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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Demand Domains, Inc.
Case No. D2008-1484
1. The Parties
The Complainant is Sanofi-Aventis, of Paris, France, represented by Bird & Bird, France.
The Respondent is Demand Domains, Inc. of Bellevue, Washington, United States of America, represented by Christina G. Radocha, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <ambien-drugstore.com> is registered with EnomMX, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on September 30, 2008. On October 1, 2008, the Center transmitted by email to EnomMX, Inc. a request for registrar verification in connection with the Domain Name. On October 1, 2008, EnomMX, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 13, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ or вЂњUDRPвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the amended Complaint, and the proceedings commenced on October 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2008. The Response was filed with the Center on November 6, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on December 4, 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 following (uncontested) facts are taken from the Complaint.
The Complainant was formed in 2004, following the merger of two large French pharmaceutical companies. The merged entity has become the number one pharmaceutical group in Europe and in the вЂњBRICMвЂќ markets (Brazil, The Russian Federation, India, the PeopleвЂ™s Republic of China, and Mexico), with consolidated net sales of в‚¬28 billion in 2007. The Complainant has a strong presence in all major world markets, being represented in 100 countries spread across five continents.
One of the ComplainantвЂ™s top-selling drugs is Ambien. Ambien was first launched in the United States of America in 1993, and by 1994 had become a market leader in the short-term treatment of insomnia.
The ComplainantвЂ™s AMBIEN Trademarks
The Complainant is the registered proprietor of the mark AMBIEN in numerous jurisdictions around the world. It is not necessary to refer to them all. It is sufficient to note first that the Complainant is the registered proprietor of the mark AMBIEN in the United Kingdom of Great Britain and Northern Ireland, in respect of pharmaceutical preparations and substances in international class 5, and in Australia in respect of pharmaceutical products, preparations and substances for the central nervous system, in international class 5. The ComplainantвЂ™s predecessor in title to the AMBIEN registrations in the United Kingdom of Great Britain and Northern Ireland and in Australia was the French corporation Synthelabo, and that corporation is also shown as the registered proprietor of a United States-registered AMBIEN mark having an effective date of May 1, 1993. The Complainant asserts, and the Respondent does not deny, that the United States registration is now held by the Complainant.
The Complainant and its affiliates also hold numerous вЂњambienвЂќ domain names, including <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net>, and ambien.biz>.
The Complainant has filed numerous complaints in respect of various contentious вЂњambienвЂќ domain names, and almost all of the decisions have ordered the transfer of the disputed domain names to the Complainant. The Complainant refers in particular to the decisions in SANOFI-AVENTIS v Whois Privacy Protection Service Inc.,
WIPO Case No. D2006-0914, relating to the domain name <ambien-rx-store.com>, and Sanofi-Aventis v. US Online Pharmacies,
WIPO Case No. D2006-0582, relating to the domain name <ambienpharmacy.com>. In each case, the panel ordered the transfer of the disputed domain name to the Complainant.
The Respondent and the Domain Name
The Domain Name was registered on June 3, 2008.
The Complainant has produced pages from the website at the Domain Name (вЂњthe RespondentвЂ™s websiteвЂќ), printed on September 15, 2008. The RespondentвЂ™s website then consisted of fairly typical medicine-focused landing pages, with click-through links to subpages or third party websites grouped under a number of headings. The headings included вЂњMedicineвЂќ, вЂњAphrodisiacвЂќ, вЂњTestosteroneвЂќ, вЂњValiumвЂќ, вЂњMelatoninвЂќ, вЂњPillвЂќ, and вЂњHuman Growth HormoneвЂќ. In addition, there were more general click-on categories of the kind typically found on landing pages вЂ“ e.g. вЂњInsuranceвЂќ, вЂњHotel ReservationвЂќ, вЂњDating OnlineвЂќ and вЂњDebt ConsolidationвЂќ.
On the home page, there was posted a prominent notice:
вЂњThis domain may be for sale. Buy this Domain.вЂќ
The site visitor could click on the words вЂњBuy this DomainвЂќ, and a page was provided for the site visitor to submit an offer for the Domain Name.
