WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Bobik Marley, Levitra Online Shop Inc

Case No. D2007-0652

 

1. The Parties

The Complainant is Sanofi-Aventis, of Gentilly Cedex, France.

The Respondent is Bobik Marley, Levitra Online Shop Inc, Chicago, China.

 

2. The Domain Name and Registrar

The disputed domain name <ambien-s.biz> 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 April 30, 2007. On May 2, 2007, 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 May 3, 2007, 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. 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 May 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2007.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on June 7, 2007. 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

4.1 The Complainant is a multinational company involved in the pharmaceutical industry with presence in more than 100 countries across 5 continents. It recorded consolidated net sales of € 27,311 billion in 2005 and expended € 4 billion for research and development activities. The stock market capitalization of the Complainant in 2005 was € 103,697 million.

4.2 The Complainant employs approximately 97,181 employees worldwide, with a sales force of 35,030 persons as well as more than 17,600 research staff. There are 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development. The Complainant also has strong presence in the pharmaceutical industry market in China, with more than 1600 medical sales representatives.

4.3 The Complainant’s portfolio of high-growth drugs in 2005 include Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It enjoys firmly established positions in 7 key fast-growth therapeutic fields, namely, cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.

4.4 Ambien is a product manufactured by the Complainant and is indicated for the short-term treatment of insomnia. The product was launched in the United States in 1993 and shortly thereafter, gained a reputation as a market leader in its field.

4.5 The Complainant owns a large number of AMBIEN trademarks in more than 50 countries including China. The Complainant and its affiliates have also registered numerous domain names worldwide containing the AMBIEN trademark, for example <ambien.com>; <ambien.us>; <ambien.co.uk>; <ambien.net>; <ambien.biz>.

4.6 The Complainant has instituted several domain name dispute resolution proceedings relating to domain names comprising the AMBIEN trademark and in such cases, the decisions have favoured the Complainant. These proceedings included disputes relating to the domain names “online-ambien.biz” and “ambieneffect.com”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

5.1 The Respondent’s <ambien-s.biz> domain name is identical or confusingly similar to the Complainant’s trademark AMBIEN notwithstanding the addition of the hyphen, the letter “s” and the gTLD “.biz”..

5.1.2 The Respondent has no rights or legitimate interests in respect of the domain name. In support thereof, the Complainant relies on the following factors:

(a) The Complainant has prior rights in the trademark AMBIEN, which is well known worldwide and which also precedes the registration of the domain name at issue.

(b) The domain name is being used by the Respondent to redirect users to a website with hyperlinks that seemingly promote AMBIEN products. Instead, these hyperlinks redirect users to a web site promoting online pharmacies and other products such as Alprazolam, Cialis, Meridia, Xanax, Paxil etc.

(c) The Respondent does not disclaim any relationship with the trademark owner, being the Complainant.

(d) The Respondent is not using the domain name in connection with a bona fide offering of good or services.

(e) The Respondent is not licensed to use the AMBIEN trademark.

5.1.3 The domain name was registered and is being used in bad faith. In this regard, the Complainant relies on the following circumstances:

(a) The Respondent has no prior right nor authorization from the Complainant to use the AMBIEN trademark.

(b) The Respondent registered the domain name with the knowledge that AMBIEN was a leading prescription sleep-aid with the intent of preventing the Complainant from reflecting the mark in a corresponding domain name and to disrupt the Complainant’s business.

(c) The addition of the letter “s” misleads Internet users into the belief that the website is the official website of the Complainant relating to AMBIEN products.

B. Respondent

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

 

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate interest in respect of the domain name; and

(c) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to the trademark AMBIEN. Not only has the Complainant secured various worldwide registrations of the trademark AMBIEN, but it also uses the trademark extensively on a worldwide basis for its well known prescription sleep-aid. Additionally, the Complainant has also registered domain names comprising various formatives of its trademark AMBIEN.

The addition of the hyphen and the letter “s” as well as the gTLD “.biz” does not change the overall impression of the domain name as being confusingly similar to the Complainant’s AMBIEN trademark. Based on past panel decisions, it has been widely accepted that such additions are insufficient to escape the finding of confusing similarity (see Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; 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; PepsiCo Inc v Diabetes Home Care and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184) .

Based on the fact that the Respondent’s domain name is confusingly similar to the Complainant’s trademark, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.

B. Rights or Legitimate Interests

The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name. The Panel could find no apparent rights or legitimate interests on the part of the Respondent to the disputed domain name, or to the word mark contained therein.

The Panel noted that the name of the Respondent does not comprise the word “ambien” or “ambien-s”. The Complainant has also confirmed that it has not licensed or permitted the Respondent to use the trademark AMBIEN. Given the reputation of the products reflected by the trademark and the absence of any response by the Respondent, it would be difficult for the Complainant to find any justification to support the Respondent’s rights or interests in respect of the domain name. The panel also notes that the website reproduces the Complainant’s “AMBIEN” trademark which then links to other pharmaceutical products and online pharmacies. It does not appear, therefore, that the domain name is being used in respect of a bona fide offering of goods or services.

Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

One fact which is indicative of bad faith is that the Respondent appears to have provided false contact information. The Respondent provides an address supposedly located in Chicago, China. So far as the Panel is aware, China does not contain a city or province known as Chicago. Past panel decisions have found that the use of false contact information may constitute bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). This panel takes notice that this is a common practice by non-legitimate registrants of domain names wishing to remain anonymous when registering domain names.

More significantly, the panel is also minded of the fact that the website at the disputed domain name appears to redirect Internet users to a website which reproduces the Complainant’s trademarks as hyperlinks but which links instead to other pharmaceutical products and online pharmacies. This conduct does not reflect a genuine or sincere offering of goods or services. It is indicative of an intent to disrupt the Complainant’s business by misleading Internet users through the connection or association drawn using the trademark AMBIEN.

Given the fact that the trademark AMBIEN was registered by the Complainant and was already in use worldwide prior to the registration of the domain name as well as the circumstances in which the domain name is being used by the Respondent, the Panel finds that the domain name was registered and is being used in bad faith.

Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.

 

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-s.biz> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist

Dated: June 21, 2007