WIPO Domain Name Decision: D2006-0258

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Grzegorz kowalski

Case No. D2006-0258

1. The Parties

The Complainant is Sanofi-aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.

The Respondent is Grzegorz Kowalski, Kamienna Gra, Poland.

2. The Domain Name and Registrar

The disputed domain name <buyambienonline.info> is registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2006. On March 3, 2006 the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On March 4, 2006, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center their 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”).

On March 8, 2006, the Complainant requested the suspension of the proceedings in order to achieve a settlement with the Respondent. The proceedings were suspended until April 9, 2006.

On April 10, 2006, the Complainant requested extension of the suspension period. The proceedings were suspended until May 11, 2006.

On May 11, 2006, the Complainant requested continuation of the proceedings.

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 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2006.

The Center appointed Arne Ringnes as the sole panelist in this matter on June 8, 2006. 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 Paragraph 7 of the Rules.

4. Factual Background

The disputed domain name was created on August 19, 2005.

The Complainant is a company active in the pharmaceutical market and one of the largest pharmaceutical companies in the world.

Ambien, a product indicated for the short-term treatment of insomnia, is one of the Complainant’s flagship products and the leading prescription sleep aid in the USA.

The Complainant owns a large number of AMBIEN trademarks in more than 50 countries, including a trademark in Poland filed August 10, 1993.

Further, the Complainant has registered a number of domain names worldwide containing AMBIEN, including: <ambien.us>, <ambien.co.uk>, <ambien.net> and <ambien.biz>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark AMBIEN. According to the Complainant, the addition of the generic words, “buy” and “online” and the gTLD “.info” does not change the overall impression of the disputed domain name as being connected to the Complainant.

The Complainant alleges that the Respondent has no bona fide use of the disputed domain name and no rights or legitimate interest in respect of the disputed domain name. The Complainant further alleges that there exists 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 AMBIEN trademark.

According to the Complainant, the disputed domain name is registered and used in bad faith for the following reasons:

- the Respondent has no prior rights and no authorization given by the Complainant concerning the AMBIEN trademark;

- the Respondent’s awareness that AMBIEN is one of the leading prescription sleep aids in America; and

- the composition of “buy”, “online” and AMBIEN misleads Internet users to believe that the domain names contain the official websites of the Complainant.

The Complainant further sees the Respondent’s use of the disputed domain name to link to competitive products, such as Sonata, as an indication of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark AMBIEN. The disputed domain name incorporates the Complainant’s trademark completely. The addition of the terms “buy” and “online”, does not imply that the domain name is distinguished from the trademark AMBIEN with the effect that confusion is avoided. On this point, the Panel refers to previous decisions under the Policy, see for e.g. the panel’s observations in Sanofi-Aventis, v. US-Meds.com, WIPO Case No. D2004-0809:

“The domain names in dispute are comprised of the Complainant’s trademark ACOMPLIA preceded or followed by generic words used in the trade such as “buy,” “store,” or “online” or common words used in the medical market such as “pills,” “drug,” “generic” and “pharmacy” and the gTLDs “.com” or “.net.” The Complainant holds a number of valid registrations for the ACOMPLIA trademark.

The use of the above noted generic terms in conjunction with the Complainant’s trademark ACOMPLIA does not remove the domain names in dispute from being confusingly similar, as the generic terms lack distinctiveness.”

In conclusion, in the present case, the Panel finds that the Complainant has proved the first element under the Rules, paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not contested the Complainant’s allegation that the Respondent lacks rights to or legitimate interests in the contested domain name.

It is generally difficult for the Complainant to prove that the Respondent does not have any rights or legitimate interests in the domain name at issue. On the other hand, it would be fairly simple for the Respondent to demonstrate that it has such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Previous decisions under the Policy have therefore found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default.

The primary basis for the Panel’s decision in this regard is that the Complainant has not granted the Respondent any rights to use its mark, and that the Respondent appears in no way to be affiliated with the Complainant. The Panel finds that the circumstances mentioned and evidenced by the Complainant are sufficient to establish a prima facie showing that the Respondent has no rights or legitimate interests in the domain name at issue.

As the Panel cannot find any indications of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, or any other circumstances indicating such rights or legitimate interests in the case file, the Panel concludes that the Respondent does not have any rights to or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain name in bad faith. By not submitting a Response, the Respondent has failed to invoke any circumstances that could demonstrate that the Respondent did not register and use the domain name at issue in bad faith.

Having regard to the Complainant’s trademark AMBIEN, which is registered in numerous jurisdictions, and the distinctive nature of that mark, the Panel finds it highly improbable that the Respondent was not aware of the Complainant’s rights when registering the domain name at issue.

In particular, the Respondent’s advertising for Ambien and Sonata products indicates that the Respondent was in all likelihood aware of the Complaint’s rights with respect to AMBIEN.

For the foregoing reasons, the Panel finds that the Respondent was in all likelihood aware that the registration of the disputed domain names would infringe upon the Complainant rights, and that the registration occurred in bad faith.

The Panel has visited the disputed domain name and noticed that it appears for the time being, not to be in use. The Panel observes, in accordance with previous decisions under the Policy, that bad faith inaction, resulting from failure to provide an active website, amounts to use in bad faith when all the surrounding circumstances point to registration and use in bad faith. See for e.g. Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

For the various reasons discussed above, the Panel finds that the Respondent has registered and used the domain name in dispute in bad faith.

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, <buyambienonline.info>, be transferred to the Complainant.

Arne Ringnes
Sole Panelist

Dated: July 6, 2006