WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Antoine Tardif / Cybernet Marketing

Case No. D2006-0879

 

1. The Parties

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

The Respondent is Antoine Tardif/Cybernet Marketing, Red Deer, Alberta, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <buy-ambien-drug-online.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2006. On July 12, 2006, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On July 18, 2006, InnerWise, Inc. d/b/a ItsYourDomain.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 July 19, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2006.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on August 24, 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 the Rules, Paragraph 7.

 

4. Factual Background

The Complainant is a large multinational company which is the third largest pharmaceutical company in the world. One of its prominent products is Ambien, which is a very efficacious and well-known drug prescribed for the short-term treatment of insomnia.

The Complainant is the registered owner of trademarks for AMBIEN throughout the world. The Complainant has provided in evidence a list of its worldwide trademark applications or registrations for AMBIEN and copies of its worldwide registration certificates for the mark. It is not necessary to list them all here, but some of the most significant of these trademarks are as follows:

(a) Registered trademark No.93/456039 for AMBIEN registered in France on February 19, 1993;

(b) Registered trademark No. 74/345754 for AMBIEN registered in the United Sates of America on December 7,1993;

(c) Registered trademark No.1, 466,136 for AMBIEN registered in the United Kingdom on May 31,1998; and

(d) An international trademark for AMBIEN registered with WIPO on October 1, 1993.

These trademarks, together with the other trademarks for AMBIEN, of which the Complainant has provided extensive evidence, will be collectively referred to as ‘ the trademark’.

The Complainant has also registered a series of domain names throughout the world, such as <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net> and<ambien.biz>.

The disputed domain name <buy-ambien-drug-online.com > was registered by the Respondent on March 28, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name, <buy-ambien-drug-online.com>, should no longer be registered with the Respondent, but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of Paragraph 4(a) of the Policy, the domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered AMBIEN trademark to which reference has already been made. It then says that it is self-evident that the domain name, <buy-ambien-drug-online-com> is confusingly similar to the AMBIEN mark.

The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in any of the domain names because the facts show an obvious intention by the Respondent to trade on the Complainant’s AMBIEN mark by using the domain name to operate a web site which misleads consumers into believing that they have arrived at one of the Complainant’s websites. This is done, it is contended, by using the site to promote the ‘Cheapest Ambien’ and also an alternative to Ambien and then by linking the site to third party sites that promote pharmaceutical products in direct competition with the Complainant and its trademarked drug Ambien. The same process is used to link the consumer to other sites that promote goods and services that have no connection at all with the Complainant or its product Ambien and even no connection with pharmaceutical products at all. Nor, it is argued, can the Respondent establish that it has a right or legitimate interest in the domain name by bringing itself within any of the provisions of Paragraph 4(c) of the Policy.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because its deceptive conduct comes squarely within Paragraphs 4(b)(iii) and (iv) of the Policy, amongst other provisions, for it must be inferred from all of the facts and circumstances that the Respondent registered and has used the domain name in bad faith with the intention of diverting customers looking for the product Ambien and the Complainant’s official web sites to websites of the Complainant’s competitors selling different products and to other websites promoting other goods and services and with the further intention of doing so for commercial gain.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, Paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

It is to be noted that Paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the domain name <buy-ambien-drug-online.com> is confusingly similar to the Complainant’s trademark AMBIEN. That is so for the following reasons.

The domain name is similar to the trademark as it includes the entirety of the trademark together with three other generic words, neither of which detracts from the overall impression given to the reader that the domain name is principally repeating the trademark and is intending to convey that fact to the reader. In other words, it means that this is a domain name dealing with buying the drug Ambien online, but it deals principally with Ambien.

In this regard, it has been consistently held by UDRP panels that the addition of generic names to a trademark does not negate or detract from what would otherwise be a finding of confusing similarity. It is necessary here, in support of that proposition, to cite only F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049, which applied this principle specifically to the addition of the words ‘buy’ and ‘cheap’ and the very recent decision in Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372 which held that <buyambien.info> was confusingly similar to AMBIEN.

Moreover, such a close correlation between the domain name and the trademark and such an obvious attempt to invoke the name of a prominent trademark, can only be described as a similarity within the meaning of the Policy.