The Complainant alleges, and the Respondent does not dispute, that the RespondentвЂ™s website contains links to websites promoting medical products manufactured by competitors of the Complainant. One such product, which was itself one of the click-through headings which appeared on the RespondentвЂ™s website on September 15, 2008, was Valium.
In its Response, the Respondent says that it has a policy against assuming registration, or holding domains, in derogation of legitimate rightsвЂ™ holders. The Respondent says that at the time it acquired the Domain Name, it was unaware that the Domain Name might conflict with the ComplainantвЂ™s trademark, and indeed was unaware of the Complainant and its rights until it received the Complaint filed in this proceeding.
The RespondentвЂ™s website does not contain any text, disclaiming any relationship between the Respondent and the Complainant.
The Complainant says that it has not licensed or authorized the Respondent to register the Domain Name, or any other domain name incorporating the ComplainantвЂ™s AMBIEN trademark.
Pre-commencement Correspondence between the Parties
The Complainant says that its representative sent a cease and desist letter to the Respondent on July 30, 2008. The letter referred to the ComplainantвЂ™s AMBIEN trademark, and demanded the transfer of the Domain Name within 8 days of the date of the letter. In its Response, the Respondent denies receiving this letter, and says that the ComplainantвЂ™s only attempt to contact the Respondent has been by email, despite a readily-available address, a facsimile number, and a telephone number being listed in the WhoIs record for the Domain Name. The Respondent says that, had it received the ComplainantвЂ™s initial correspondence, upon evaluation of the ComplainantвЂ™s claims, it would have worked with the Complainant to reach an amicable resolution, making a Complaint under the Policy unnecessary.
The Respondent says that, following the commencement of this proceeding, it has tried to contact the ComplainantвЂ™s representatives to resolve the matter. The Respondent produced a copy of an email dated October 3, 2008, addressed to the RespondentвЂ™s representatives, stating that it had never received the prior communication from the RespondentвЂ™s representatives, and noting that it appeared that the WhoIs Privacy Protection Service had neglected to forward the letter on to the Respondent. The RespondentвЂ™s October 3, 2008 letter expressed interest in reaching an amicable conclusion, which would incorporate the transfer of the Domain Name to the Complainant without delay. The Respondent sought the ComplainantвЂ™s agreement to the temporary suspension of the proceeding, so that the registrar could release the lock on the Domain Name and initiate a transfer.
The Respondent sent a follow-up email to the ComplainantвЂ™s representative on October 10, 2008.
On October 13, 2008, the ComplainantвЂ™s representatives sent an email in reply, acknowledging the proposal of free and immediate transfer of the Domain Name but informing the Respondent that the Complainant wished to continue with the proceeding and wait for the PanelвЂ™s decision.
Following a request from counsel for the Respondent that the Complainant reconsider its position, the ComplainantвЂ™s representatives sent a further email to the RespondentвЂ™s representatives on October 31, 2008. The October 31, 2008 email referred to the several changes which had taken place in the RespondentвЂ™s email address, and concluded вЂњ... you probably did not receive this [the letter from the ComplainantвЂ™s representatives dated July 30, 2008] because you are constantly changing the contact email addressвЂќ. The ComplainantвЂ™s representatives went on to confirm that their client wished to pursue the proceeding.
In its Response, the Respondent says that it would still like to reach a resolution of the matter. It reiterates its offer to transfer the Domain Name to the Complainant.
5. PartiesвЂ™ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the ComplainantвЂ™s AMBIEN mark. Numerous panelists have considered 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. In this case, the addition of the word вЂњdrugstoreвЂќ, in the context of the ComplainantвЂ™s activities in the pharmaceutical industry, is generic. Furthermore, the fact that the Domain Name wholly incorporates the ComplainantвЂ™s registered mark is sufficient to establish confusing similarity for the purpose of the Policy.
