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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. WhoisGuard Protected

Case No. D2005-1267

 

1. The Parties

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

The Respondent is WhoisGuard Protected, Westchester, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <ambien-zolpidem.info> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 8, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On December 8, 2005, 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 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 December 14, 2005. In accordance with the Rules, Paragraph 5(a), the due date for the Response was January 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2006.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 17, 2006. 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.

In accordance with the Rules, Paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.

In accordance with the Rules, Paragraph 15, the projected decision date was January 31, 2006.

 

4. Factual Background

The Complainant, Sanofi-Aventis, is the third largest pharmaceutical company in the world, formed as a result of the merger of Aventis with Sanofi-Synthйlabo.

The Complainant is the owner of a large number of registrations of the AMBIEN trademark in more than 50 countries. In particular, the Complainant is the owner of the following trademarks:

- AMBIEN, registered in the United States of America on December 7, 1993, registration number 1808770, for goods in Class 5;

- AMBIEN, registered in 29 countries as an International trademark on August 10, 1993, registration number 605762, for goods in Class 5;

- AMBIEN, registered in the United Kingdom of Great Britain and Northern Ireland on May 31, 1991, registration number 1466136, for goods in Class 5; and

- AMBIEN, registered in Australia on December 18, 1998, registration number 761307, for goods in Class 5.

The Complainant has registered numerous domain names worldwide containing the AMBIEN trade mark, including <ambien.fr>, <ambien.us>, <ambien.co.uk> and <ambien.biz>.

The Domain Name was registered by the Respondent on January 23, 2005.

 

5. Parties’ Contentions

A. The Complainant

General factual contentions

Sanofi-Synthйlabo was the second largest pharmaceutical company in France, founded on May 18, 1999, as a result of the merger between Sanofi and Synthйlabo. Sanofi-Synthйlabo’s total worldwide sales for the year 2003 totaled 8,048 million euro, and it spent 1,136 million euro on Research and Development (R&D) during the same year. Employing 33,086 employees worldwide, Sanofi-Synthйlabo had a sales force of 11,601 persons, as well as 6,877 research scientists and support staff, in 14 R&D centers located in France, Hungary, Italy, Spain, England and the United States. The stock market capitalization of Sanofi-Synthйlabo was 43,751 million euro.

During the summer of 2004, Sanofi-Synthйlabo acquired the shares of Aventis. On August 20, 2004, Sanofi-Synthйlabo adopted the name Sanofi-Aventis, thus preserving the brand heritage of each of the constituent companies. As of December 31, 2004, Aventis merged into Sanofi-Aventis. The completion of this transaction created the largest pharmaceutical group in Europe, and the third largest in the world, with pro forma consolidated sales of 25 billion euro for the year 2002 in its core business and a strong direct presence in all major world markets. The Complainant is now a multinational company present in more than 100 countries across five continents.

The new group benefits from a large portfolio of high-growth drugs, with nine products that individually generated sales of over 500 million euro in 2003. It enjoys firmly established positions in key fast-growth therapeutic fields such as cardiovascular, thrombosis, oncology, diabetes, central nervous system, urology, internal medicine and human vaccines.

As part of its commitment to global healthcare, Sanofi-Synthйlabo marketed therapeutic products developed from its research and a wide range of medicines adapted to local needs throughout the world. Sanofi-Synthйlabo’s field of expertise covered cardiovascular drugs and thrombosis, central nervous system, oncology and internal medicine and its three flagship products were Plavix, Aprovel (Avapro) and Ambien (Stilnox/Myslee). The Complainant’s products are marketed in the United States of America through several channels, and there is a website specifically dedicated to the United States at “www.sanofi-aventis.us”.

AMBIEN is a product manufactured by Sanofi-Aventis for the short-term treatment of insomnia. This product was launched in the United States in 1993, and in 1994 AMBIEN was considered as the market leader with 27 percent of total prescriptions. According to a study carried out by IMS Health in December 2003, AMBIEN was the leading prescription sleep aid in the United States. The product demonstrated safely and effectively that it treated insomnia intermittently with no evidence of tolerance or dose escalation. In May 2004, a study was presented at the American Psychiatric Association Annual Meeting which evaluated up to five nights of dosing per week, as needed, and emphasized that the improvements in sleep provided by AMBIEN did not diminish over time and that symptoms did not worsen on the days the product was not used. Since 20 to 30 percent of the population suffers from insomnia, and AMBIEN is the leading prescription sleep aid in the United States, there is no doubt that AMBIEN is a well-known product in the United States.

The Domain Name is confusingly similar to the AMBIEN trademarks in which the Complainant has rights

The Respondent’s registration consists of the Complainant’s trademark with the adjunction of the generic word “zolpidem” - the International Nonproprietary Name (“INN”) of the active substance of the product AMBIEN - and the gTLD “.info”.

