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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Darko

Case No. D2005-1357

 

1. The Parties

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

The Respondent is Darko, of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <ambien-side-effects.info> (the “Domain Name”) is registered with Direct Information Pvt. Ltd., d/b/a PublicDomainRegistry.com. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2005. On January 3, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On January 4, 2006, 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 January 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2006.

The Center appointed Assen Alexiev as the sole panelist in this matter on February 10, 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.

 

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 into 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 for the territory of the United States of America on December 7, 1993, registration number 1808770, for goods in Class 5;

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

- AMBIEN, registered for the territory of the UK on May 31, 1991, registration number 1466136, for goods in Class 5; and

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

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

The Domain Name was registered by the Respondent on May 20, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant has made the following contentions in its Complaint:

i) 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 of America. 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, third largest in the world, with pro forma consolidated sales of 25 billion euro for the year 2002 in the core business and a strong direct presence an 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 9 products that individually generated annual 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 Kingdom through several channels, and it is one of the fastest growing major pharmaceutical companies there, with consolidated sales of 1,116 million euros, and current market share of 6.2%.

The Complainant maintains a website specifically dedicated to the United Kingdom at “www.sanofi-aventis.co.uk”.

AMBIEN is a product manufactured by Sanofi-Aventis for the short-term treatment of insomnia. This product was launched in the United States of America in 1993, and in 1994, AMBIEN was considered as the market leader with 27% 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 of America. 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 of America, there is no doubt that AMBIEN is well-known in North America.

The Complainant has filed many complaints before the Center in relation to domain names containing the trademark AMBIEN. To date, all decisions under the Policy in respect of such domain names have been in favor of the Complainant.

ii) The Domain Names are confusingly similar to the AMBIEN trademarks in which the Complainant has rights

The Domain Name consists of the Complainant’s trademark with the addition of the words “side” and “effects” 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.

The addition of the gTLD “.info” has no distinguishing capacity in the context of the Domain Name.

Therefore, 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 and refers to its products.

iii) The Respondent has no rights or legitimate interests in respect of the Domain Name

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

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 medical product and to a trademark.

The Respondent is using the Domain Name to offer and sell goods that directly compete with the Complainant. The website at the Domain Name contains no disclaim of a relationship with the trade mark owner, or of the fact that the website is an official site of the Complainant. See Sanofi-aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769.

Indeed, the Respondent would not have registered the disputed Domain Name if it had not known that AMBIEN was a leading prescription sleep aid.

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

Therefore, the Respondent’s use not satisfies the test for bona fide use established in prior WIPO UDRP decisions. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The use of the Domain Name in order to divert consumers for commercial gain cannot be characterized as a fair use. See Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066.

iv) 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 obvious that the Respondent has registered the Domain Name with the knowledge that AMBIEN corresponds to the Complainant’s trademark and product, and certainly that it corresponds to the leading prescription sleep aid. Thus, the registration of the Domain Name has not been made with a bona fide intention.

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 words “side” and “effects” refer to the availability of the product AMBIEN for sale, so an Internet user would believe that this is an official web site selling the product. This is another relevant element to establish the bad-faith registration of the Domain Name.

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

v) Remedy requested

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

B. 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 Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of the Respondent to: “[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 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 infer that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his 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 of America, the United Kingdom, Australia, and many other countries.

Thus, the Complainant has established its rights in the trademark AMBIEN, as required by 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 to disregard the suffixes such as “.info” for the purposes of the comparison under Policy, paragraph 4(a)(i), so the relevant part of the Domain Name to be considered is the sequence “ambien-side-effects.” The first six letters of this sequence are identical to the trademark AMBIEN of the Complainant, and the remaining part of it represents the English expression “side effects”, which is commonly associated with the use of medicines. As AMBIEN is a known trademark among consumers, they are likely to expect that the Domain Name is related to the side effects of the product AMBIEN. So, rather than distinguishing the Domain Name from the Complainant’s trademark, the addition of the expression “side effects” to the trademark 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 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.

Thus, 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 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, paragraph 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 registering or using the disputed Domain Name, it could have provided it. In particular, the Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) - or any other circumstance - is present in its favor.

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 various pharmaceutical products, including products of the Complainant’s competitors, rather than dealing with any side effects of the product AMBIEN.

The question is whether such an offering of goods or services is bona fide under paragraph 4(c)(i). The answer to this question depends on the finding whether the use of the disputed Domain Name in connection with the offering otherwise constitutes bad-faith registration or use of the domain name under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. UltSearch, 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 disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant has made a substantial showing that AMBIEN is a popular product, and in any event the mark is clearly distinctive. It is clear from the content of the website at the Domain Name, that the Respondent is aware of the popularity of the Complainant’s product and trademark. The Respondent simply has no legitimate interest in using the AMBIEN mark as part of the Domain Name that directs Internet users to a website where various pharmaceutical products, including products of the Complainant’s competitors, are 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 disputed 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 players on the market of pharmaceutical products. The information about its product AMBIEN regarding its prescription, sales and usage shows that a large proportion of people 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 Domain Name itself is a combination of the words “ambien” and “side effects.” The analysis of the content of the website associated to the Domain Name shows that, instead o dealing with the side effects of the medication, as one might reasonably expect, it offers various pharmaceutical products, some of them competing with the Complainant’s product. All this clearly indicates the awareness of the Respondent about the product and the trademark of the Complainant, and the Respondent’s intentions at the time of registration of the Domain Name.

The evidence before the Panel supports a finding that the Respondent had knowledge of the AMBIEN trademark and product 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 various pharmaceutical products, including such of the Complainant’s competitors, 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 disputed Domain Name under Policy, paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408.

Therefore, the Panel concludes that the Complainant has established the third element of the test under 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-side-effects.info> be transferred to the Complainant.


Assen Alexiev
Sole Panelist

Dated: February 24, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1357.html

 

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