2. Persons accessing the Domain Name would be bound to think that the Domain Name has a connection with the Complainant.
3. The Respondent has no rights or legitimate interests in respect of the Domain Name, for the following reasons:
(i) The Complainant has rights in the trademark AMBIEN, which precede the RespondentвЂ™s registration of the Domain Name.
(ii) The RespondentвЂ™s website provides links to websites promoting medical products manufactured by competitors of the Complainant.
(iii) The RespondentвЂ™s website does not contain any disclaimer of a relationship with the Complainant, and does nothing to dispel any possible suggestion that the RespondentвЂ™s website might be that of the Complainant.
(iv) The RespondentвЂ™s use of the Domain Name does not satisfy the test for a bona fide reseller laid down in prior decisions under the Policy, including the panel decision in Oki Data Americas, Inc. v. ASD, Inc.
WIPO Case No. D2001-0903.
(v) There is no license, consent, or other right by which the Respondent might have been entitled to register or use a domain name incorporating the ComplainantвЂ™s AMBIEN mark.
(vi) The Respondent registered the Domain Name with the intention of diverting consumers, and preventing the Complainant from reflecting its AMBIEN mark in a corresponding domain name.
(vii) The Respondent has made no bona fide use of the Domain Name, because of its lack of authorization to use the AMBIEN mark. Furthermore, using a domain name in order to divert consumers for commercial gain cannot be characterized as a fair use.
4. The Domain Name should be considered as having been registered and used in bad faith, for the following reasons:
(i) The Respondent had no prior right and no authorization given by the Complainant concerning the AMBIEN marks.
(ii) The Respondent was aware that AMBIEN is a leading prescription sleep aid.
(iii) The addition of the word вЂњdrugstoreвЂќ to the AMBIEN trademark misleads Internet users, since it makes them believe that the RespondentвЂ™s website is an official website of the Complainant.
(iv) The Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. That is an opportunistic act, which seeks to disrupt the ComplainantвЂ™s business.
(v) The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party, can, in itself, be considered as disrupting the business of the rightful owner.
(vi) The offering of the Domain Name for sale, even to a third party, supports an inference of bad faith (citing TV Globo Ltda v. Radio Morena,
WIPO Case No. D2000-0245, and Parfums Christian Dior v. QTR Corporation,
WIPO Case No. D2000-0023).
(vii) The RespondentвЂ™s failure to answer the cease and desist letter dated July 30, 2008, is further evidence of the RespondentвЂ™s bad faith.
The Respondent contends as follows:
1. It was unaware of the ComplainantвЂ™s mark when it registered the Domain Name.
2. The Respondent does not conceal its identity for any non-legitimate or bad faith purpose.
3. Throughout the dispute, the Respondent has acted with the utmost good faith, responding promptly upon receipt of the proceeding and offering an immediate transfer of the Domain Name.
4. The Respondent requests that the Panel dismiss the Complaint, as the Respondent has acted only in good faith. Upon dismissal, the Respondent will immediately transfer the Domain Name to the Complainant. In the alternative, the Panel should refrain from making any formal finding that the Respondent acted in bad faith. The Panel is requested to simply endorse the RespondentвЂ™s offer to transfer the Domain Name to the Complainant.
6. Discussion and Findings
A. Procedural Issue вЂ“ RespondentвЂ™s alternative requests that the Panel (i) simply endorse the RespondentвЂ™s offer to transfer the Domain Name to the Complainant, or (ii) dismiss the Complaint (in which case the Respondent says that it will transfer the Domain Name to the Complainant)
This Panel addressed a similar issue in the case of Deutsche Telekom AG v. Janaslani Enterprises, LLC,
WIPO Case No. D2008-0219. In that case, the Panel said:
вЂњNumerous Panel decisions under the Policy have considered the position where a respondent files a short response, offering to transfer the disputed domain name to the complainant. There appears to be a sharp divergence among WIPO Panels, on how such cases should be resolved.