The addition of a generic or common word to a trademark is not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant. See Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; PepsiCo, Inc. v. PEPSI, SRL and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184.

In Sanofi-Aventis v. V. Link, WIPO Case No. D2004-0810, relating to, among others, the domain name <acomplia-rimonabant-online.com> (ACOMPLIA being a trademark registered by the Complainant and “rimonabant” being its INN), the panel considered that:

“The association in a domain name of the trademark ACOMPLIA and the generic terminology ‘rimonabant,’ is also confusingly similar, since the latter is an INN (International Nonproprietary Name) for pharmaceutical substances. Such INN, which is one of the components of Complainant’s product ACOMPLIA, has a chemical description and molecular/graphic formulas used by the health and pharmaceutical industries and professionals. Consequently, the Respondent adds nothing of distinction to the Complainant’s trademark in the domain names <acomplia-rimonabant-online.com> and <rimonabant-acomplia-online.com>, both of which generate high confusion.”

Therefore, and after analyzing these different WIPO cases brought under the Policy, there is no doubt that the reproduction of the trademark AMBIEN, as the sole distinctive element of the Domain Name, generates confusion. Indeed, persons accessing the Domain Name would be bound to think that the Domain Name has a connection with the Complainant.

Furthermore, the addition of the gTLD “.info”, which is required for registration of the 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 (Napster, Inc. v. John Gary, WIPO Case No. D2005-0913; Hay & Robertson International Licensing AG v. C.J. Lovik, WIPO Case No. D2002-0122).

Consequently, because of this identity, there is a high risk of confusion, as a consumer may think that the Domain Name directly refers to the Complainant’s products.

The Respondent has no rights or legitimate interests in the Domain Name

The Complainant has prior rights in the trademark AMBIEN, which precede the Respondent’s registration of the Domain Name. Moreover, the Complainant’s trademark is present in over 50 countries including the United States and is well-known throughout the world. AMBIEN is the leading prescription sleep aid in the United States - the Respondent’s country.

The Domain Name has been used by the Respondent to promote AMBIEN products as well as medical products manufactured by competitors of the Complainant and medical products that compete with the AMBIEN products such as CIALIS or PROZAC.

There is no license, consent or other right by which the Respondent would have been entitled to register or use the Domain Name incorporating the Complainant’s trademark AMBIEN.

The Respondent is not commonly known by the Domain Name.

There is no doubt that the Respondent is aware that AMBIEN corresponds to a trademark since its website provides that “Ambien [Zolpidem] is indicated for the short-term treatment of insomnia or difficulty falling asleep”.

The Respondent would not have registered the Domain Name if it had not known that AMBIEN corresponded to the Complainant’s trademark used for the leading prescription sleep aid in the United States.

The Respondent, which has no legitimate interest in respect of the Domain Name, has registered it with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name.

The Respondent has made no bona fide use of the Domain Name because of its lack of authorization to use the trademark AMBIEN. Furthermore, using a domain name in order to divert consumers for commercial gain cannot be characterized as a fair use (Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066).

The Respondent has registered and used the Domain Name in bad faith

The Respondent has no prior rights in the sign AMBIEN, and has no authorization to use this sign in any form. It is clear that the Respondent has registered the Domain Name with the knowledge that AMBIEN corresponds to the Complainant’s trademark and products, and certainly that it corresponds to the leading prescription sleep aid in the United States, where the Respondent is located. Thus, the registration of the Domain Name has not been made with a bona fide intention.

Three decisions of transfer have recently been rendered by WIPO panels under the Policy where the Respondent was involved:

- Latin Telecomunicaciones S.A. v. Whoisguard, WIPO Case No. D2005-0380;

- Lilly ICOS LLC v. WhoisGuard Protected, WIPO Case No. D2005-0478, relating to the domain name <buycheapcialis.com>; and

- Lilly ICOS LLC v. WhoisGuard Protected, WIPO Case No D2005-0542, relating to the domain name <cialis-rainbow.com>.

The Domain Name leads to an active e-commerce website that provides the following information:

“Buy Ambien (Zolpidem)… Ambien is indicated for the short-term treatment of insomnia or difficulty falling asleep.”

The Domain Name was registered shortly after May 6, 2004, when Study Investigators at the APA published trial results showing AMBIEN to be safe and effective with longer term use. Thus, the registration of the Domain Name is an example of opportunistic cybersquatting.

There is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the Domain Name in order to prevent the Complainant from reflecting the trademark in a corresponding domain name. It is an opportunistic act, which seeks to disrupt the Complainant’s business.

The addition of the INN “zolpidem” to the trademark AMBIEN misleads Internet users since it makes them believe that it is the official website of Sanofi-Aventis since it promotes AMBIEN with the reproduction of design elements that are displayed on the packaging of the AMBIEN product. This is another relevant element to establish the bad faith registration of the Domain Name.

