Sanofi-Aventis v. Conciergebrain.com
Case No. D2005-1358
1. The Parties
The Complainant is Sanofi-Aventis, Paris, France, represented by Bird & Bird law firm, France.
The Respondent is Conciergebrain.com, Northridge, California, United States
2. The Domain Names and Registrar
The disputed domain names:
(the “Domain Names”) are all registered with Wild West Domains,
Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2005. On January 3, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On January 3, 2006, the Registrar 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 January 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2006.
The Center appointed Assen Alexiev as the sole panelist in this matter on February 10, 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.
In accordance with the Rules, paragraph 11(a), the
language of this administrative proceeding is English, being the language of
the Domain Name Registration Agreement.
4. Factual Background
The Complainant, Sanofi-Aventis, is the third largest pharmaceutical company in the world, formed as a result of the merger of Aventis with Sanofi-Synthйlabo.
The Complainant is the owner of a large number of registrations of the AMBIEN trademark in more than 50 countries. In particular, the Complainant is the owner of the following trademarks:
- AMBIEN, registered in the United States of America on December 7, 1993, registration number 1808770, for goods in Class 5;
- AMBIEN, registered in 29 countries as an International trademark on August 10, 1993, registration number 605762, for goods in Class 5;
- AMBIEN, registered in the United Kingdom of Great Britain and Northern Ireland on May 31, 1991, registration number 1466136, for goods in Class 5; and
- AMBIEN, registered in Australia on December 18, 1998, registration number 761307, for goods in Class 5.
The Complainant has registered numerous domain names worldwide containing the AMBIEN trademark, including <ambien.fr>, <ambien.us>, <ambien.co.uk> and <ambien.biz>.
The domain name <ambian-sleeping-pill-free-shipping.info>
was registered on December 29, 2004. The domain names <buy-cheapest-ambien.info>,
<cheap-ambian.info>, <order-ambian.com>, <cheapest-ambian.net>,
<ambien-usa-pharmacy.info> and <ambien-official-site.info> were
registered on January 7, 2005.
5. Parties’ Contentions
The Complainant has made the following contentions in its Complaint:
i) General factual contentions
Sanofi-Synthйlabo was the second largest pharmaceutical company in France, founded on May 18, 1999, as a result of the merger between Sanofi and Synthйlabo. Sanofi-Synthйlabo’s total worldwide sales for the year 2003 totaled 8,048 million euro, and it spent 1,136 million euro on Research and Development (R&D) during the same year. Employing 33,086 employees worldwide, Sanofi-Synthйlabo had a sales force of 11,601 persons, as well as 6,877 research scientists and support staff, in 14 R&D centers located in France, Hungary, Italy, Spain, England and the United States of America. The stock market capitalization of Sanofi-Synthйlabo was 43,751 million euro.
During the summer of 2004, Sanofi-Synthйlabo acquired the shares of Aventis. On August 20, 2004, Sanofi-Synthйlabo adopted the name Sanofi-Aventis, thus preserving the brand heritage of each of the constituent companies. As of December 31, 2004, Aventis merged into Sanofi-Aventis. The completion of this transaction created the largest pharmaceutical group in Europe and the third largest in the world, with pro forma consolidated sales of 25 billion euro for the year 2002 in its core business and a strong direct presence in all major world markets. The Complainant is now a multinational company present in more than 100 countries across five continents.
The new group benefits from a large portfolio of high-growth drugs, with nine products that individually generated sales of over 500 million euro in 2003. It enjoys firmly established positions in key fast-growth therapeutic fields such as cardiovascular, thrombosis, oncology, diabetes, central nervous system, urology, internal medicine and human vaccines.
As part of its commitment to global healthcare, Sanofi-Synthйlabo marketed therapeutic products developed from its research and a wide range of medicines adapted to local needs throughout the world. Sanofi-Synthйlabo’s field of expertise covered cardiovascular drugs and thrombosis, central nervous system, oncology and internal medicine and its three flagship products were Plavix, Aprovel (Avapro) and Ambien (Stilnox/Myslee). The Complainant’s products are marketed in the United States of America through several commercial channels, and there is a website specifically dedicated to the United States at “www.sanofi-aventis.us.”
AMBIEN is a product manufactured by Sanofi-Aventis for the short-term treatment of Insomnia. This product was launched in the United States of America in 1993, and in 1994, AMBIEN was considered as the market leader with 27% of total prescriptions. According to a study carried out by IMS health in December 2003, AMBIEN was the leading prescription sleep aid in the United States of America. The product demonstrated safely and effectively that it treated insomnia intermittently with no evidence of tolerance or dose escalation. In May 2004, a study was presented at the American Psychiatric Association Annual Meeting which evaluated up to five nights of dosing per week, as needed, and emphasized that the improvements in sleep provided by AMBIEN did not diminish over time and that symptoms did not worsen on the days the product was not used. Since 20 to 30 percent of the population suffers from insomnia, and AMBIEN is the leading prescription sleep aid in the United States of America, there is no doubt that AMBIEN is well-known in North America.
