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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Raymond Patterson

Case No. D2008-1028

 

1. The Parties

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

The Respondent is Raymond Patterson, Corpus Christi, Texas, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <ambiensideeffects.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2008. On July 8, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 8, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 4, 2008.

The Center appointed Adam Taylor as the sole panelist in this matter on August 14, 2008. 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 a large French pharmaceutical company with a presence in more than 100 countries including the United States of America (“United States”). It employs approximately 100,000 people worldwide.

One of the Complainant’s products is AMBIEN, a short-term treatment for insomnia. It was launched in the United States in 1993. By 1994 AMBIEN was the market leader in the “hypnotics” market with 27% of total prescriptions according to a 1995 article in Scrip magazine.

The Complainant owns a large number of AMBIEN trademarks in more than 50 countries including, by way of example, United States trademark number 1808770 dated January 5, 1993 in class 5.

The Respondent registered the disputed domain name on November 25, 2007.

As of July 1, 2008, the disputed domain name resolved to a parking page with sponsored links to websites offering products competing with AMBIEN.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant clearly has rights in the mark AMBIEN based on its long and extensive use and ownership of numerous trademark registrations worldwide.

The Respondent’s registration consists of the Complainant’s trademark with the addition of the words “side” and “effects” and the gTLD “.com”. Numerous panelists have concluded that the addition of a generic word to a trademark does not change the overall impression of the designation as being connected to the Complainant.

This addition of two generic words is insufficient to prevent the likelihood of confusion which stems from the use of the word “ambien”, which is the main and distinctive term.

The words “side” and “effects”, in the context of the Complainant’s activities in the pharmaceutical industry, are generic or at best descriptive. The English expression “side-effects” is commonly associated with the use of medicines. Consumers are likely to expect that the disputed domain name is related to side-effects of the Complainant’s product.

In addition, the domain name wholly incorporates the Complainant’s registered trademark, which is sufficient to establish confusing similarity for the purpose of the Policy.

Rights or Legitimate Interests

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.

The disputed domain name is used by the Respondent to provide links to websites promoting medical products which compete with those of the Complainant.

The Respondent’s site does nothing to disclaim any relationship with the trademark owner. Therefore, the Respondent’s use does not satisfy the test for bona fide use established in prior UDRP decisions.

Furthermore, 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.

There is no doubt that the Respondent is aware that AMBIEN corresponds to a medical product and therefore to a trademark.

The Respondent would have not registered the disputed domain name if it had not known that AMBIEN was a leading prescription sleep aid.

As a result, it is clear that the Respondent, which has no legitimate interest in respect of the disputed domain name, has registered it with the intention of diverting consumers and preventing the Complainant from reflecting the trademark in a corresponding domain name.

Registered and Used in Bad Faith

The bad faith results from the following:

1 the Respondent has no authorization from the Complainant concerning the AMBIEN trademarks;

2 the Respondent’s awareness that AMBIEN is a leading prescription sleep aid;

3 the addition of words “side effects” to the trademark AMBIEN misleading Internet users into believing that the website at the disputed domain name is an official website of the Complainant.

As it is demonstrated above, the Respondent has no prior right in respect of the mark AMBIEN, and no authorization to use this mark in any form. Thus, the registration of the disputed domain name has not been made in good faith.

It is clear that the Respondent has registered the disputed domain name with the knowledge that AMBIEN was a medical product.

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, the Respondent’s website offers links to competitive products, such as pills presented as “generic ambien”, available on the websites “www.pill-junction.com”or “medmaven.com”, other competitive products such “Somit” presented on the website “www.pharma24hs.com” and “Lexotanil”and “Xanax” offered for sale on the website “www.pharmastores.com”.

The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party, in itself, can be considered as disrupting the business of the rightful owner.

Any Internet user who visits the website will believe that it is an official web site of the Complainant which offers AMBIEN since the domain name includes the AMBIEN trademark and also includes words which refer to the side effects of the product.

B. Respondent

The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant undoubtedly has rights in the mark AMBIEN by virtue of its many registered trade marks as well as its extensive trading activities under that name.

Disregarding the domain suffix, the disputed domain name differs from the Complainant’s trademark only by the addition of the generic term “side effects”. This is insufficient to differentiate the domain name and trade mark; rather, it enhances the connection as “side effects” in commonly used in relation to medication.

The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent registered the disputed domain name with the Complainant in mind. The disputed domain name includes the Complainant’s distinctive mark AMBIEN as well as the generic term “side effects” which is commonly used in relation to medication. Furthermore the Respondent has used the disputed domain name for a website with affiliate links to websites offering “hypnotic” products competing with that of the Complainant.

The Respondent has not come forward to deny that the Complainant’s assertions of bad faith or to offer any explanation for its registration. In any case, it is clear from the nature of its website that the Respondent did not register the disputed domain name for a genuine purpose (e.g., a criticism or information website).

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel therefore finds that the Complainant has established the third element of the Policy.

 

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, <ambiensideeffects.com> be transferred to the Complainant.

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Adam Taylor
Sole Panelist

Date: August 28, 2008