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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Edith Van Der Linden

Case No. D2006-0372

 

1. The Parties

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

The Respondent is Edith Van Der Linden, Nieuwerkerk, Zealand, The Netherlands.

 

2. The Domain Name and Registrar

The disputed domain name <buyambien.info> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2006. On March 24, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, 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. 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 March 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on April 21, 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, Sanofi-aventis, is the third largest pharmaceutical company in the world.

During the Summer of 2004, SANOFI-SYNTHELABO, a French pharmaceutical company announced the success of its offer for AVENTIS shares. The name of the parent company adopted on August 20, 2004, is Sanofi-aventis, thus preserving the brand heritage of each of the constituent companies. As of December 31, 2004, AVENTIS merged into Sanofi-aventis.

Completion of the transaction created the number one pharmaceutical group in Europe, and number 3 in the world, with consolidated sales of €25 billion and €4 billion research and development expenditure in 2004.

The Complainant is now a multinational company present in more than 100 countries across 5 continents.

The new group benefits from a large portfolio of high-growth drugs, with 7 major therapeutic areas, such as cardiovascular, thrombosis, oncology, metabolic disorders, central nervous system, internal medicine and human vaccines.

The new group benefits from a large portfolio of high-growth drugs, with 8 flagship products: Plavix, Lovenox, Aprovel, Taxotere, Eloxatin, Ambien, Allegra, Actonel, plus 2 potential candidates: Lantus and Copaxone.

An extract of the Complainant’s 2004 Annual Report has been provided to the Panel.

The Complainant’s products are marketed in The Netherlands through its Dutch subsidiary, which registered an excellent performance. As indicated in the 2004 Annual Report: “The Dutch subsidiary continued to register vigorous growth, much higher than the market, the highest growth rate among the top eight pharmaceutical companies, Lantus, Eloxatine, Taxotere, Aprovel and Amaryl were the main growth drivers”.

A website specifically dedicated to The Netherlands is accessible at “www.sanofi-adventis.nl”, a copy of which has been provided to the Panel.

Ambien is a product manufactured by the Complainant and is indicated for the short-term treatment of insomnia. This product was launched in the USA in 1993. In 1994, “AMBIEN was considered as the market leader with 27% of total prescriptions”(see Annex [5]).

According to a study carried out by IMS health in December 2003, it appears that Ambien is the leading prescription sleep aid in the US.

The Complainant owns a large number of AMBIEN trademarks in more than 50 countries including The Netherlands, with an international trademark that covers Benelux. A list of the Complainant’s worldwide trademark applications or registrations for the AMBIEN trademark and copies of some of the Complainant’s worldwide registration certificates for the trade mark AMBIEN have been provided to the Panel.

The Complainant and its affiliates have registered numerous domain names worldwide containing the AMBIEN trademark. For example, <ambien.com>, <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net>, and <ambien.biz>. Copies of the WHOIS search results for a selection of those domain names have also been provided to the Panel.

Considering the huge number of domain names registrations infringing the Complainant’s prior rights, since all of them include the trademark AMBIEN, the Complainant has had to file many complaints under the Policy, in order to obtain the transfer of the disputed domain names.

To date, all decisions rendered by the WIPO Arbitration and Mediation Center in respect of the trademark AMBIEN, have ordered the transfer of the disputed domain names to the Complainant. Copies of these decisions have been provided to the Panel.

In particular, in Sanofi-Aventis v. Gabe Smith, WIPO Case No. D2005-0605, the Administrative Panel ordered that the domain name <buy-ambien-online.net> be transferred to the Complainant, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules.

And in Sanofi-Aventis v. Ju Dehua, WIPO Case No. D2005-1043, the Administrative Panel ordered that the domain names <best-buy-ambien.com> and <new-ambien.com> be transferred to the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Respondent’s registration consists of the Complainant’s trademark with the addition of the generic word “buy” and the gTLD “.info”.

A wide variety of panelists have considered that the addition of generic words to trademarks was 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, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home Care and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; and America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).

In relation to domain names which include a trademark and the term “buy” or other generic terms, the panelists have taken the view that the use of the generic and descriptive terms in conjunction with the Complainant’s trademark does not remove the domain names in dispute from being confusingly similar, the generic terms lacking in distinctiveness (see Sanofi-Aventis v. Ascendim, WIPO Case No. D2004-0812, and Sanofi-Aventis v. Gabe Smith, WIPO Case No. D2005-0605).

Therefore, and after analyzing these different WIPO cases, there is no doubt that the reproduction of the trademark AMBIEN, as the sole distinctive element of the domain name concerned, generates confusion. Indeed, persons accessing the disputed domain name would be bound to think that the domain name has a connection with the Complainant (see Sanofi-Aventis v. Gabe Smith, WIPO Case No. D2005-0605).

