Sanofi-Aventis v. Impact Healthcare Case No. D2006-1102 1. The Parties The Complainant is Sanofi-Aventis, Gentilly, France, represented by Bird & Bird Solicitors, France. The Respondent is Impact Healthcare, Miami, Florida, United States of America. 2. The Domain Name and Registrar The disputed domain name <takeambien.com> is registered with Go Daddy Software. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2006. On August 31, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 1, 2006, Go Daddy Software 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. In response to a notification by the Center that the Complaint was administratively deficient in that sense that Respondent mentioned in the first Complaint was incorrect, the Complainant filed an amendment to the Complaint on September 14 2006. 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 September 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2006. The Center appointed Anders Janson as the sole panelist in this matter on October 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established: The Complainant is a multinational pharmaceutical company present in more than 100 countries. It is, after the merge of Aventis and Sanofi-Synthelabo in 2004, Europe’s largest pharmaceutical company and number 3 in the world. The Complainant’s Group sales amounted to more than EUR 27 billions in 2005. The Complainant’s Group employed 97 181 employees worldwide in 2005. The Group has a large portfolio of drugs with 9 “flagship products”, among these Ambien. The Complainant is present in the US through a number of channels; the Sanofi-Aventis subsidiary, alliances with Bristol-Myers Squibb, Teva Pharmaceuticals and Procter & Gamble Pharmaceuticals. Among the products marketed is Ambien. Ambien is a product manufactured by Sanofi-Aventis and is indicated for the short-term treatment of insomnia. The product was launched in the US in 1993 and is the leading prescription sleep aid in the country. The Complainant has asserted that it holds numerous national and international trademarks comprising “Ambien”. The Complainant has, in the Complaint, put forward a number of registrations. Among the registrations put forward can be mentioned: - US registration nr. 1808770, dated December 7, 1993, renewed February 8, 2004, nation class US18, 5: “pharmaceutical preparations for the treatment of sleep disorders”. - International registration nr. 605762, dated August 10, 1993, class 5; “Pharmaceutical Products”. The Panel notes that the registration dates of the trademark predate the registration of the disputed domain name by the Respondent, which was on October 21, 2003. Furthermore, the Complainant has registered the domain names <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net>, and <ambien.biz>. The Respondent is Impact Healthcare. Very little is known of the identity and nature of the Respondent except for the information provided by Go Daddy Software. The Respondent is in default and, accordingly, has not challenged the contentions of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; - The Respondents have no rights or any legitimate interests in respect of the domain name; - The domain name was registered and is being used in bad faith; and - The domain name <takeambien.com> should be transferred to the Complainant B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent 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. A. Identical or Confusingly Similar The Panel finds, based on the evidence put forward by the Complainant, established that Ambien is a registered trademark and that the trademark is both distinctive and famous. The disputed domain name contains the Complainant’s trademark Ambien with the added generic word “take” and the generic and functional top level domain name “.com”. In determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded. As established by many UDRP panels, the addition of a generic word, such as “take”, does not remove the domain name in dispute from being confusingly similar or render it different or distinctive from the trademark (see for instance F.Hoffman-La Roche AG v. Pinetree Development Ltd.,
WIPO Case No.
D2006-0049). Furthermore, numerous panels have found that, if a domain name incorporates a complainant’s registered mark, this may be sufficient to establish identity or confusingly similarity for the purpose of the Policy (see Oki Data Americas Inc v. the ASD Inc,
WIPO Case
No. D2001-0903; Magnum Piering v. Mudjackers and Garwood S. Wilson,
WIPO Case No.
2000-1525; and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case
No. D2003-0273). The Panel finds that the disputed domain name <takeambien.com> is, with reference to the above-mentioned, be considered confusingly similar to the Complainant's trademark Ambien. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a). B. Rights or Legitimate Interests The Respondent has not filed a Response in accordance with the Rules, paragraph 5. In those circumstances, when the Respondent does not have an obvious connection with the disputed domain name, once the Complainant has made out an initial prima facie case that the Respondent has no rights or legitimate interests, is enough to shift the burden of proof to the Respondent to demonstrate that such rights and legitimate interests exist. The Panel finds that the Complainant has made out such a case. The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Respondent has not rebutted the prima facie made out by the Complainant, nor presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element the second element of the Policy’s paragraph 4(a). C. Registered and Used in Bad Faith Finally, the Panel has to consider the question of the disputed domain name has been registered and is being used in “bad faith.” Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location. The Complainant has asserted that the bad faith of the Respondent results from following elements: 1) the Respondent has no prior right and no authorization given by the Complainant concerning the Ambien trademarks; 2) the Respondent’s awareness that Ambien is a leading prescription aid; and 3) the addition of word to the trademark Ambien misleading Internet users since it makes them believe it is an official website of the Complainant. The Panel finds that Internet users searching for the anti-insomnia drug Ambien, provided and marketed by the Complainant, are very likely to confuse the disputed domain name with the Complainant's well-known product and mark and for that reason to visit the Respondent’s website. It is furthermore highly unlikely that the Respondent by sheer accident registered the disputed domain name, which differs from the Complainant’s trademark only by the addition of the suffix “take”. Ambien is one of the leading anti-insomnia drugs marketed in the US and the Respondent, being an American company, cannot have been unaware of Ambien’s presence on the US market. Based on the evidence provided by the Complainant, the Panel finds it established that the disputed domain name’s website, before it was locked, among other things consisted of a link to an online pharmacy where products made by other pharmaceutical companies were marketed. The domain name, by this link, diverted Internet users to wesites promoting and offering products and services of third parties. The Panel that the Respondent, by these actions, is trying to mislead consumers in order to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant. The Panel finds, with reference to the above-mentioned and the proof provided by the Complainant, that the Respondent uses the disputed domain name in bad faith, hence having intentionally attempted to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with Complainant’s mark as to the source. The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy. 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 <takeambien.com> be transferred to the Complainant. Anders Janson Sole Panelist Dated: November 7, 2006 ADMINISTRATIVE PANEL DECISION