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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Ram Esh

Case No. D2006-0810

 

1. The Parties

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

The Respondent is Ram Esh, of Orissa, India.

 

2. The Domain Name and Registrar

The disputed domain name <ambien-rxlist.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 29 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On June 30, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com 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 July 5, 2006. 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 July 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2006

The Center appointed Daniel J. Gervais as the sole panelist in this matter on August 11, 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.

 

4. Factual Background

The Complainant is the third largest pharmaceutical company in the world, present in more than 100 countries across 5 continents. It is the result of the combination of Sanofi-Synthйlabo (itself the result of a merger between Sanofi and Synthйlabo in 1999) and 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 Complainant had 2004 consolidated sales of €25 billion and €4 billion Research and Development expenditure. It employs over 97 000 employees worldwide and has a sales force of over 35 000 persons, as well as more than 17 600 research staff with 127 projects under development. The Complainant’s stock market capitalization is approximately 2 700 000 000 euros.

AMBIEN is a trademark registered in several jurisdictions used in relation with a product a manufactured by the Complainant which is now the leading prescription sleep aid in the United States. The Complainant and its affiliates registered numerous domain names worldwide containing the AMBIEN trademark, for example <ambient.fr> and <ambient.us> and <ambient.biz>.

“At the time of filing of the Complaint, the domain name resolves to a website containing advertising and offering links to online pharmacies and products, including sleep aids.”

 

5. Parties’ Contentions

A. Complainant

The domain name consists of the Complainant’s trademark with the addition of the generic words “rx” and “list” and the gTLD “.com.” A wide variety of panelists have considered that the addition of generic words to trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant.

In relation to domain names which include a pharmaceutical trademark and the term “rx,” in a previous decision under the Policy, the panel took the view that “there is no question that the domain name in dispute is confusingly similar to a mark in which Complainant has rights (…) the addition of the descriptive term “rx”, which is a common representation for the word “pharmacy” or “prescription”, has little, if any, legal significance” (Wal-Mart Stores, Inc v. Brad Tauer, WIPO Case No. D2000-1076; see also Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2004-0808). The symbol “rx” is commonly associated with medical prescriptions. The impression given by the domain name is therefore that an Internet user can obtain the Complainant’s product, which has the quality of being a prescription drug, at the Respondent’s website. Regarding the generic term “list,” attached to the letters “rx” in the contentious domain name, it does not prevent the domain name in dispute from being found confusingly similar, as the generic term is lacking in distinctiveness. Therefore, the Complainant submits, there is no doubt that the reproduction of the trademark AMBIEN, as the sole distinctive element of the domain name concerned, generates confusion. Indeed, persons accessing the domain name would be bound to think that the domain name has a connection with the Complainant.

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 and is well-known throughout the world. The domain name has been used by the Respondent to resolve to a commercial website selling AMBIEN but also many competitors’ products. Furthermore, the Respondent’s site does “nothing to disclaim any relationship with the trade mark owner. It did nothing to dispel any possible suggestion that it might be the trade mark owner, or that the website might be the, or a, official site of the Complainant” (WIPO Case No. D2005-0769, Sanofi-Aventis v. ClickStream Marketing LLC). There is no doubt that the Respondent does not use the domain name in connection with the bona fide offering of goods or services (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

The Complainant claims that it is obvious that the Respondent is aware that AMBIEN corresponds to a medical product and therefore to a trademark. Indeed, the Respondent would have not registered the domain name if it had not known that AMBIEN was a leading prescription sleep aid.

There is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. It is an opportunistic act, which seeks to disrupt the Complainant’s business. Furthermore, by adding the words “rx” and “list” which refer to the dosage in active principles of the product, the Respondent makes the Internet user believe that it is one official web site to buy AMBIEN but also many other medical products. It thus appears from these facts that the domain name <ambien-rxlist.com>constitutes an opportunistic registration, which has been made and used in bad faith.

B. Respondent

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

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A.);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.C.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

On the first question, the Complainant has established rights in the AMBIEN trademark.

On the second question, the domain name incorporates a trademark used in relation with a pharmaceutical product, the word “list”, which is generic in the pharmaceutical industry, and “rx” which is a generic abbreviation for pharmaceutical prescriptions. The addition of those elements to the trademark heighten the risk of confusion, , When a domain name wholly incorporates a complainant’s mark and adds a generic word, many previous Panels found that to be sufficient to establish confusing similarity for purposes of the Policy. See, inter alia, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

The Panel thus finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on the Complainant’s prior use of the AMBIEN mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainant’s mark.

In the case of a reseller, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (at 2.3), 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 certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner.” This requirement is not met in the instant case.

Consequently, the Panel finds that the Complainant has successfully made a prima facie case, which the Respondent has failed to rebut. The Panel thus finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.

The Panel did not draw conclusions from previous decisions involving the Respondent or its alleged notoriety as a cyber-squatter. However, there is ample evidence of the situation described in paragraph 4(b)(iv).

Apart from the famous nature of the Complainant’s marks, the domain name is confusingly similar to the Complainant’s mark AMBIEN. It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered a domain name consisting of a trademark used in relation with a prescription pharmaceutical and the letters “rx,” which are a well known abbreviation for prescriptions.

A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g., Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and/or indicating a good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461. It is very difficult to conceive that the Respondent chose to register the domain name by accident. In fact, based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing to the Complainant’s marks.

The Panel thus finds for the Complainant on this third element of the test.

 

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-rxlist.com> be transferred to the Complainant.

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Daniel J. Gervais
Sole Panelist

Dated: August 21, 2006