Furthermore, the similarity can only be described as confusing, for an objective observer would think that the expression used in the domain name is the same as that in the trademark. That is so because consumers form a general impression of what they observe and it is beyond argument that the general impression that consumers would form from reading the domain name is that it is invoking the well-known pharmaceutical product Ambien.

It is also now well established that the confusing similarity thus created is not negated by the presence in the domain name of suffixes such as the gTLD suffix ‘. com’.

As the Complainant clearly has rights in the trademark as its owner, the Panel finds that the domain name is confusingly similar to the trademark and that the Complainant has accordingly established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

Under Paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of Paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. The Respondent in the present case was given notice that it had until August 8, 2006, to send in its Response, that it would be in default if it did not do so and that, by virtue of Paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

As the Respondent is in default, the Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, draws the inference that the Respondent has no rights or legitimate interests in the domain name. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, because of the similarity between the domain name and the trademark, it is apparent that the Respondent has appropriated the Complainant’s trademark without permission, giving rise to the prima facie assumption that it did so for an illegitimate purpose, namely registering the domain name with the intention of misleading consumers. If there were a more innocent or legitimate explanation, the Respondent could have given it, but this it has failed to do.

In the absence of such an explanation the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘any evidence of the Respondent would not have been in [its] favour’: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.

Furthermore, the Respondent had the opportunity to bring itself within Paragraph 4(c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the registrant’s rights or legitimate interests in the domain name. However, the Respondent has not endeavoured to establish even one of the criteria set out in Paragraph 4(c), giving rise to the inevitable inference that it could not do so by credible evidence.

All of these facts support the conclusion that the Respondent has no rights or legitimate interests in the domain name and that conclusion is re-enforced by the evidence that the Complainant has not authorized or licensed the Respondent to use its well-known trademark nor to register a domain name incorporating that mark.

It is also apparent to the Panel that even if the Respondent had tried to bring itself within any of the above criteria, it would not have been able to do so. It cannot be said to have been making a bona fide offering of goods or services when it has used the Complainant’s trademark to sell products and services that are entirely alien to the Complainant’s line of business, pharmaceutical products that are made by competitors of the Complainant and specifically a product that is said to be a alternative to Ambien for which no prescription is needed and which must therefore be in open competition with it.

The Complainant’s evidence is that the website to which the domain name resolves devotes its home page to the promotion of a product which is described, first, as ‘Cheapest Ambien’ and then as an ‘Ambien alternative’. It is said that this product will cause the consumer to ‘…fall to sleep within 30 minutes!’

The home page then has a series of links to pharmaceutical products other than Ambien and for conditions other than insomnia. These products are described by the Complainant as ‘competitive products’ and it seems clear that the Respondent is using the site to promote products that are not those of the Complainant.

That is also true of other links on the site to advertisements for a series of gambling activities.

Such an examination also shows that the website does not carry a disclaimer of any connection with the Complainant or Ambien. Clearly the activity that has just been described is not using the domain name for a bona fide purpose and it has never been so regarded in the UDRP context; see for example, Roche Products Inc. v. Eugene Geist, WIPO Case No. D2006-0697, a similar case to the present, involving the domain name <valium-site.com>, where the panel summed up the current UDRP position as follows:

‘There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark in one’s domain name and the commercial use of the corresponding web site do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”). ”

Moreover, the Respondent it is not named “Ambien”, which excludes it from Paragraph 4(c)(ii) and it has clearly been using the domain name for commercial gain to divert consumers in a misleading manner away from the official Ambien website to rival websites sites, which excludes it from Paragraph 4(c)(iii).

For all of these reasons the Complainant has shown that the Respondent has no rights or legitimate interests in the domain name and the Complainant has therefore made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

“(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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) the 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 respondent’s website 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 the respondent’s website or location or of a product or service on the site or location”.

The Panel finds that the Complainant has made out its case under Paragraphs 4(b)(iii) and (iv) of the Policy.

Paragraph 4(b)(iii)

With respect to Paragraph 4(b)(iii), the Panel finds, first, that the Respondent registered the domain name knowing full well of the existence and fame of the AMBIEN trademark as a prominent medical product and with the intention of diverting part of the Complainant’s potential market for that product to its own advantage. It is difficult to believe that the domain name was registered for any reason other than to attract potential users to a website and to make money from doing so.

