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Sanofi-Aventis v. Mack Tack [2005] GENDND 1425 (30 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Mack Tack

Case No. D2005-0717

1. The Parties

The Complainant is Sanofi-Aventis, of Gentilly, France, represented by Bird & Bird Solicitors, France.

The Respondent is Mack Tack, of Oshawa, Canada.

2. The Domain Name and Registrar

The disputed domain name <ambien-depot.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2005. On July 8, 2005, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On July 11, 2005, Gandi SARL 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 July 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2005.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 18, 2005. 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 is the third largest pharmaceutical company in the world with a business presence in more than 50 countries, including Canada. AMBIEN is one of the Complainant’s three flagship products and is used for the short-term treatment of insomnia. It was first launched in the United States of America in 1993, and virtually since its introduction has occupied a leading market position.

The Complainant, either itself or through its related and controlled companies, owns a large internationally registered portfolio for the AMBIEN trade mark. These include, by way of example only, United States Trade Mark Registration No. 1808770 from December 1993; United Kingdom Trade Mark Registration No. 1466136 also from December 1993; and International Trade Mark registration No. 605762 from October 1993, all registered in international trade mark class 5 in respect of relevant products. Without contest from the Respondent, all appear to be valid and subsisting.

The Complainant, either itself or through its related and controlled companies, also owns key domain names which incorporate its trade mark, including <ambien.ca>, <ambien.fr>, <ambien.us> and <ambien.co.uk>.

The Complainant’s products are marketed in Canada through its affiliates, Aventis Pharma Inc. and Aventis Pasteur Inc.

The Respondent registered the disputed domain name in December 2004, and operates an active website under the domain name which promotes the sale of the Complainant’s product, together with other manufacturers’ products.

In April 2005, the Complainant sent a cease and desist letter to the Respondent alleging trade mark infringement and demanding transfer of the disputed domain name. The Respondent did not reply. The Complainant now seeks transfer of domain name under the provisions of the Policy.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a mark in which it has rights. It argues that its trade mark rights in AMBIEN are established through registration and that the mere adjunction of the generic word “depot” and the gTLD “.com” is not sufficient to escape the finding of similarity and does not change the overall impression of the domain name as being connected with the Complainant. The Complainant relied on Gene Klein a/k/a Gene Simmons, Gene Simmons Company and Kiss Catalogue Ltd v. Darryl Boyd, WIPO Case No. D2001-0183 concerning, inter alia, the disputed domain names <kissarmydepot.org> and <kissarmydepot.net>, where the panelist held:

“The fact that Respondent has attached additional words to the trademarks that are descriptive of the names under which two of the Complainants transact business does not alter the fact that the domain names at issue are confusingly similar to trademarks in which the Complainants have rights.”

Furthermore, the Complainant argues the addition of the gTLD “.com”, has no distinguishing capacity.

The Complainant again addresses the Policy by contending that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant’s rights in the trade mark AMBIEN precede the Respondent’s registration of the domain name. The Complainant is present in over 50 countries including Canada and is well known throughout the world. It argues that the Respondent would have not registered the domain name if it had not known that AMBIEN was the leading prescription sleep aid in North America. The Complainant states that 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 trade mark. The Complainant concludes that the Respondent has no legitimate interests in the domain name <ambien-depot.com> and has registered it with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.

Finally, the Complainant states that the Respondent has registered and is using the domain name opportunistically and in bad faith for the following reasons:

- the Respondent has no prior right in the name and no authorization has been given by the Complainant concerning use of the AMBIEN trade mark;

- the Respondent’s could not help but have been aware that AMBIEN is the leading prescription sleep aid in North America;

- the addition of a word which refers to the availability of the product on the Internet at a lower price misleads Internet users since it makes them believe that it is the official web site of the Complainant;

- the Respondent failed to reply to the Complainant’s Solicitors’ April 2005, demand letter and has therefore refused to transfer the disputed domain name to its legitimate owner, the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:

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

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

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

Having considered the Complainant’s case and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel has no hesitation in finding that the Complainant has rights in the trade mark AMBIEN; rights which predate any rights in the domain name by more than ten years.

