Complainant is Sanofi of Paris, France, represented by Selarl Marchais de Candé, of Paris, France.
Respondent is Anton Abramof of Trinidad and Tobago.
The Disputed Domain Name <ambien.me> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2011. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 4, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o. (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by doMEn (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 Respondent of the Complaint, and the proceedings commenced on August 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on August 29, 2011.
The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on September 2, 2011. 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.
According to Complainant, Sanofi is a multinational pharmaceutical company. Complainant is the registered owner of a number of trademark registrations for AMBIEN, including:
AMBIEN Community trademark registration No. 3991999 registered on November 28, 2005, covering goods of “Pharmaceutical preparations” in international class 5;
AMBIEN American trademark with the serial number 74345754 registered on December 7, 1993 covering goods of “Pharmaceutical preparations for the treatment of sleep disorders” in class 5;
AMBIEN French trademark No. 93456039 registered on February 19, 1993 covering goods of “pharmaceutical preparations” in class 5 and;
AMBIEN International trademark No. 605762 registered on August 10, 1993 covering goods of “pharmaceutical preparations” in class 5, and designating BG (Bulgaria), BX (Benelux), BY (Belarus), CH (Switzerland), CN (China), CZ (Czech Republic), DE (Germany), DZ (Algeria), EG (Egypt), ES (Spain), HR (Croatia), HU (Hungary), IT (Italy), KZ (Kazakhstan), LI (Liechtenstein), MA (Morocco), MC (Monaco), PL (Poland), PT (Porlugal), RO (Romania), RU (Russian Federation), SD (Sudan), SI (Slovenia), SK (Slovakia), SM (San Marino), UA (Ukraine), UZ (Uzbekistan), VN (Viet Nam), YU (Serbia and Montenegro).
Additionally, Complainant registered the domain name <ambien.com> on April 12, 2000. The website is devoted to AMBIEN pharmaceutical products.
The Disputed Domain Name was registered on February 12, 2010.
The Complainant, Sanofi, identifies itself as a pharmaceutical group with a strong direct presence in all major markets throughout the world.
Complainant offers patented prescription drugs to treat diseases in the therapeutic areas of cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. Complainant sells a drug for the treatment of insomnia under the trademark AMBIEN.
Complainant contends that the Domain Name <ambien.me> is confusingly similar to Complainant’s AMBIEN trademarks and Complainant’s <ambien.com> domain name. Complainant states that the confusing similarity stems from the fact that Respondent’s Disputed Domain Name entirely reproduces Complainant’s AMBIEN trademark and only adds the generic suffix “.me”. The suffix “.me” is the country code of Montenegro. Therefore, Complainant contends that the Disputed Domain Name <ambien.me> is strictly identical to the trademarks over which Complainant has rights.
Complainant states that the likelihood of confusion is further ascertained by reason of the notoriety of the AMBIEN trademarks. Complainant asserts that the trademark AMBIEN has no particular meaning and is therefore highly distinctive.
Complainant asserts that Respondent is not affiliated with Complainant, and contends there is no evidence to suggest that Respondent has registered the Disputed Domain Name either to advance legitimate interests or in connection with a bona fide offering of legitimate goods or services. Complainant contends that because the name Anton Abramof does not resemble with the word “ambien”, Respondent’s name cannot be used as the basis for a legitimate interest. Further, Complainant contends that it has not granted Respondent any license or other authorization to use its trademarks in relation to the Disputed Domain Name. Complainant also contends that Respondent is not a supplier of Complainant’s products. Rather, Respondent’s website directs the consumer to the “www.epharmonline.net” website which is an online pharmacy where competitor’s products are offered. Thus, Complainant contends that Respondent is using the Disputed Domain Name to obtain commercial gain by misleadingly diverting consumers seeking Complainant’s website or AMBIEN products
Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. In particular, Complainant contends Respondent registered the Disputed Domain Name in order to abusively benefit from Complainant’s notoriety. Complainant asserts that Sandofi is one of the leaders among pharmaceutical companies. Because of the notoriety of the AMBIEN trademark, Complainant asserts that Respondent must have been aware of the existence of the AMBIEN trademarks. As proof of this awareness, Complainant offers copies of Respondent’s website which displays pictures of Complainant’s products, describes the Ambien drug and uses the Ambien name as well as the name of the active ingredient in AMBIEN. Thus, Complainant asserts that the Disputed Domain Name is registered and is being used in a bad faith attempt to gain unfair benefit from Complainant’s reputation.
