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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED
Case No. D2008-1483
1. The Parties
Complainant is Sanofi-Aventis, Paris, France, represented by Bird & Bird, France.
Respondent is PLUTO DOMAIN SERVICES PRIVATE LIMITED, Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name, <buyambien.com>, is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on September 30, 2008. On October 1, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On October 7, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 8, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 13, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ or вАЬUDRPвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of Complaint, and the proceedings commenced on October 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for a Response was November 4, 2008. Respondent did not submit any response. Accordingly, the Center notified RespondentвАЩs default on November 5, 2008.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 19, 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
Complainant attached to the Complaint trademark registration records for AMBIEN from various countries throughout the world. The registration records date back to at least 1991. Some of the registrations are in the name of Complainant and some are in the name of Synthelabo, which Complainant appears to assert is ComplainantвАЩs predecessor.
Respondent registered the domain name <buyambien.com> (вАЬRespondentвАЩs domain nameвАЭ) on November 7, 2007. Complainant attached web page printouts to its Complaint which show that RespondentвАЩs domain name leads to a website with links to information concerning various drugs, including links to websites that purport to sell AMBIEN and competitive drugs without prescriptions.
5. PartiesвАЩ Contentions
Complainant asserts that it is one of the largest pharmaceutical companies in the world, and that its predecessor launched the AMBIEN pharmaceutical treatment for insomnia at least as early as 1993. Complainant asserts that it has a strong presence in India, where Respondent is located. Complainant also asserts that AMBIEN is one of the leading treatments for insomnia. As noted above, Complainant has presented evidence of many trademark registrations around the world, dating back to at least 1991. Some of those trademark registrations are in the name of Sanofi-Aventis. Complainant has provided evidence that it or its apparently related companies also have registered many domain names that use the AMBIEN trademark, including <ambien.fr>; <ambien.us>; <ambien.co.uk>; <ambien.com>; <ambien.net> and <ambien.biz>. Complainant also notes that it has prevailed in many domain name disputes where domain names have incorporated the AMBIEN trademark, including Sanofi-aventis v. Grzegorz kowalski,
WIPO Case No. D2006-0258 (July 6, 2006) (transferring <buyambienonline.info>), Sanofi-aventis v. Artie Toothaker,
WIPO Case No. D2006-0256 (June 9, 2006) (transferring the disputed domain name at issue in this case, <buyambien.com>), Sanofi-aventis v. Edith Van Der Linden,
WIPO Case No. D2006-0372 (April 24, 2006) (transferring <buyambien.info>) and Sanofi-Aventis v. Webinterfaces LLC,
WIPO Case No. DWS2005-0003 (February 2, 2006) (transferring <buyambien.ws>). Complainant asserts that the disputed domain name incorporates ComplainantвАЩs entire AMBIEN trademark along with the generic word вАЬbuyвАЭ and the gTLD вАЬ.comвАЭ, and is therefore confusingly similar to ComplainantвАЩs trademark. Complainant further asserts that the AMBIEN trademark is well known around the world, that Respondent has done nothing to disclaim any relationship with Complainant, that Complainant has not licensed Respondent to use the AMBIEN trademark, that Respondent registered the disputed domain name because of the domain nameвАЩs association with Complainant, and that Respondent therefore has no right or legitimate interest in the domain name. Finally, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith because RespondentвАЩs use is not authorized, Respondent must have known of ComplainantвАЩs trademark rights, Respondent is using the disputed domain name to link to products that compete with AMBIEN (among other things), and Respondent is misleading Internet users into believing that RespondentвАЩs website is associated with Complainant. Complainant also asserts that the disputed domain name has been offered for sale, but Complainant presented no evidence on this last point.
The Respondent did not reply to the ComplainantвАЩs contentions.
6. Discussion and Findings
Pursuant to Rules paragraph 15, panelists in domain name disputes вАЬshall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they deem] applicable.вАЭ
Under Policy paragraph 4(a), Complainant must prove the following:
(i) RespondentвАЩs domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) RespondentвАЩs domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under Policy paragraph 4(a)(i), Complainant must show that the domain name at issue is вАЬidentical or confusingly similar to a trademark or service mark in which the complainant has rightsвАЭ.
The numerous registration certificates attached to the Complaint demonstrate that Complainant has rights in the mark AMBIEN. RespondentвАЩs domain name consists of the generic word вАЬbuyвАЭ, plus ComplainantвАЩs trademark вАЬAMBIENвАЭ, plus the generic top level domain вАЬ.comвАЭ. The вАЬAmbienвАЭ portion of the disputed domain name is identical to ComplainantвАЩs trademark. The addition of the word вАЬbuyвАЭ at the beginning of the disputed RespondentвАЩs domain name does not remove the confusing similarity between the disputed RespondentвАЩs domain name and ComplainantвАЩs trademark. United Consumers Club, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0987 (October 5, 2007) (вАЬ[n]umerous [UDRP] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ¬І 23: 50 (4th ed. 1998). See General Electric Company v. CPIC NET and Hussain Syed,
WIPO Case No.. D2001-0087 (May 2, 2001)вАЭ).