The Complainant has filed many complaints before the
Center in relation to domain names containing the trademark AMBIEN. To date,
all decisions under the Policy in respect of such domain names have been in
favor of the Complainant. In particular, a decision has already been rendered
against the Respondent, ordering the transfer to the Complainant of thirteen
domain names confusingly similar to the trademark AMBIEN (Sanofi-aventis
v. Conciergebrain.com, WIPO Case No. D2005-0660).
ii) The Domain Names are confusingly similar to the AMBIEN trademarks in which the Complainant has rights
The Domain Names consist of the Complainant’s trademark with the addition of the generic words “order”, “buy”, “site”, or the words “sleeping”, “pills”, “official”, “free”, “pharmacy”, “cheap”, “usa”, and the gTLDs “.com”, “.net” and “.info”, respectively.
The addition of a generic or common word to a trademark
is not sufficient to escape the finding of similarity and does not change the
overall impression of the designations as being connected to the Complainant.
See Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray
Landers, WIPO Case No. D2000-1511;
PepsiCo Inc. v. PEPSI SRL and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO
Case No. D2003-0696; PepsiCo Inc v. Diabetes Home care and DHC Services,
WIPO Case No. D2001-0174; Sony Kabushiki
Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO
Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO
Case No. D2001-1184.
The word “order” lacks distinctiveness,
so its usage in conjunction with the Complainant’s trademark AMBIEN does
not preclude the Domain Name from being confusingly similar to the trademark.
See Lilly Icos LLC v. Jay Kim, WIPO
Case No. D2004-0891, Amazon.com Inc. v. John Beamer, WIPO
Case No. D2002-1005.
The domain names <ambian-sleeping-pill-free-shipping.info>, <cheap-ambian.info>, <order-ambian.com> and <cheapest-ambian.net> imitate the Complainant’s trademarks through misspelling - the Respondent has replaced the letter “e” by the letter “a”, thus creating a phonetically similar combination. Many decisions under the Policy have considered such acts as “typosquatting” and therefore insufficient to escape a finding of similarity and to change the overall impression of the designations as being connected to the Complainant.
Therefore, there is no doubt that the reproduction and imitation of the trademark AMBIEN, as the sole distinctive element of the Domain Names, generates confusion. Indeed, persons accessing the Domain Names would be bound to think that they have a connection with the Complainant.
Furthermore, the addition of the gTLDs “.com”, “.net” and “.info” has no distinguishing capacity in the context of the Domain Names.
Consequently, because of this identity, there is a high risk of confusion, since a consumer may think that the Domain Names directly refer to the Complainant’s products.
iii) The Respondent has no rights or legitimate interests in respect of the Domain Names
The Complainant has prior rights in the trademark AMBIEN, which precede the Respondent’s registration of the Domain Names. Moreover, the Complainant’s trademark is present in over 50 countries including the United States of America and is well-known throughout the world. AMBIEN is the leading prescription sleep aid in the United States of America.
There is no license, consent or other right by which the Respondent would have been entitled to register or use the Domain Names incorporating the Complainant’s trademark AMBIEN.
The Respondent is not commonly known by the Domain Names.
There is no doubt that the Respondent is aware that AMBIEN corresponds to a medical product and therefore to a trademark.
The Respondent is using the Domain Names to offer
and sells goods that directly compete with the Complainant. The websites at
the Domain Names contain no disclaimer of a relationship with the trademark
owner, or of the fact that the website is an official site of the Complainant.
See sanofi-aventis v. ClickStream Marketing LLC, WIPO
Case No. D2005-0769.
Indeed, the Respondent would not have registered the Domain Names if it had not known that AMBIEN was a leading prescription sleep aid.
The Respondent has no legitimate interest in respect of the Domain Names, and has registered them with the intention to divert consumers and to prevent the Complainant from reflecting the mark in corresponding domain names.
Therefore, the Respondent’s use does not satisfy
the test for bona fide use established in prior WIPO UDRP decisions.
See Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903. The use of the Domain Names in order to divert consumers
for commercial gain cannot be characterized as a fair use. See Trip.com v.
Daniel Deamone, WIPO Case No. D2001-1066.
iv) The Respondent has registered and used the Domain Names in bad faith
The Respondent has no prior rights in the sign AMBIEN, and has no authorization to use this sign in any form. It is obvious that the Respondent has registered the Domain Names with the knowledge that AMBIEN corresponds to the Complainant’s trademark and products, and certainly that it corresponds to the leading prescription sleep aid in the United States of America, where the Respondent is located. Thus, the registration of the Domain Names has not been made with a bona fide intention.
