ACOMPLIA preceded or followed by generic words used in the trade such as “buy,” “store,” or “online” or common words used in the medical market such as “pills,” “drug,” “generic” and “pharmacy” and the gTLDs “.com” or “.net.” The Complainant holds a number of valid registrations for the ACOMPLIA trademark.

The use of the above noted generic terms in conjunction with the Complainant’s trademark ACOMPLIA does not remove the domain names in dispute from being confusingly similar, as the generic terms lack distinctiveness.

Furthermore, the addition of the gTLD “.com”or “.net” which is required for registration of a domain name, has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name (Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Many panels have held that the use of a complainant’s trademark as the sole distinctive portion of a domain name in dispute is a confusingly similar use of the Complainant’s trademark. (Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076.)

The Panel finds that the Complainant has proven that the domain names in dispute are confusingly similar to the Complainant’s trademark ACOMPLIA.”

Similarly, this Panel finds that, within the context of a pharmaceutical trade mark, all the disputed domain names are confusingly similar to the Complainant’s AMBIEN mark and so decides that the Complainant has satisfied this element of the Policy.

B. Rights or Legitimate Interests

It has been observed by panelists in formative decisions that there is a necessary connection between the elements of legitimate rights, on the one hand, and bad faith, on the other. In particular, if it can be seen that the Respondent in fact had rights in the domain names, then it is generally difficult to assimilate that with a conclusion that the Respondent had acted in bad faith.

In this case, the Complainant has repeatedly stated that the Respondent was not licensed or otherwise given consent to use the trade mark. Nonetheless, this is not dispositive because, as a matter of principle in most developed trade mark systems, it is not per se an infringement of a trade mark without the authority of the trademark owner to resell or promote for resale genuine trade marked goods by reference to the mark. However, the circumstances here are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain name and to shift the evidentiary burden to the Respondent to show that it does have rights or legitimate interests in that name: See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, and the cases referred to there.

Reverting to the Policy, paragraph 4(c)(i) provides that a use is legitimate if, prior to commencement of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Although concerned with the activities of an authorized user/respondent, the respected UDRP decision in this regard is that of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where it was held that, to be “bona fide” within paragraph 4(c)(i), the offering must meet several minimum requirements, being that :

- the Respondent must actually be offering the goods or services at issue;

- the Respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the registrant’s relationship with the trade mark owner; it may not, for example, falsely suggest that it is the trade mark owner, or that the website is the official site; and

- the Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.

The factors developed in the Oki Data case have been adopted by a number of subsequent UDRP panels. (Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085 - <ferrari-fila.com>, <ferrarifila.com>, <ferrariguy.com> et al.; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 - <experiancredit.com>) and have also been applied in cases, such as this one, where there was no contractual relationship between the Complainant and the Respondent. (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case, WIPO Case No. D2004-0481 - <porsche-buy.com>; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 – <discount-marlboro-cigarettes.com>).

This Panel follows the majority view put forward in the Oki Data case that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits, amongst other things, the above criteria, and that this remains so even when there is no contractual relationship between the parties.

Here, the Respondent is not confining its use of the disputed domain name to the resale of the Complainant’s pharmaceuticals by reference to the Complainant’s mark. Instead, it is trading on the Complainant’s mark to also sell third party products and indeed the products of the Complainant’s competitors.

When the Panel went to the Respondent’s website, it was verified that the Respondent was not only selling a wide range of third party marked pharmaceuticals, but also placed links to AMBIEN directly alongside links to the competitive insomnia cure product SONATA.

Moreover, if there was any doubt that the Respondent’s domain names were liable to cause confusion, then once at a typical home page the impression of a legitimate connection with the Complainant is overwhelming since the artwork is of white coated laboratory technicians in thoughtful conference, and the bibliographic material includes medical information about the drug, its known side-effects, a warning to consult a doctor in certain circumstances and storage advice.

There is nothing in the form of a disclaimer on the home pages and the impression of brand ownership is reinforced by the use of registered trade mark symbols adjacent the use of AMBIEN. It is only when one “drills down” to other pages is there a statement: “Products mentioned are trademarks of their respective companies”, but with no indication there or elsewhere of those companies.

Finally, the Respondent offends another of the stipulations laid out in the Oki Data case by registering numerous variations on the Complainant’s mark and so causing the likely swamping of internet searchers, notwithstanding that the Complainant has reserved the more obvious names to itself.

In short, the Panel observes a complete failure on the part of the Respondent to show bona fide use of the Complainant’s mark in terms of the criteria laid down in the Oki Data case. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has established this element of its case.

B. Registered and Used in Bad Faith

It follows from what has been said that the Panel is satisfied that the Respondent is using the disputed domain names intentionally to attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).

The Panel observes for the sake of completeness that between the time the Complaint was assembled and the time of this decision, the domain name <ambien-phamacie.net> no longer resolves to a website, however the Panel endorses what was said in the US-Meds case WIPO Case No. D2004-0809 already referred to above :

“The Respondent’s websites associated with each of the domain names at issue have no content. The Panel is of the view that as soon as the websites featuring any of the domain names in dispute are activated, persons using the Internet will be directed to one or more of the Respondent’s websites associated with the domain names in dispute. The domain names in dispute will create a likelihood of confusion with the Complainant’s trademark ACOMPLIA as to the source, sponsorship, affiliation or endorsement of Respondent’s websites or of a product or service on those websites.”

In AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002–0290, the Respondent had registered domain names comprised of the trademarked names of two pharmaceuticals each used in conjunction with the gTLD “.net.” The Panel in the Aventis case held that the use of the domain names was clearly in bad faith, stating:

“By, admittedly, having knowledge of the Complainant’s mark, Respondent can be assumed to have been aware of the risk of deception and confusion that would inevitably follow if it registered and used the Domain Name under the “.net” gTLD since this could give the impression that the site and thus the Respondent was somehow endorsed by the Complainant: See Ullfrotte AB v. Bollnas Imports, WIPO Case No. D2000–1176. Not only was the Respondent not endorsed by the Complainant, it had no consensual relationship with Complaint at all. Any representation, such as here, to the contrary is clearly bad faith.”

A similar conclusion was reached by the Panel in Gorstew Limited & Unique Vacations, Inc. v. Satin Leaf, Inc., National Arbitration Forum Case No. FA 000800009514. In the Gorstew case, neither of the two domains names in question had been developed yet.

Many panels have held that bad faith inaction, resulting from failure to provide an active website, amounts to use in bad faith when all the surrounding circumstances point to registration and use in bad faith. (Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003–0602; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000–0003.)

For the various reasons discussed above, the Panel finds that the Respondent has registered and used the domain names in dispute in bad faith.

The Panel therefore finds that the Complainant has also established this third limb of its case in respect of all 13 disputed names.

 

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 names,

<ambien-free-shipping.com>
<ambien-overnight.info>
<ambien-overnight.org>
<ambien-phamacie.net>
<ambien-prescription.org>
<ambien-usa.net>
<ambien-5mg.org>
<cheap-ambien.net>
<cheap-ambien-no-shipping-charge.com>
<cheap-ambien-sleeping-pill.com>
<cheapest-ambien.org>
<lowest-price-ambien.com>
<order-ambien-cheap.com>

be transferred to the Complainant.

---

Debrett G. Lyons
Sole Panelist

Dated: August 25, 2005