Administrative panel decision sanofi-Aventis V. NetWeb, Inc. Case No. D2005-1265




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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION



Sanofi-Aventis v. NetWeb, Inc.
Case No. D2005-1265

1. The Parties

The Complainant is Sanofi-Aventis, Paris, France, represented by Bird & Bird, Law Firm, France.


The Respondent is NetWeb, Inc., Fair Play, South Carolina, United States of America.


2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with Go Daddy Software, Inc. (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 8, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On December 8, 2005, 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 its 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 December 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2006.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 16, 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 into Sanofi-Synthélabo.


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 for the territory of the USA on December 7, 1993, registration number 1808770, for goods in Class 5;
- AMBIEN, registered for the territory of 29 countries as an International trademark on August 10, 1993, registration number 605762, for goods in Class 5;
- AMBIEN, registered for the territory of the UK on May 31, 1991, registration number 1466136, for goods in Class 5; and
- AMBIEN, registered for the territory of 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 “www.ambien.fr”, “www.ambien.us”, “www.ambien.co.uk”, and “www.ambien.biz”.
The Domain Name was registered by the Respondent on June 13, 2005.


5. Parties’ Contentions




A. Complainant

The Complainant has made the following contentions in its Complaint:


i) General factual contentions
Sanofi-Synthélabo was the second largest pharmaceutical company in France, founded on May 18, 1999, as a result of the merger between Sanofi and Synthélabo. Sanofi Synthélabo’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-Synthélabo 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 US. The stock market capitalization of Sanofi-Synthélabo was 43,751 million euro.
During the summer of 2004, Sanofi-Synthélabo acquired the shares of Aventis. On August 20, 2004, Sanofi-Synthélabo 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, No.3 in the world, with pro forma consolidated sales of 25 billion euro for the year 2002 in the core business and a strong direct presence an 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 9 products that individually generated annual 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-Synthélabo marketed therapeutic products developed from its research and a wide range of medicines adapted to local needs throughout the world. Sanofi-Synthélabo'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 channels, and there is a website specifically dedicated to the USA 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 USA 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 USA. 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 USA, there is no doubt that AMBIEN is a well-known product in the USA.
ii). The Domain Name is confusingly similar to the AMBIEN trademarks in which the Complainant has rights.
The Respondent’s registration consists of the Complainant’s trademark with the addition of the generic word “order” and the gTLD “.net”.
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 Ltd 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; 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 Sanofi-Aventis v. Billionaire Club, WIPO Case No. D2004-0805, Lilly Icos LLC v. Jay Kim, WIPO Case No. D2004-0891, Pfizer Inc v. Cheapviagrastore, WIPO Case No. D2005-0159.
The gTLD “.net” cannot serve as a distinguishing element of the Domain Name, as confirmed in Sanofi-Aventis v. Gabe Smith, WIPO Case No. D2005-0605 (about the domain name ):
Consequently, there is a high risk of confusion, as consumers may think that the Domain Name directly refers to the Complainant’s products.
iii). The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has prior rights in the trademark AMBIEN, which precede Respondent’s registration of the Domain Name. Moreover, the Complainant’s trademark is present in over 50 countries including the USA and is well-known throughout the world. AMBIEN is the leading prescription sleep aid in the USA.
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.
The Respondent is not commonly known by the Domain Name.
The Respondent would not register the Domain Name if it had not known that AMBIEN was corresponding to the Complainant’s trademark used for the leading prescription sleep aid in the USA.
There is no doubt that the Respondent is aware that AMBIEN corresponds to a trademark since its website contains the following message: “Order AMBIEN - You searched for information regarding ORDERAMBIEN. Utilize the resources advertised on this page to find ORDERAMBIEN and related ORDER AMBIEN products and services”.
The website associated to the Domain Name promotes, seems to sell AMBIEN product, includes various links to “related to ORDER AMBIEN products and services” redirects visitors to a website at “www.canadianprescriptionsavers.com” where various pharmaceuticals manufactured by competitors of the Complainant, such as CELEBREX or FLOMAX, are offered.
Therefore, the Respondent’s use not satisfies the test for bona fide use established in prior WIPO decisions. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The use of the Domain Name 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 Name 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 Name 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 USA, where the Respondent is located. Thus, the registration of the Domain Name has not been made with a bona fide intention.
The Domain Name redirects visitors to an active e-commerce website at “www.canadianprescriptionsavers.com” with the following information:

“Discount Canadian Pharmacy Shipping to the US! Save on Prescription Medication Drugs from Canada!”