A recent example of such a case is Chicago Pneumatic Tool Company LLC v. Texas International Property Associates,
WIPO Case No. D2008-0144. In that case, the respondent agreed to the relief requested by the complainant, offering a вЂњunilateral consent to transferвЂќ. However, the respondent denied that such offer was an admission of the three elements of section 4(a) of the Policy. The respondent in Chicago Pneumatic Tool Company LLC noted that some panels have granted the relief requested by a complainant in such cases, without reviewing the merits of the complainantвЂ™s claim. Other panels have taken such an offer as an admission that the three elements of paragraph 4(a) of the Policy are satisfied. Thirdly, some Panels have considered complaints in such cases on the merits, and come to decisions independently of the вЂњunilateral consent to transferвЂќ.
The Panel in Chicago Pneumatic Tool Company LLC followed the third of those courses i.e., it elected to examine the case as if the respondent had defaulted (as the Panel put it, вЂњsince Respondent generally states that it does not admit to any of ComplainantвЂ™s allegations nor did it provide a single countervailing item of evidence in its ResponseвЂќ).
In Ranbaxy Laboratories Limited v. Jucco Holdings,
WIPO Case No. D2007-1562, the panel came to a similar view, stating:
вЂњContrary to the language in Williams вЂ“ Sonoma, Inc. v. EZ-Port,
WIPO Case No. D2000-0207, we believe that Rules 10(a) combined with 10(c) do not authorize the Panel to transfer the disputed domain name without review of the three main conditions set forth in Paragraph 4(a) of the Policy, just because the Respondent has consented to the relief. The Complainant who has made a claim is entitled to a decision on the merits of the case and based on the arguments that the Panel deems to be proven.
To summarize, it is only where the two parties involved have in one way or another agreed on such expedited transfer, that it may take place. In such a case, the panel must be satisfied that the Complainant appears to hold title on the disputed domain name, ie appears to own a trade mark.вЂќ
The most commonly cited cases in which panels have ordered the transfer of a disputed domain name (when the respondent has made a unilateral offer to transfer) without considering the merits of the case, appear to be the Williams-Sonoma, Inc case (supra), and The Cartoon Network LP, LLP v. Mike Morgan,
WIPO Case No. D2005-1132. The reasoning adopted by the Panels in those cases appears to have been that ordering a transfer without considering the merits was the expeditious course, and could be accommodated within Rule 10(a) of the Rules (which permits a Panel to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules).
The panel in this case will follow the course adopted by the Panel in Chicago Pneumatic Tool Company LLC. As in that case, the Respondent here has effectively declined to accept liability for the three elements of Paragraph 4(a) of the Policy, so there is no question of dealing with the proceeding as if the Respondent had admitted those elements.
As for the alternative of вЂњrubber stampingвЂќ a respondentвЂ™s вЂњconsent to transferвЂќ, the Panel agrees with the Panel in Chicago Pneumatic Tool Company LLC, that there does not appear to be any proper basis in the Policy or the Rules justifying such an approach, at least where the respondent is only offering to accede to the relief sought by the complainant, and is not admitting the grounds of the complaint. Rule 10(a) of the Rules does not relieve the Panel of the responsibility of conducting the proceeding вЂњin accordance with the PolicyвЂќ, and Paragraph 4(a) of the Policy provides unequivocally that the Complainant must prove that each of the three elements of Paragraph 4(a) are present. Further, Rule 17 of the Rules permits a respondent to object to a request by a complainant to withdraw its complaint, if the respondent has a вЂњjustifiableвЂќ objection to the withdrawal of the proceeding. (Under that Rule, a panel may, subject to that right of objection, terminate a proceeding if it has become вЂњunnecessaryвЂќ to continue it.) If the complaint was entirely without merit, to the point that the panel felt that it was bound to consider the possibility of reverse domain name hijacking, one can readily imagine the panel declining to accede to the complainantвЂ™s request to terminate the proceeding.
As there might be cases where a respondent justifiably objects to the termination of a proceeding under Rule 17, so one can imagine circumstances where a complainant might want a proceeding to continue, notwithstanding the respondentвЂ™s unilateral consent to the transfer of the disputed domain name. The obvious example is the situation where the complainant is interested to obtain a decision on the merits in order to support an argument in other cases against the same respondent, that the respondent has engaged in a pattern of abusive domain name registrations (relevant to the example of bad faith registration and use set out at paragraph 4(b)(ii) of the Policy).