The reality is that Ambien became prominent as a treatment for insomnia long before the registration of the domain name and it must have been chosen by the Respondent as the nucleus of the domain name with the intention of trading on it and attracting Internet users because of its fame. Those Internet users, attracted to the domain name, would otherwise have been potential customers of the Complainants and to divert them in this way and to direct potential customers away from the Complainant and towards rival suppliers of pharmaceutical products can only be described as disrupting the business of the Complainant as a competitor.

The evidence shows that the Complainant has its own websites which have already been specified and also a website for United States users at <www.sanofi-aventis.us> where the Complainant presents its case for Ambien. The Respondent’s website, in contrast, promotes a product that is said to be the cheapest Ambien and an alternative to Ambien and other products that are said to be conducive for the treatment of other conditions than insomnia, such as anxiety and stomach ailments. By necessary implication, the website is therefore urging consumers to buy, not the trademarked Ambien of the Complainant, but a rival product and also other goods and services produced by other suppliers.

It would be difficult, therefore, to contemplate a more obvious case of disrupting a trademark owner’s business than to urge potential customers not to buy one of its specific products, but rather to buy alternative products from rival manufacturers for the treatment of the same condition and also to urge them to buy other products from rival manufacturers for the treatment of other conditions. That is clearly what the Respondent is doing and what the Panel finds that it intended to do.

Moreover, the persistence just described shows that, within the words of Paragraph 4(c)(iii) of the Policy, the domain name was registered “… primarily for the purpose of disrupting the business of …” the Complainant.

Paragraph 4(b)(iv)

With respect to Paragraph 4(b)(iv), the Panel finds that the Respondent’s actions also constitute bad faith in both registration and use within the meaning of Paragraph 4(b)(iv) of the Policy. The reasons why that element has been made out are as follows.

First, the Respondent has undoubtedly been attempting to attract Internet users to its website within the meaning of Paragraph 4(b)(iv), both with respect to the registration of the domain name and its use. Looking at the website, it is impossible to accept that this was done for any reason other than commercial gain in one form or another.

Secondly, by using the Complainant’s trademark AMBIEN in the domain name, with minor additions which suggest no more than that Ambien may be bought online at this site, the Respondent created a likelihood of confusion with that mark. That is so because the Respondent was attracting consumers drawn to the AMBIEN mark by using the name, making generic additions to it and by that means creating a misleading name.

Thirdly, the confusion that is likely to be created is confusion with the AMBIEN mark about the affiliation of various products on the Respondent’s website and as to whether they are the Complainant’s products or endorsed by it or are in some way associated with the Complainant. Clearly, consumers who are using the disputed domain name have arrived at the website because they are seeking a specific product that they know is available, namely Ambien. When the websites promotes a product that is said to be the cheapest Ambien and also some sort of alternative to Ambien, consumers will probably be confused as to whether or not the product is Ambien or whether it is approved by the Complainant or Ambien itself.

When consumers also see being promoted on the website, both pharmaceutical products for conditions other than insomnia and gambling services as well, they will assume that those goods and services are being promoted or provided with the imprimatur of the Complainant and Ambien.

There is thus a clear scope for confusion as to whether the goods and services being promoted on the website are associated with Ambien and the Complainant or not.

The Panel finds that these circumstances create confusion with the Complainant’s trademark as to the sponsorship, affiliation and endorsement of the Respondent’s site and the products and services on it and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.

The facts therefore come within Paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP Panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories WIPO Case No. D2000-1100; MathForum.com LLC v.Weiguang Huang, WIPO Case No.D2000-0743 and IndyMac Bank v. F.S.B. v. Jim Kato, FA 190366 (Nat.Arb.Forum). In this regard, the comments of the panelist in Identigene, Inc. v. Genetest Laboratories (supra) are apposite:

“Complainant has alleged and the Panelist finds that Respondent’s use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc. v. Cyber Network LLP, WIPO Case No. D2000-0977”.

There are many UDRP decisions to the same effect.

For these reasons, the Panel finds that the Respondent both registered and used the domain name in bad faith and that the Complainant has therefore made out the third of the three elements that it prove.

 

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, <buy-ambien-drug-online.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Date: September 7, 2006