Clearly the disputed domain name and the Complainant’s trade mark are not identical. The “.com” designation is inconsequential, but there remains the question of whether “ambien” and “ambien-depot” are confusingly similar.

This Panel follows what it regards as a consensus opinion that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark, assessed independently of extraneous marketing or use considerations.

The disputed domain name consists of the Complainant’s trade mark and the word “depot”, which, argues the Complainant, suggests the availability of the AMBIEN product on the Internet at a lower price and so confuses Internet users since it makes them believe that it is the official web site of the Complainant. The Panel is of the view that the addition of the word “depot” to the mark does nothing to dispel a connection in the public mind between the pharmaceutical name and its owner, the Complainant. In particular, the Panel holds that the English language synonyms for “depot” are a “repository” or “storehouse”. Moreover, if the disputed domain name was presented to a French Canadian audience, the word “depot” would in the Panel’s view have virtually the same meaning. The domain name therefore carries the suggestion of a place to go in order to obtain, perhaps at bulk discount, the Complainant’s products.

Accordingly the Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark and so decides that the Complainant has satisfied this element of the Policy.

B. Rights or Legitimate Interests

It has been observed by panelists in formative decisions that there is a necessary connection between the elements of legitimate rights, on the one hand, and bad faith, on the other. In particular, if it can be seen that the Respondent in fact had rights in the domain name, then it is generally difficult to assimilate that with a conclusion that the Respondent had acted in bad faith.

In this case, the Complainant has repeatedly stated that the Respondent was not licensed or otherwise given consent to use the trade mark. Nonetheless, this is not dispositive because, as a matter of principle in most developed trade mark systems, it is not per se an infringement of a trade mark without the authority of the trademark owner to resell or promote for resale genuine trade marked goods by reference to the mark. However, the circumstances here are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name and to shift the evidentiary burden to the Respondent to show that it does have rights or legitimate interests in that name: See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases referred to there.

Reverting to the Policy, paragraph 4(c)(i) provides that a use is legitimate if, prior to commencement of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Although concerned with the activities of an authorized user/Respondent, the respected UDRP decision in this regard is that of 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 must meet several minimum requirements, being that:

- 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 trade mark owner, or that the website is the official site; and

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

The factors developed in the Oki Data case have been adopted by a number of subsequent UDRP panels. Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; and have also been applied in cases, such as this one, where there was no contractual relationship between the Complainant and the Respondent. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.

This Panel follows the majority view put forward in the Oki Data case that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits, amongst other things, the above criteria, and that this remains so even when there is no contractual relationship between the parties.

Here, however, the Respondent is not confining its use of the disputed domain name to the resale of the Complainant’s pharmaceuticals by reference to Complainant’s mark. Instead, it is trading on the Complainant’s mark to also promote the sale of third party products. At the time of the Complaint, the Respondent’s home page carried direct links to products such as PROZAC and VALIUM (annexure 10 of the Complainant’s evidence). When the Panel visited the Respondent’s website, the home page then prominently promoted sale of AMBIEN sleep products but carried generic links such as “IMPROVE SEX” or “STOP MIGRAINES” or “PAIN CONTROL” which, if accessed, advertised the sale of other companies’ branded pharmaceuticals.

Accordingly, the Panel observes a failure on the part of the Respondent to show bona fide use of the Complainant’s mark in terms of the criteria laid down in the Oki Data case. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has established this element of its case.

C. Registered and Used in Bad Faith

It follows from what has been said that the Panel is satisfied that the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site. Pursuant to Policy, paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii) of the Policy.

The Panel therefore finds that the Complainant has also established this third limb of its case.

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 <ambien-depot.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist

Dated: August 30, 2005