Consequently, because of this identity, there is a high risk of confusion, since a consumer may think that the domain name directly refers to the Complainant’s products.

Furthermore, the addition of the gTLD “.info”, which is required for registration of the domain name, has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name (Sanofi-Aventis v. Internet Marketing Inc./ John Bragansa, WIPO Case No. D2005-0742).

Consequently, because of this identity, there is a high risk of confusion, since a consumer may think that the domain name directly refers to the Complainant’s products.

In conclusion, the disputed domain name <buyambien.info> generates confusion with the Complainant’s trademark “AMBIEN”.

2. The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant has prior rights in the trademark AMBIEN, which precedes the Respondent’s registration of the disputed domain name.

Moreover, the Complainant’s trademark is present in over 50 countries, including Europe, and is well-known throughout the world.

The disputed domain name is used by the Respondent to promote various medical links, the web page indicating “campagne publicitaire pour le theme buy ambient”, which means: “advertising campaign on the subject Buy Ambien”. Evidence in the form of a print out of the web pages of the disputed domain name has been provided to the Panel.

When clicking on the word “regime”, which means “diet”, the Internet user is connected to a web page, containing within the domain name <sedoparking.com> as well as various hyperlinks that offer to lose weight.

Therefore, the Respondent is affiliated to the web site “www.sedoparking.com”, which offers to “Earn money from your unused domain names! Sedo’s new Domain Parking Program lets you earn money from your domain names without needing to develop your own site. Even better, Sedo’s statistics show that domains parked with Sedo are 5 times more likely to be sold!” Again, evidence, in the form of extracts from this web site, has been provided to the Panel.

Consequently, there is no doubt that the Respondent is making a commercial use of the disputed domain name.

As a result, the Respondent’s use does not satisfy the test for bona fide use established in prior WIPO decisions.

Indeed, the notion of “bona fide” has notably been specified by the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where it was held that, to be bona fide within paragraph 4(c)(i), the offering should meet several minimum requirements, namely:

- the Respondent must actually be offering the goods or services at issue;

- the Respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the registrant’s relationship with the trade mark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and

- the Respondent must not try to corner the market in a domain name, thus depriving the trademark owner of reflecting its own mark in a domain name.

In the present case, there is no doubt that the Respondent does not use the domain name in connection with the bona fide offering of goods or services.

Furthermore, there is 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 trademark AMBIEN.

There is no doubt that the Respondent is aware that AMBIEN corresponds to a medical product and, therefore, to a trademark.

Indeed, the Respondent would have not registered the disputed domain name if she had not known that AMBIEN was a leading prescription sleep aid, and could generate profits through the “www.sedoparking.com” program (mentioned above).

As a result, it seems that the Respondent, who has no legitimate interest in respect of the domain name <buyambien.info> has registered this domain name with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.

The Respondent has made no bona fide use of the disputed domain name, because of her lack of authorization to use the trademark AMBIEN. Furthermore, using the domain name in order to divert consumers for commercial gain cannot be characterized as a fair use (Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066).

3. The domain name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The obvious bad faith of the Respondent results from the following elements:

- the Respondent has no prior right and no authorization given by the Complainant concerning the AMBIEN trademarks;

- the Respondent’s awareness that AMBIEN is a leading prescription sleep aid; and

- the addition of words to the trademark AMBIEN misleading Internet users since it makes them believe it is an official web site of the Complainant.

As to the Respondent having no prior right and no authorization given by the Complainant concerning the AMBIEN trademark, as is demonstrated above, the Respondent has no prior right in respect of the sign AMBIEN, and no authorization to use this sign in any form and knows this sign perfectly well. Thus, the registration of the disputed domain name has not been made with bona fide intention.

As to the Respondent’s awareness that AMBIEN is a leading prescription sleep-aid, it is clear that the Respondent has registered the disputed domain name with the knowledge that AMBIEN is a medical product.

In addition, due to the various communications on the Internet on that product, the Respondent could not ignore that AMBIEN is a leading prescription sleep aid, since it is affiliated to an advertising program based on the traffic generated by the domain name <buyambien.info>.

In the present case, there is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and to make profit from the use of such domain name. It is an opportunistic act, which seeks to disrupt the Complainant’s business.

It is also important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party, in itself, can be considered as disrupting the business of the rightful owner.

The addition of a word to the trademark AMBIEN misleads internet users, since it makes them believe that it is an official web site of SANOFI-AVENTIS

Firstly, any Internet user who will try to connect to the above-mentioned web site will believe that it is an official web site of the Complainant which offers AMBIEN, since the disputed domain name includes the AMBIEN trademark.