Having regard to the considerations discussed above, it seems to the Panel that there is no basis in the Policy or the Rules for Panels to make orders transferring disputed domain names on the unilateral consents of respondents, in circumstances where the individual elements of Paragraph 4(a) of the Policy are at the same time denied by the respondents. (If a respondentвЂ™s unilateral consent to transfer can fairly be read as an admission of each of the elements of Paragraph 4(a) of the Policy, that would be a different matter. But that is not the position in this case.)вЂќ
In the PanelвЂ™s view, that general approach remains appropriate, and the Panel will follow it, with appropriate modifications, in this case.
In this case, it cannot be said that the parties have agreed on a settlement: the Complainant has filed a Complaint requesting a finding of bad faith, and the Respondent refuses to agree to such a finding being made. Paragraph 17(a) of the Rules therefore does not apply. In any event, neither paragraph 17(a) nor paragraph 17(b) of the Rules gives jurisdiction to a Panel to order a transfer of a disputed domain name without consideration of the matters required to be proved under paragraph 4(a) of the Policy. Paragraphs 17(a) and (b) only authorize the termination of the proceeding in the circumstances described in those paragraphs, before the Panel has given any decision.
The Respondent has asked the Panel to dismiss the Complaint because, it says, it has acted in good faith. Once the Complaint has been dismissed, it says that it will then transfer the Domain Name to the Respondent. Is that promise sufficient for the Panel to terminate the proceeding, on the grounds that it has become вЂњunnecessary to continue the administrative proceedingвЂќ (Rules, Paragraph 17(b)? What if the Panel dismissed the Complaint (or more correctly, terminated the proceeding under Paragraph 17(b) of the Rules), and the Respondent then failed to honor its promise to transfer the Domain Name to the Complainant?
The Panel does not regard the RespondentвЂ™s promise as sufficient to render the continuation of the proceeding unnecessary. The RespondentвЂ™s proposal was itself predicated on the Panel accepting the RespondentвЂ™s unsupported assertion that it acted in good faith in registering and using the Domain Name, and, for the reasons that appear below, the Panel does not accept that assertion.
Having regard to the foregoing considerations, the Panel will consider each element of paragraph 4(a) of the Policy, but with due regard to the fact that the Respondent has not challenged the ComplainantвЂ™s case under paragraphs 4(a)(i) and 4(a)(ii) of the Policy.
For the foregoing reasons, the Panel will address the present Complaint on its merits.
B. What the Complainant must prove вЂ“ general
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
вЂњвЂ¦ decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.вЂќ
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved this part of the Complaint. It is the registered proprietor of the mark AMBIEN, and that registered mark is incorporated in its entirety in the Domain Name. Numerous panels have held that the incorporation of a ComplainantвЂ™s trademark in a disputed domain can be powerful evidence of confusing similarity between the disputed domain name and the complainantвЂ™s trademark вЂ“ see for example Nokia Group. v. Mr. Giannattasio Mario,
WIPO Case No. D2002-0782.
In this case, all that has been added to the ComplainantвЂ™s AMBIEN mark, are the word вЂњdrugstoreвЂќ and the (generic) hyphen and вЂњ.comвЂќ suffix. The hyphen and the вЂњ.comвЂќ suffix do not affect the meaning of the Domain Name, and are not to be taken into account in the comparison which is required by paragraph 4(a) of the Policy. The word вЂњdrugstoreвЂќ is a common noun in the English language, which clearly has a connection with the ComplainantвЂ™s AMBIEN drug вЂ“ Internet users may simply assume that the Domain Name must resolve to an online drugstore at which the ComplainantвЂ™s AMBIEN drug is marketed, and the Panel accepts the ComplainantвЂ™s arguments based on the SANOFI-AVENTIS v. Whois Privacy Protection Service Inc.,
WIPO Case No. D2006-0914 and Sanofi-Aventis v. US Online Pharmacies,
WIPO Case No. D2006-0582 cases (dealing respectively with the domain names <ambient-rx-store.com>, and <ambienpharmacy.com>). In both cases the disputed domain names were transferred to the Complainant, and the Panel is of the view that there is no relevant difference (as far as confusing similarity is concerned) between the Domain Name in this case, and the very similar domain names which were the subject of transfer orders in those two cases.