Indeed, the use of an associated word such as вАЬbuyвАЭ suggests that the disputed domain name may be an authorized site from which to purchase the product from Complainant or a licensee, thereby contributing to confusion. See, e.g., F. Hoffmann-La Roche AG v. Brian Robinson,
WIPO Case No. D2007-0659 (June 27, 2007) (вАЬConfusing similarity is especially acute in this case where the generic term вАШbuyвАЩ has been tagged onto ComplainantвАЩs VALIUM trademark and where that term simply relates to the availability of VALIUM-branded products on the InternetвАЭ) and Lilly ICOS LLC v. East Coast Webs, Sean Lowery,
WIPO Case No. D2004-1101 (March 16, 2005) (вАЬHere, RespondentвАЩs addition of the descriptive word вАШbuyвАЩ to ComplainantвАЩs CIALIS brand pharmaceutical product suggests that RespondentвАЩs web site is a source from which a consumer might purchase ComplainantвАЩs CIALIS brand pharmaceutical product. The addition of вАШbuyвАЩ does not in any way distinguish Respondent from Complainant, and indeed suggests an affiliation, using ComplainantвАЩs trademark to promote RespondentвАЩs businessвАЭ). Similarly, the addition of вАЬ.comвАЭ at the end of the domain name also does not remove the confusing similarity between RespondentвАЩs domain name and ComplainantвАЩs trademark; United Consumers Club, Inc. v. Texas International Property Associates, supra) (вАЬThe addition of the .com top level domain also does nothing to dispel the confusing similarity between RespondentвАЩs domain name and ComplainantвАЩs trademark.вАЭ).
Similar principles were applied by another panel to determine that this very domain name <buyambien.com> is confusingly similar to ComplainantвАЩs AMBIEN trademark. Sanofi-aventis v. Artie Toothaker, supra. This panel agrees with that conclusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
The Complainant also must demonstrate that the Respondent has вАЬno rights or legitimate interests in respect of the domain nameвАЭ. Policy paragraph 4(a)(ii). вАЬAny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the RespondentвАЩs] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [RespondentвАЩs] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] 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.вАЭ
Policy, paragraph 4(c).
вАЬAmbienвАЭ does not appear to be an English word and RespondentвАЩs combination of the word вАЬbuyвАЭ with ComplainantвАЩs trademark indicates that Respondent вАУ PLUTO DOMAIN SERVICES PRIVATE LIMITED would not be commonly known as <buyambien.com>. The use of the disputed domain name <buyambien.com> in connection with a website that offers pharmaceutical drugs for sale appears to be designed to trade on the goodwill associated with ComplainantвАЩs trademark. Such use is not considered a bona fide or a fair use under the Policy; Hoffmann-La Roche Inc. v. Onlinetamiflu.com,
WIPO Case No. D2007-1806 (February 19, 2008) (вАЬScreens from RespondentвАЩs website presently accessible to the Panel online show that the disputed domain name is being used to promote products of ComplainantвАЩs competitors, and links to online pharmacies. The Panel therefore finds that RespondentвАЩs use of the disputed domain name demonstrates RespondentвАЩs lack of a legitimate non-commercial interest in or fair use of, the domain nameвАЭ). See also Sanofi-aventis v. Artie Toothaker, supra).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name, and that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
The Complainant also bears the burden of establishing that the вАЬdomain name has been registered and is being used in bad faithвАЭ. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
вАЬ[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] 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 [RespondentвАЩs] 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 [RespondentвАЩs] web site or other on-line location, by creating a likelihood of confusion with the complainantвАЩs mark as to the source, sponsorship, affiliation, or endorsement of [RespondentвАЩs] web site or location or of a product or service on [RespondentвАЩs] web site or location.вАЭ
Complainant asserts that Respondent is not authorized to use ComplainantвАЩs AMBIEN trademark, that Respondent was aware of the trademark when it registered the disputed domain name, and that Respondent is using the disputed domain name to link Internet users to competitive products (among other things), while confusing users into believing that RespondentвАЩs website is affiliated with Complainant. The unauthorized use of ComplainantвАЩs trademark to sell competitive products constitutes bad faith under paragraph 4(b)(iv) of the Policy. Hoffmann-LaRoche Inc. v. sasha rutova,
WIPO Case No. D2008-0746 (July 8, 2008); Sepracor Inc. v. graphicsmachine.com,
WIPO Case No. D2007-0646 (June 28, 2007); and Sanofi-aventis v. Grzegorz kowalski; Sanofi-aventis v. Artie Toothaker; Sanofi-aventis v. Edith Van Der Linden; Sanofi-Aventis v. Webinterfaces LLC, supra.
The factors under paragraph 4(b) of the Policy are nonexclusive. AMBIEN is a prescription drug and the materials attached to the Complaint as well as the PanelвАЩs own visit to the вАЬwww.buyambien.comвАЭ website indicate that the disputed domain name leads to online sites that purport to sell AMBIEN without a prescription. Indeed, there is an apparently rotating link on RespondentвАЩs domain name which states вАЬAmbien without a prescriptionвАЭ. The use of a domain name that is confusingly similar to a prescription drug, in order to sell the drug without a prescription, presents a potentially serious public health risk and is a bad faith use of the domain name. Sepracor Inc. v. Shonkin Inc.,
WIPO Case No. D2008-1258 (October 29, 2008); Hoffmann-La Roche Inc. v. Kevin Chang,
WIPO Case No. D2008-1344 (October 27, 2008); Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,
WIPO Case No. D2008-0682 (July 2, 2008) (вАЬThe evidence is clear that the sales of the ACCUTANE product or competitive products were made possible by the use of the website of the Respondent associated with the domain name in dispute to reach online pharmacies, which is illegal in the U.S. and that such sales result from the confusion created by the domain name in dispute and the well known Trademark of the Complainant. These activities have been considered as causing harm to the public and the Complainant and are showing use of the domain name in bad faithвАЭ).
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that Policy paragraph 4(a)(iii) is satisfied.
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 <buyambien.com> be transferred to the Complainant.
Bradley A. Slutsky
Dated: December 2, 2008