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Sanofi-Aventis v. Helois Lab [2005] GENDND 1462 (10 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Helois Lab

Case No. D2005-0607

1. The Parties

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

The Respondent is Helois Lab, Eldoret, Kenya.

2. The Domain Name and Registrar

The disputed domain name <ambienadvisor.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2005. On June 10, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On the same day, Intercosmos Media Group d/b/a directNIC.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 21, 2005. The Center verified that the Complaint together with the amendment to 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 June 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2005.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on July 27, 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

A. Complainant

The Complainant is one of the world’s largest pharmaceutical companies. It was created as of December 31, 2004, through the merger of Sanofi-Synthélabo with Aventis. It is a multinational company with presence in more than 100 countries all over the world, including many African countries, where the products of the Complainant are marketed through a number of channels.

AMBIEN is a product manufactured by the Complainant and is indicated for the short-term treatment of insomnia. It was launched in the United States in 1993, and is considered to be the leading prescription sleep aid in that country. In May 2004, a study was presented at the American Psychiatric Association Annual Meeting that underscored that the improvements in sleep provided by AMBIEN did not diminish over time and symptoms did not worsen on days the product was not used.

The Complainant owns a large number of trademark registrations for the word AMBIEN in class 5 in more than 50 countries including the USA (registration No. 1808770, dated December 7, 1993), international registration No. 605 762, dated August 10, 1993, extending to Egypt, Morocco and the Sudan, and registration No. 37403, dated June 30, 1998, in the OAPI countries.

These facts are documented by the Complainant.

The Complainant and its affiliates also registered many domain names worldwide containing the trademark AMBIEN, including the domain names <ambien.com>, <ambien.net>, <ambien.fr,> <ambien.us> and <ambien.co.uk>.

On April 18, 2005, the representatives of the Complainant wrote to the Respondent and demanded the disputed domain name to be transferred to the Complainant.

B. Respondent

The Respondent registered on December 12, 2004, the domain name <ambienadvisor.com>. The domain name leads to a website with the heading “Websearch” where links to many other websites are provided, including websites that offer the AMBIEN product of the Complainant, but also websites offering competing products, such as XANAX, for sale. A further link proposes: “Buy this Domain”.

The Respondent did not to reply to the letter of the representatives of the Complainant, dated April 18, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <ambienadvisor.com> is identical or confusingly similar to its trademark AMBIEN in which it has rights; It points out in this connection that many Panel decisions have considered that the addition of generic terms such as “advisor” to the Complainant’s trademark cannot exclude confusing similarity; (B) the Respondent has no rights ore legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <ambienadvisor.com> consists of the trademark AMBIEN of the Complainant, combined with the generic term “advisor” and the gtld “.com”.

The distinctive part of the domain name is identical with the Complainant’s trademark and the text of the domain name, as composed of its two elements suggests to users to find on the respective website information about the AMBIEN product. Since the gtld “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark, there can be no doubt that the domain name is confusingly similar to the Complainant’s trademark. Internet users, typing the Respondent’s domain name will expect to arrive at a website of the Complainant, where advice about the Complainant’s AMBIEN product is provided, and will be confused when being confronted with a website of a search engine that is advertising its services.

B. Rights or Legitimate Interests

The word AMBIEN is not a descriptive word. It is known as the trademark of the Complainant’s product that is the leading prescription sleep aid in the United States. There cannot be any doubt that the Respondent was aware of the Complainant’s trademark under which the AMBIEN product is sold, otherwise the Complainant would not have created a domain name consisting of the trademark AMBIEN and the word “advisor”, thus creating the impression that a corresponding website would render advice about the AMBIEN product.

The Complainant has not licensed or otherwise consented to the use of its trademark AMBIEN to the Respondent. The Respondent apparently does not use, nor has made any preparations to use, the domain name <ambienadvisor.com> in connection with a bona fide offering of goods or services. He cannot therefore be commonly known by that domain name. Furthermore, the Respondent does not make any non-commercial use of the domain name. Absent any submission of the Respondent to the contrary, the Panel is convinced that the Respondent links its domain name to a search engine site for commercial gain. Failing any submission of the Respondent the Panel therefore is convinced that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.

As noted before, there can be no doubt that the Respondent knew the trademark of the Complainant, when registering the domain name <ambienadvisor.com>. That he registered the domain name in bad faith results from the fact that he linked the domain name to a search engine.

The link to that search engine amounts to use in bad faith for the following reasons:

Internet users expecting to receive advice on the AMBIEN product when typing the domain name <ambienadvisor.com> arrive at a search engine, apparently managed by Kentech, a company active in the business of reselling domain names. The web page “www.ambienadvisor.com” contains at the top right hand corner a button “Buy this domain”. After clicking on this button, the user is transferred to the website “www.kenyatech.com”. This site corresponds to the email address of the Respondent: “info@kenyatech.com”.

These facts have an apparent similarity with the facts on which a decision was based in the case Bart van den Bergh Merck-Echt BV v. Kentech Company Ltd, WIPO Case No. D2005-0127 (March 24, 2005). In that case the disputed domain name was registered by Kentech itself, but is was leading to the same type of search website, providing links to different topics and showing on the upper right part a button “Buy this domain”. As in the present case, the button was linked to the website “www.kenyatech.com”. In that case the Complainant was able to make an offer to Kentech for the disputed domain name. In the present case, when clicking the button, the user is told that the domain name does not exist in the records. This is the situation at least now, after the present proceedings had been initiated. Even if the domain name <ambienadvisor.com> is therefore, at least now, not for sale, the Panel considers the very fact that the search site contains the button “Buy this domain” as an element of bad faith. First of all, users expecting to arrive at a website of the Complainant or at least a website somehow related to the Complainant, will be confused to read on the Search web site that the domain is for sale. Also, under the circumstances, the Panel has good reasons to believe that the Respondent, respectively Kentech, to which he is related, intends to include in the future the domain name <ambienadvisor.com> in its data base and thus to offer it for sale.

In addition to this element of bad faith, the Panel considers as a further element of bad faith the very fact that the domain name leads to a search site where, amongst other items, not only links to the AMBIEN product are provided, but also links to websites offering competing products, such as XANAX, for sale. No doubt these links are not offered for free. In the absence of any submission of the Respondent, the Panel is therefore satisfied that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

Taking all these elements together, and considering furthermore that the Respondent did not reply to the warning letter of the representatives of the Complainant, the Panel concludes that the Respondent registered and is using the domain name <ambienadvisor.com> 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 <ambienadvisor.com> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: August 10, 2005