There is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the Domain Names in order to prevent the Complainant from reflecting the trademark in corresponding domain names. It is an opportunistic act, which seeks to disrupt the Complainant’s business.
The words “order”, “buy”, “site”, “sleeping pills”, “official”, “free”, “pharmacy”, “cheap” and “usa” refer to the availability of the product Ambien for sale, so an Internet user believe that these are official websites selling the Complainant’s products. This is another relevant element to establish the bad faith registration of the Domain Names.
The registration of the Domain Names misspelling the Complainant’s trademark is also evidence of bad faith.
The Respondent has already been found to have acted in bad faith in the registration of thirteen other domain names that were confusingly similar to the Complainant’s trademark.
It emerges from these facts that the registration and use of the Domain Names constitutes an opportunistic act done in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:
(i) that the 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 Domain Name; and
(iii) that the Respondent has registered and is using the Domain Name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of the Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich
and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing
business as Big Daddy’s Antiques, WIPO
Case No. D2000-0004: “Here, the potential evidence of good faith registration
and use was in respondent’s control. Respondent’s failure to present
any such evidence or to deny complainant’s allegations allows an inference
that the evidence would not have been favorable to respondent.” As stated
by the panel in Viacom International Inc. v. Ir Suryani, WIPO
Case No. D2001-1443: “Since the Respondent has not submitted any evidence
and has not contested the contentions made by the Complainant, this Panel is
left to render its decision on the basis of the uncontroverted contentions made,
and the evidence supplied, by the Complainant.… In the absence of any
evidence to the contrary submitted by the Respondent, this Panel accepts in
large measure (but not wholly) the submitted evidence and the contended for
factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence of the registration of its trademark AMBIEN in the United States of America, the United Kingdom, Australia, and many other countries.
Thus, the Complainant has established its rights in the trademark AMBIEN, as required by the Policy, paragraph 4(a)(i). Furthermore, the Complainant has provided information about its activities as one of the global leaders in the pharmaceutical industry, and specifically about the product marketed by it under the trademark AMBIEN. This information is sufficient for the Panel to conclude that AMBIEN is a popular product, and hence the trademark is known among consumers.
It is an established practice to disregard the gTLDs such as “info”, “com” and “.net” for the purposes of the comparison under Policy, paragraph 4(a)(i).
The Domain Names <buy-cheapest-ambien.info>,
<ambien-usa-pharmacy.info> and <ambien-official-site.info> reproduce
the trademark AMBIEN in its entirety. So, in order to decide whether the three
Domain Names are confusingly similar to the trademark AMBIEN, the Panel considered
the remaining parts of the Domain Names. It is common to use hyphens to separate
the words in domain names and to make them easily understood and remembered.
This is the case here, as the parts of the Domain Names divided by hyphens,
represent common English words. The sequence “buy cheapest” in the
Domain Name <buy-cheapest-ambien.info> is descriptive in its character,
as it clearly refers to offering a product for sale at low prices. Therefore,
combined with an element, identical to the popular trademark AMBIEN, this sequence
not only does not render the Domain Name different from the trademark, but,
rather, makes it confusingly similar to it. Minnesota Mining and Manufacturing
Co. v. Mark Overbey, WIPO Case No. D2001-0727.
The same applies to the Domain Name <ambien-usa-pharmacy.info>, where
the sequence “usa pharmacy” directly refers to selling of medicines
in the United States of America. Regarding the Domain Name <ambien-official-site.info>,
it contains the sequence “official site,” which in combination with
the trademark, has only one possible meaning – that this Domain Name is
linked to the official site for the product Ambien, and thus makes the Domain
Name confusingly similar to the trademark of the Complainant.
The Domain Names <cheap-ambian.info>, <order-ambian.com>, <cheapest-ambian.net>, and <ambian-sleeping-pill-free-shipping.info>, all contain the element “ambian.” This element is very similar to the trademark of the Complainant, as the only difference between the two is that the letter “e” in the trademark is replaced by “a” in these Domain Names. These two letters sound in a very similar way in the combinations “ambien” and “ambian,” especially in the English language. Therefore, the Panel finds that the part “ambian” in the discussed Domain Names is confusingly similar to the trademark of the Complainant. All the remaining parts of these Domain Names are descriptive terms, being related either to selling, ordering or shipping of products. As frequently found in decisions under the Policy, such descriptive terms do not preclude a finding of confusing similarity. Therefore, the Panel finds that the Domain Names <cheap-ambian.info>, <order-ambian.com>, <cheapest-ambian.net>, and <ambian-sleeping-pill-free-shipping.info> are confusingly similar to the trademark of the Complainant.
Therefore, the Complainant has established the first element of the test, required under the Policy, paragraph (4)(a).