Respondent did not reply to Complainant’s contentions.
The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of the Disputed Domain Name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires Complainant to prove each of the following elements:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding based on Complainant’s undisputed allegations for which there is support, pursuant to the Rules, paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b)
The Panel finds that the Disputed Domain Name is identical and confusingly similar to Complainant’s AMBIEN trademark. Complainant has demonstrated that it owns rights in the trademark AMBIEN. When comparing the Disputed Domain Name with the mark in which Complainant has rights, it is well established under the Policy that the top-level domain, i.e., in this case, the country code top-level domain (ccTLD) “.me,” should not be considered. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (stating that “the addition of the generic top-level domain (gTLD) name ‘.com’ is [. . .] without legal significance since use of a gTLD is required of domain name registrants”). Accordingly, the Disputed Domain Name consists of Complainant’s AMBIEN mark in its entirety, without any additional matter. Therefore, the Panel finds that the Disputed Domain Name is identical and confusingly similar to Complainant’s AMBIEN mark. See 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 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”).
For these reasons, the Panel concludes that the Disputed Domain Name is identical and confusingly similar to the AMBIEN mark, a trademark in which Complainant has rights.
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognized that the information needed to prove such a right or legitimate interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of production passes to the respondent to show that it does indeed have such a right or legitimate interest. See, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. For the reasons that follow, the Panel finds that Complainant has made a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case.
Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. In fact, Complainant has provided evidence that Respondent is using the Disputed Domain Name to re-direct Internet users to another website offering goods that directly compete with Complainant’s goods. Respondent’s use of the Disputed Domain Name to provide links to goods that are related to those of Complainant does not constitute a bona fide offering of goods or services. See, e.g., St. Baldrick’s Foundation Inc. v. Wan-Fu China, Ltd., WIPO Case No. D2007-0705 (stating that prior panels “have decided that the use of confusingly similar domain names in connection with a ‘click-through’ scheme does not serve to establish a bona fide offering of goods or services”).
The undisputed record indicates that Respondent registered the Disputed Domain Name nearly 7 years after Complainant established rights in the AMBIEN mark in the United States of America, France, and its International trademark registration designating Montenegro. Given the record before the Panel, it is a reasonable inference that Respondent was aware of Complainant and Complainant’s business when Respondent registered the Disputed Domain Name and that Respondent deliberately incorporated Complainant’s AMBIEN mark in the Disputed Domain Name with intent for commercial gain to misleadingly divert customers.
The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in the Policy, paragraph 4(c), of proof of right or legitimate interest by Respondent in the Disputed Domain Name, are not likely to exist. For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith.
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed 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) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product on Respondent’s web site or location.
Policy, paragraph 4(b).
As already mentioned, the Panel finds that it is likely that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name, which evidences bad faith on Respondent’s part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Indeed, Complainant has submitted evidence that the Disputed Domain Name resolves to an advertising portal with links to a third party online pharmacy where competitor products are sold. In other words, Respondent appears to have used the Disputed Domain Name in order to intentionally trade on the goodwill in the AMBIEN mark and to attract traffic to third party websites for commercial gain, which previous panels have concluded may support a finding of bad faith. See St. Baldrick’s Foundation Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through’ sites, can be considered to be evidence of bad faith.”).
In this case, in which Respondent failed to respond to the Complaint, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <ambien.me> be transferred to Complainant.
Steven M. Auvil
Sole Panelist
Dated: September 15, 2011