The Domain Name also mentions: “ORDER AMBIEN” in large characters and indicates: “You searched for information regarding ORDERAMBIEN. Utilize the resources advertised on this page to find ORDERAMBIEN and related ORDER AMBIEN products and services”.
The Domain Name was registered shortly after May 6, 2004, when the Study Investigators at APA published trial results showing AMBIEN to be safe and effective with longer term use. Thus the registration of the Domain Name is an example of opportunistic cybersquatting.
There is no doubt that the Respondent, knowing the reputation and goodwill of the AMBIEN product, has registered the Domain Name in order to prevent the Complainant from reflecting the trademark in a corresponding domain name. It is an opportunistic act, which seeks to disrupt the Complainant’s business.
The addition of the word “order” to the trademark AMBIEN misleads internet users since it makes them believe that it is the official website of Sanofi-Aventis to order AMBIEN product. Any internet user who will try to connect to the above mentioned website will believe that it is the official website of Sanofi-Aventis since it promotes AMBIEN.
On August 30, 2005, the Complainant wrote to the Respondent demanding the transfer of the Domain Name to the Complainant within ten days. The Respondent failed to reply and therefore refused to transfer the Domain Name to the Complainant.
It emerges from these facts that the registration and use of the Domain Name constitutes an opportunistic act done in bad faith.
v) Remedy requested
The Complainant requests that the Domain Name 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 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 a 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 Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his 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 for the registration of its trademark AMBIEN in the USA, the UK, Australia, and many other countries.


Thus, the Complainant has established its rights in the trademark AMBIEN, as required by 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 under the UDRP to disregard the suffixes such as “.net” for the purposes of the comparison under Policy, Paragraph 4(a)(i), so the relevant part of the Domain Name to be considered is the sequence “orderambien”. The first five letters of this sequence form the common English word “order”, and the other six letters are identical to the trademark AMBIEN of the Complainant. Having in mind the wide popularity of electronic commerce, especially in the USA where the Respondent is based, it is reasonable to expect that the consumers will distinguish the first five letters of the relevant part of the Domain Name exactly as the word “order”. As AMBIEN is a known trademark among consumers, they are likely to associate the Domain Name with orders for the purchase of the product AMBIEN. So, rather than distinguishing the Domain Name from the Complainant’s trademark, the addition of the generic word “order” to the trademark makes the Domain Name confusingly similar to the trademark. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727.
Therefore, the Complainant has established the first element of the test, required under Policy, Paragraph (4)(a).

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in Domain Name, stating numerous arguments in this regard.


Thus, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Once 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 Name. 
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 a 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 Name, 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. The same applies to the lack of reaction by the Respondent to the Complainant’s letter of August 30, 2005, demanding the transfer of the Domain Name.
In fact, the only information available about the Respondent is the WHOIS information, provided by the Registrar, and the content of the website, associated to the Domain Name.
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 website associated to the Domain Name redirects visitors to another website where various pharmaceutical products are offered, including products of the Complainant’s competitors.
Is such an offering of goods or services bona fide under Paragraph 4(c)(i)? The answer to this question depends on the finding whether the use of the disputed Domain Name 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 Name in connection with a bona fide offering of goods or services. It is a clear inference from the record that Respondent knew at the time of the registration of the disputed Domain Name 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, 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 competing products 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 Name precludes a finding that the offering of goods or services by 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 Name.

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 USA 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 USA. The analysis of the content of the website associated to the Domain Name shows that the phrase ORDER AMBIEN is the most prominent part of it, it is mentioned several times in capital letters with a large font size, and most importantly – in the center of the webpage the same phrase represents a link to a Canadian website especially targeted to US consumers that offers pharmaceutical products, some of them competing with the Complainant’s product. The Domain Name itself is a combination of the words “order” and “ambien”, which is an indication of the awareness of the Respondent of the goodwill of the trademark and its commercial value.
These facts support a finding that the Respondent had knowledge of the AMBIEN mark at the time of registration of the Domain Name, and that the Respondent is using the Domain Name to attract Internet users to a commercial website where products of the Complainant’s competitors are offered for sale. The Respondent’s primary purpose in registering and using the Domain Name 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 name under Policy, Paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408.
Therefore, the Panel concludes that the Complainant has established the third element of the test under Policy, Paragraph 4(a).


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 be transferred to the Complainant.



______________________________

Assen Alexiev



Sole Panelist
Dated January 30, 2006

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