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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Jucco Holdings
Case No. D2007-0377
1. The Parties
The Complainant is Sanofi-Aventis, Gentilly, France, represented by Maоtre Isabelle Leroux, Bird & Bird Solicitors, Paris, France.
The Respondent is Jucco Holdings, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ambienfree.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 15, 2007, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On March 15, 2007, NameKing.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. 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 March 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2007.
The Center appointed J. Christopher Thomas, Q.C. as
the sole panelist in this matter on April 18, 2007. 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.
The Panel finds that it was properly constituted.
4. Factual Background
During the summer of 2004 Sanofi-Synthelabo, a French pharmaceutical company, announced its acquisition of the shares in Aventis following which the Complainant’s parent company adopted the name Sanofi-Aventis on August 20, 2004. Sanofi-Aventis is a large multinational company with a presence in more than one hundred countries across five continents. It employs approximately 97,181 people worldwide and has a stock market capitalization of approximately 103,697 million Euros.
Sanofi-Aventis is a major player in the pharmaceutical market with eight flagship products. The Complainant’s products are marketed throughout the United States of America, through its subsidiary, through marketing alliances, and through licensing agreements.
Ambien is a product manufactured by Sanofi-Aventis indicated for the short-term treatment of insomnia. According to the Complainant it holds the top position in the sleep-aid prescription market in the United States of America. The Complainant has a website dedicated to the U.S. market: “www.sanofi-aventis.us”, which among other things, contains information on Ambien.
The Complainant owns a number of AMBIEN trademarks
in more than 50 countries, including the United States of America and the countries
of the European Community. The Complainant and its affiliates have also registered
domain names worldwide containing the AMBIEN trademark.
5. Parties’ Contentions
The Complainant asserts that:
The disputed domain name <ambienfree.com> registered by the Respondent is confusingly similar to the trademark held by the Complainant. The Respondent’s registration consists of the Complainant’s trademark with the addition of the generic word “free” and the gTLD “.com”. The addition of the gTLD “.com” is required for registration of the domain name but has no distinguishing capacity in the context of the domain name and therefore, does not alter the value of the trademark represented in the domain name.
Many panels have considered that the addition of generic words to trademarks is not sufficient to escape the findings of similarity and does not change the overall impression of the designations. Due to the lack of distinctiveness, generic and descriptive terms do not prelude the domain name from being confusingly similar. Consequently, the domain name <ambienfree.com> generates confusion with the Complainant’s trademark AMBIEN.
The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant’s prior right in the trademark AMBIEN precedes the Respondent’s registration of the domain name. Nothing on the Respondent’s site disclaims any relationship with the trademark owner or dispels any suggestion that the site might not be that of the trademark owner. Moreover, the disputed domain name has been used by the Respondent to redirect users to a website promoting the Ambien products as well as products that compete with it.
The Respondent has no legitimate interest in the domain name <ambienfree.com> and has registered the domain name with the intention of diverting consumers and preventing the Complainant from reflecting the trademark in a corresponding domain name.
The Respondent registered the domain name and is using it in bad faith. The Respondent has no prior right in respect of the trademark AMBIEN and has no authorization to use this trademark in any form. Thus, the registration of the disputed domain name has not been made with bona fide intentions.
The Respondent registered the domain name <ambienfree.com> with the knowledge that Ambien is a medical product. The Respondent proposes links related to AMBIEN and other medical products on the disputed website. Moreover, the Respondent added the word “free” to the trademark AMBIEN in order to make the user believe that it is an official website to buy Ambien.
The Respondent has been named as a respondent in prior WIPO UDRP proceedings. In each case, the contested domain name has been transferred to the Complainant. The Respondent is a cybersquatter.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the present case, the Panel is of the view that the record contains sufficient evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
First, the Complainant has claimed and the Panel has verified to its satisfaction, that the Complainant owns a large number of AMBIEN trademarks in more than 50 countries including the United States of America and the countries of the European Community. Furthermore, the Complainant and its affiliates have registered numerous domain names worldwide containing the AMBIEN trademark.
The domain name in dispute <ambienfree.com> is confusingly similar to the AMBIEN trademark. The Respondent’s registration consists of the Complainant’s trademark with the addition of the generic word “free” and the gTLD “.com”. The addition of a generic word to the trademark does not change the essential meaning of the name AMBIEN. It does not change the overall impression of the designation as being connected to the Complainant.
Thus, the contested domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has made out a prima facie case that the Respondent has no rights to the domain name. The Complainant contends that the Respondent has no license, consent or other rights by which it would have been entitled to register or use the domain name incorporating the trademark AMBIEN. The Respondent has not rebutted these contentions or otherwise shown that it has rights or legitimate interests in respect of the domain name.
Accordingly, the Panel agrees with the Complainant that the Respondent has no rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Third, it must be shown that the domain name at issue has been registered and is being used in bad faith.
Evidence that the Respondent registered the disputed domain name with the knowledge that Ambien is a medical product lies in the fact that its site has links related to Ambien and to other medical products. The word “free” has been added, it appears to the Panel, to lead the user to believe that it is an official website maintained by the trademark holder, through which it offers sale of Ambien.
The Panel is of the view that by using the domain name, the Respondent has
intentionally attempted to attract for commercial gain, Internet users to its
website by creating a likelihood of confusion with the Complainant’s mark
as to the source, sponsoring, affiliation or endorsement of the Respondent’s
website. In such circumstances, according to paragraph 4(b)(iv) of the Policy,
the domain name was registered and 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 <ambienfree.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Dated: May 2, 2007