As a matter of fact, in the disputed domain name, the Respondent added the word “buy” to the trademark AMBIEN. By adding this word, which refers to the availability of the product on the Internet, the Respondent makes the Internet user believe that it is an official web site to find the Complainant’s product AMBIEN.

Making Internet users believe that the web site is the official web site for AMBIEN products by using a generic term with the trademark “AMBIEN” is another relevant element to establish the bad faith registration of the above mentioned domain name.

On January 10, 2006, the Complainant sent a cease and desist letter to the Respondent requiring the transfer of the domain name. On January 19, 2006, the Respondent claimed that it is not using the domain name in bad faith. It emerges from these facts that the disputed domain name <buyambien.info> constitutes an opportunistic registration, which has been made and used in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in the proceedings.

 

6. Discussion and Findings

To qualify for transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall 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 accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panels’ decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademark AMBIEN, which is owned and commercially used and promoted by the Complainant exclusively in and for the purposes of its business and the sale of its product for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark AMBIEN is well-established and well-known to, and has a good reputation in the pharmaceutical industry. The Panel also accepts that the Complainant has invested considerable sums in the promotion and marketing of its mark around the world.

The addition in the disputed domain name of the word “buy”, which is purely descriptive, does not add any distinguishing feature to avoid confusion amongst Internet users seeking information about the Complainant’s well-known insomniac product, identified by the trademark AMBIEN. Indeed, combined with the suffix ‘.info’, the disputed domain name is calculated to mislead Internet users into thinking and, indeed, expecting to be directed to a web site of the Complainant. See Sanofi-Aventis v. Gabe Smith, WIPO Case No. D2005-0605.

Likewise, the addition of the suffix ‘.info’, which is required for registration purposes only, is also irrelevant, for trademark purposes, and does not, therefore, serve to distinguish the disputed domain name from the trademark of the Complainant. See Sanofi-Aventis v. Internet Marketing Inc. John Bragansa, WIPO Case No. D2005-0742, in which the panel found that the addition of descriptive words to the Complainant’s mark AMBIEN does nothing to dispel a connection in the public’s mind between the pharmaceutical name and its owner, the Complainant. See also, on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO, is not relevant; and Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference”.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark AMBIEN, in which the Complainant has demonstrated rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. In fact, the Respondent’s failure to answer the Complaint tends to show that the Respondent does not have any such rights or interests, otherwise the Respondent would have asserted them. In other words, the Respondent’s silence is tantamount to admitting the Complainant’s case (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). Indeed, in view of the notoriety of the Complainant’s trademark AMBIEN and the well-known and well-used on-prescription product that such trademark identifies, as well as the numerous domain names containing the trademark AMBIEN registered worldwide by the Complainant and its affiliates (referred to above), the Respondent must have known that, when registering the disputed domain name, the Respondent could not have, or indeed, have claimed any such rights or interests.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a web site that directs Internet users not to the Complainant and its product but to its competitors.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is it making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademark AMBIEN in the disputed domain name. Indeed, through the Respondent’s affiliation with the web site “www.sedoparking.com”, which offers the possibility of earning money from unused domain names by providing a so-called ‘parking place’ for them (as described above by the Complainant), the Respondent cannot claim that she is not making any commercial use of the disputed domain name.

Indeed, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites “shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. Furthermore, as was stated in Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288: “Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than Complainant is profiting from the use of the disputed domain name – a name that is confusingly similar to Complainant’s mark. Consequently, the for-profit nature of the use of the disputed domain name may be imputed to Respondent. Also, it is simply not reasonable to assume that Respondent is merely providing a public service when redirecting Internet users to a particular commercial website”.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.”

Based on the evidence provided in the Case File, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its well-known trademark AMBIEN over many years. Indeed, as previously mentioned, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s goodwill in the pharmaceutical industry. This conclusion is reinforced by the links on the website of the Respondent which refer Internet users to a wide range of similar products offered by competitors of the Complainant. This conduct, without any explanation by the Respondent to the contrary, of which none has been forthcoming, constitutes bad faith.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, AMBIEN, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the Case File is, in fact, the case. Such misleading conduct, in the view of the Panel, is another sign of bad faith on the part of the Respondent.

Finally, the answer provided by the Respondent to the Complainant’s ‘cease and desist letter’ (referred to above), namely asserting rights that, on the evidence presented by the Complainant, she plainly does not have, combined with the Respondent’s failure to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 <buyambien.info> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: April 24, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0372.html

 

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