B. Rights or Legitimate Interests
The Complainant has contended that the Respondent has no rights or legitimate interests in the Domain Names, stating numerous arguments in this regard.
Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.
Once the Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Names.
The Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defence despite its burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for the registering or using the disputed Domain Names, it could have provided it. In particular, the Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) - or any other circumstance - is present in its favour.
In fact, the only information available about the Respondent is the Whois information, provided by the Registrar, and the content of the websites, associated to the Domain Names.
The WHOIS information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name, apart from its rights as registrant of the latter.
The websites associated to the Domain Names have almost identical content. They all offer various pharmaceutical products to the visitors, including the product Ambien of the Complainant, as well as many others, notably the product Sonata, which is a competing product for the treatment of insomnia. The statements on the websites that AMBIEN is “America’s No.1 sleeping pill” or “America’s most prescribed sleeping pill,” and the reproduction of the Complainant’s trademark with the ® symbol next to it clearly show that the Respondent is well aware of the Complainant’s product and trademark and their popularity.
The question is whether such an offering of goods
or services is bona fide under paragraph 4(c)(i). The answer depends
on the finding whether the use of the disputed Domain Names in connection with
the offering otherwise constitutes bad-faith registration or use of the domain
name under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v.
UltSearch, Inc, WIPO Case No. D2000-1840
(for offering under paragraph 4(c)(i) to be considered bona fide, domain
name use must be in good faith).
The Panel concludes that the Respondent is not using
the disputed Domain Names in connection with a bona fide offering of
goods or services. It is clear from the record that the Respondent knew at the
time of the registration of the disputed Domain Names that the Complainant had
established rights in the AMBIEN mark. The Complainant has made a substantial
showing that AMBIEN is a popular mark in the United States of America, and in
any event the mark is clearly distinctive. The Respondent simply has no legitimate
interest in using the AMBIEN mark as part of a domain name that directs Internet
users to a website where various products including such that compete with the
medication AMBIEN are offered for sale. See Chanel, Inc. v. Cologne Zone,
WIPO Case No. D2000-1809. As noted in
Research In Motion Limited v. Dustin Picov, WIPO
Case No. D2001-0492, when a domain name is so obviously connected with a
complainant and its products, its very use by a registrant with no connection
to the complainant suggests “opportunistic bad faith.” Accordingly,
the finding by the Panel regarding the Respondent’s bad-faith registration
and use of the disputed Domain Names precludes a finding that the offering of
goods or services by the Respondent is bona fide. Philip Morris Incorporated
v. Alex Tsypkin, WIPO Case No. D2002-0946;
Amphenol Corporation v. Applied Interconnect, Inc., WIPO
Case No. D2001-0296.
Therefore, as the evidence supports the contentions of the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Complainant is widely known as one of the biggest players on the market of pharmaceutical products. The information about its product AMBIEN regarding its prescription, sales and usage in the United States of America shows that a large proportion of the population there either uses it or may be interested in it as a medication. Therefore, AMBIEN is a popular product, and hence the trademark is known among consumers.
The Whois information about the Respondent shows that it is based in the United States of America. The websites associated to the Domain Names contain information about the product AMBIEN of the Complainant, include statements about its status as the leading medication in the United States of America in its therapeutic field, reproduce the trademark of the Complainant with a ® symbol, and offer many other pharmaceutical products, notably Sonata – a product competing to AMBIEN. The Domain Names were almost all registered on the same date as different combinations of the Complainant’s trademark or a slight misspelling of it, and various descriptive terms related to offers, sales, or shipments of goods.
These facts support a finding that the Respondent had knowledge of the Complainant’s
trademark and its goodwill at the time of registration of the Domain Names,
and that the Respondent’s primary purpose in registering and using the
Domain Names was to attract, for commercial gain, Internet users to this website,
by creating a likelihood of confusion with the Complainant’s mark as to
the source, sponsorship, affiliation, or endorsement of the website and the
products on this website. This constitutes bad-faith registration and use of
the disputed Domain Names under Policy, paragraph 4(b)(iv). Kabushiki Kaisha
Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO
Case No. D2003-0408.
The finding of bad-faith registration and use of the Domain Names is further strengthened by the fact that the same Respondent has already been found to have acted in bad faith in relation to thirteen other domain names confusingly similar to the same trademark of the Complainant.
Therefore, the Panel concludes that the Complainant has established the third
element of the test under Policy, paragraph 4(a).
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: <ambian-sleeping-pill-free-shipping.info>, <buy-cheapest-ambien.info>, <cheap-ambian.info>, <order-ambian.com>, <cheapest-ambian.net>, <ambien-usa-pharmacy.info>, and <ambien-official-site.info> be transferred to the Complainant.
Dated: February 24, 2006