WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. KerryWeb Enterprise, Inc.
Case No. D2007-0764
1. The Parties
The Complainant is Sanofi-Aventis, Paris, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is KerryWeb Enterprise, Inc., Santa Fe Springs, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <ambienpill.net>, <ambienpills.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2007. On May 26, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name. On June 18, 2007, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on June 28, 2007. The Center verified that the Complaint together with the amendment to 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 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2007.
The Center appointed Eduardo Machado as the sole panelist in this matter on August 2, 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
The Complainant Sanofi-Aventis is a multinational company present in more than 100 countries across 5 continents.
The group benefits from a large portfolio of high-growth drugs, with 8 pharmaceuticals in 2005: Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Allegra, Lantus and Tritace. It enjoys firmly established positions in 7 key fast-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
Employing approximately 97, 181 people worldwide, Sanofi-Aventis has a sales force of 35, 030 persons, as well as more than 17, 600 research staff with 127 projects under development, 56 of which are at advanced stages and 71 in pre-clinical development.
Sanofi-aventis is a major player on the pharmaceutical market in the United States of America. With eight flagship products, the Group consolidated its positioning in major therapeutic areas: cardiovascular, thrombosis, cancer, diabetes, central nervous system, internal medicine, metabolic disorders and vaccines.
The main contributors to growth in 2004 were: Plavix, still the Group’s best-selling product in the United States of America with 34% sales growth; Ambien, up by 21% and keeping its number one position on the hypnotics market; Lovenox, which again outperformed the market with 20% growth sales.
Ambien is a product manufactured by Sanofi-Aventis and is indicated for the short-term treatment of insomnia.
The Complainant owns a large number of AMBIEN trademarks in more than 50 countries including the United States of America and the European community.
The Complainant and its affiliates, have registered numerous domain names worldwide containing the AMBIEN trademark, for example <ambien,fr>; <ambien.us>; <ambien.co>; <ambien.net>; <ambien.biz>.
Complainant has filed many complaints before the Center, regarding the trademark AMBIEN so as to obtain the transfer of the contentious domain names.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its AMBIEN trademark. It maintains that the addition of the generic and descriptive terms “pill” and “pills”, and the gTLD “.net” and “.com” does not change the overall impression of the designation as being connected to the Complainant, and is designed to cause persons accessing the domain name to mistakenly believe that the disputed domain name has a connection with the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain name as:
(a) the Complainant has prior rights in the trademark AMBIEN, that precede the Respondent’s registration of the disputed domain name;
(b) the Complainant’s trademark is well-known throughout the world;
(c) the Respondent does not have a license, consent or other right by which it would have been entitled to register or use the Complainant’s trademark AMBIEN; and
(d) the Respondent has not made bona fide use of the disputed domain name.
The Complainant also alleges that the Respondent acquired and uses the disputed domain name in bad faith as constituted by:
(a) its lack of any legitimate rights in or authorization given by the Complainant concerning the AMBIEN trademark;
(b) its apparent awareness of AMBIEN as one of the leading prescription sleep aids in the United States of America constitutes bad faith registration and use.
(c) the addition of generic words to the trademark AMBIEN which allegedly misleads Internet users into believing that it is an official website of the Complainant.
The Complainant requests that the disputed domain name be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that <ambienpill.net> and <ambienpills.com> are confusingly similar to the AMBIEN marks since the dominant portion of Complainant’s registered marks and of the disputed domain names is AMBIEN. The domain names differ from Complainant’s registered AMBIEN marks only in that they contain the generic and descriptive terms “pill” and “pills”.
The Panel finds that adding generic and descriptive terms to a domain name such as “pill” or “pills” is not sufficient to escape the finding of similarity and, additionally, does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “pill” and “pills” do not serve any distinguishing function. Of relevance are the following domain names, which were all held by previous panels to be confusingly similar to the AMBIEN trademark of the Complainant: Sanofi-Aventis v. Helois Lab, <ambienadvisor.com>, WIPO Case No. D2005-0607: Sanofi-Aventis v. Juntech, Inc., <online-ambien.biz>, WIPO Case No. D2005-0606; Sanofi-Aventis v. Gabe Smith, <buy-ambien-online.net>, WIPO Case No. D2005-0605; Sanofi-Aventis v. Conciergebrain.com, <ambien-free-shipping.com>, <ambien-overnight.info>, <ambien-overnight.org>, <ambien-pharmacie.net>, <ambien-prescription.org>, <ambien-usa.net>, <ambien-5mg.org>, <cheap-ambien.net>, <cheap-ambien-no-shipping-charge.com>, <cheap-ambien-sleeping-pill.com>, <cheapest-ambien.org>, <lowest-price-ambien.com> and <order-ambien-cheap.com>, WIPO Case No. D2005-0660.
The Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the domain names and has not used the domain names, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the domain names provided, in part, links to websites that were in direct competition with Complainant.
Moreover, the domain names as of the date of this decision still resolve to pages that display links to Complainant’s competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards, NAF Case No. FA132439 (National Arbitration Forum, December 31, 2002) (finding that the Respondent’s use of complainant’s marks to divert Internet users to a website which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).
A complainant is required to make out an initial 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 Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain names in bad faith.
Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm Complainant’s allegations that it had long been using its AMBIEN marks when the domain names that are the subject of this Complaint were registered. The Panel finds persuasive Complainant’s allegation that the Respondent must have been aware of the Complainant’s rights in the mark and, further that Respondent knowingly infringed the Complainant’s trademark when it registered the subject domain names.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”, Policy paragraph 4(b)(iv). Respondent used Complainant’s known trademark in pharmaceutical industry to attract users to Respondents’ websites where they are offered links to Complainant’s competitors. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondent’s website.
At the time the Complaint was filed and at the time of this Decision, the domain names still resolved to pages that offer visitors links to sites of other companies, including Complainant’s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”) See also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly the Panel finds that the Complainant has established bad faith registration and use of the domain name by the Respondent.
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 names, <ambienpill.net> and <ambienpills.com> be transferred to the Complainant.
Eduardo Machado
Sole Panelist
Dated: August 16, 2007