On August 30, 2005, the Complainant wrote to the Respondent demanding the Domain Name be transferred to the Complainant within 10 days. The Respondent failed to reply and therefore refused to transfer the Domain Name to the Complainant.

Therefore, the registration and use of the Domain Name constitutes an opportunistic act done in bad faith.

Remedy requested

The Complainant requests that the Domain Name be transferred to the Complainant.

B. The Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, Paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, Paragraph 5(b)(i), it is expected of a respondent that it will: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”.

In the event of a default, under the Rules, Paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant… In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence for the registration of its trademark AMBIEN in the United States, the United Kingdom, Australia, and many other countries.

Thus, the Complainant has established its rights in the trademark AMBIEN, as required by the Policy, Paragraph 4(a)(i). Furthermore, the Complainant has provided information about its activities as one of the global leaders in the pharmaceutical industry, and specifically about the product marketed by it under the trademark AMBIEN. This information is sufficient for the Panel to conclude that AMBIEN is a popular product, and hence the trademark is known among consumers.

It is an established practice under the Policy to disregard the suffixes such as “.info” for the purposes of the comparison under the Policy, Paragraph 4(a)(i), so the relevant part of the Domain Name to be considered is the sequence “ambien-zolpidem”. The first part of this sequence is identical to the trademark AMBIEN of the Complainant, and the second part is identical to the INN of the active substance of the medicine marketed by the Complainant under the trademark AMBIEN. The INN is by definition a descriptive term as it refers only to the specific chemical substance. So, rather than distinguishing the Domain Name from the Complainant’s trademark, the addition of the descriptive term “zolpidem” to the word “ambien” makes the Domain Name confusingly similar to the trademark. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727.

Therefore, the Complainant has established the first element of the test, required under the Policy, Paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Once the Complainant makes out a prima facie case under the Policy, Paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name. 

The Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, Paragraphs 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, Paragraph 14). If the Respondent had any justification for the registration or use of the Domain Name, it could have provided it. In particular, the Respondent has failed to contend that any of the circumstances described in the Policy, Paragraph 4(c) - or any other circumstance - are present in its favour. The same applies to the lack of reaction by the Respondent after the Complainant’s letter of August 30, 2005, demanding the transfer of the Domain Name.

In fact, the only information available about the Respondent is the WHOIS information, provided by the Registrar, and the content of the website associated to the Domain Name.

The WHOIS information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name, apart from its rights as registrant of the latter.

The website associated to the Domain Name offers for sale “cheap generic” AMBIEN, and contains information about the medicine AMBIEN.

Is such an offering of goods or services bona fide under Paragraph 4(c)(i)? The answer to this question depends on the finding of whether the use of the Domain Name in connection with the offering otherwise constitutes bad faith registration and use of the Domain Name under Paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith).

The Panel concludes that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. It is a clear inference from the record that the Respondent knew at the time of the registration of the Domain Name that the Complainant had established rights in the AMBIEN mark. The Complainant has made a substantial showing that AMBIEN is a popular mark in the United States and, in any event, the mark is clearly distinctive. The Respondent simply has no legitimate interest in using the AMBIEN mark as part of a domain name that directs Internet users to a website where a competing generic product is offered for sale. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”. Accordingly, the finding by the Panel regarding the Respondent’s bad faith registration and use of the Domain Name precludes a finding that the offering of goods or services by the Respondent is bona fide. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296.

Therefore, as the evidence supports the contentions of the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant is widely known as one of the biggest companies operating in the market of pharmaceutical products. The information about the prescription, sales and usage of its product AMBIEN in the United States shows that a large proportion of the population there either uses it or may be interested in it as a medication. Therefore, AMBIEN is a popular product, and hence the trademark is known among consumers.

The WHOIS information about the Respondent shows that it is based in the United States. The website associated to the Domain Name offers for sale “cheap generic” AMBIEN, and contains information about the medicine AMBIEN. The Domain Name itself is a combination of the words “ambien” and the INN of the product’s active substance. All this is an indication of the awareness of the Respondent of the goodwill of the trademark and its commercial value, as well as an indication of the possible intent of the Respondent to profit from it by creating confusion among consumers as to the source and affiliation of the Domain Name.

These facts support a finding that the Respondent had knowledge of the AMBIEN mark at the time of registration of the Domain Name, and that the Respondent is using the Domain Name to attract Internet users to a commercial website where a generic equivalent of AMBIEN and competing products are offered for sale. The Respondent’s primary purpose in registering and using the Domain Name was to attract, for commercial gain, Internet users to this website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the products on this website. This constitutes bad faith registration and use of the Domain Name under the Policy, Paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408.

Therefore, the Panel concludes that the Complainant has established the third element of the test under the Policy, Paragraph 4(a).

 

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 Name, <ambien-zolpidem.info>, be transferred to the Complainant.


Assen Alexiev
Sole Panelist

Dated: January 31, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1267.html

 

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