Accordingly, the Complainant succeeds on this part of its Complaint.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the CenterвЂ™s online document вЂњWIPO Overview of WIPO Panel Views on Selected UDRP QuestionsвЂќ, as follows:
вЂњA Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRPвЂќ.
The Complainant has not authorized the Respondent to use its AMBIEN mark. The Domain Name is confusingly similar to the ComplainantвЂ™s mark, and there is no suggestion of the Respondent being вЂњcommonly known byвЂќ the Domain Name. Therefore, paragraph 4(c)(ii) of the Policy cannot apply.
That combination of circumstances sufficiently establishes a prima facie case, and the evidentiary onus shifts to the Respondent to demonstrate that it does have some right or legitimate interest in respect of the Domain Name.
The Respondent has not attempted to assert any such right or legitimate interest. On the contrary, it has offered the immediate, free transfer of the Domain Name to the Complainant. The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondentвЂ™s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainantвЂ™s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondentвЂ™s] website or other on-line location, by creating a likelihood of confusion with the complainantвЂ™s mark as to the source, sponsorship, affiliation, or endorsement of [the respondentвЂ™s] website or location or of a product or service on [the respondentвЂ™s] website or location.
The Panel is also of the view that the Complainant has proved this part of the Complaint. First, the RespondentвЂ™s claim that it was вЂњunaware that it had assumed registration of a domain that might conflict with the ComplainantвЂ™s trademarkвЂќ, does not appear to the Panel to be plausible. The RespondentвЂ™s name suggests that it is in the business of buying and selling domain names, and the fact that a вЂњFor saleвЂќ notice was prominently posted on the RespondentвЂ™s website tends to confirm that the Respondent is a trader in domain names (the Respondent had only acquired the Domain Name in June of 2008, and it was already on the market for sale less than three months later). The mark AMBIEN is an unusual, distinctive mark, and it is not credible that the Respondent could have acquired the Domain Name without turning its mind to what that word signified. The drugs-related content of the RespondentвЂ™s website also confirms that the Respondent must have been aware of the meaning of AMBIEN when it registered the Domain Name.
The Respondent has offered no reason for its choice of the Domain Name, nor any evidence of steps taken by it to discharge its obligation under paragraph 2 of the Policy вЂњto determine whether your domain name registration infringes or violates someone elseвЂ™s rights.вЂќ If and to the extent that the Respondent may have registered the Domain Name by an automated process, the unusual nature of the Domain Name (it is not comprised of descriptive, or generic, dictionary words) placed a clear obligation on the Respondent to conduct some inquiries to determine whether the registration of the Domain Name would violate anyoneвЂ™s rights (see in that regard, Media General Communications, Inc. v. RareNames, WebReg,
WIPO Case No. D2006-0964, and Grundfos A/S v. Texas International Property Associates,
WIPO Case No. D2007-1448). The Respondent has not provided evidence of conducting any such inquiries before registering the Domain Name.
Having regard to all of those circumstances, the Panel is satisfied that the Respondent has registered and used the Domain Name for the bad faith purpose described at paragraph 4(b)(iv) of the Policy. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the RespondentвЂ™s website, by creating a likelihood of confusion with the ComplainantвЂ™s AMBIEN mark as to the source, sponsorship, affiliation, or endorsement of the RespondentвЂ™s website or of the products or services marketed through the RespondentвЂ™s website.
The Complainant having established all three elements required to be proved, the Domain Name must be transferred to the Complainant.
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-drugstore.com>, be transferred to the Complainant.
Dated: December 18, 2008