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Sanofi-Aventis v. Juntech, Inc [2005] GENDND 1473 (5 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Juntech, Inc

Case No. D2005-0606

1. The Parties

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

The Respondent is Juntech, Inc, New Orleans, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <online-ambien.biz> is registered with Go Daddy Software.

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 Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 13, 2005, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 28, 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. The 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 the United States, 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), and international registration No. 605 762, dated August 10, 1993.

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.fr>, <ambien.us> and <ambien.co.uk>, <ambien.com> and <ambien.net>.

On April 18, 2005, the representatives of the Complainant wrote to the administrative and billing contact of the Respondent, called Domains By Proxy and demanded the disputed domain name to be transferred to the Complainant.

B. The Respondent

On September 23, 2004, the Respondent registered the domain name <online-ambien.biz>. Originally under the Registrant’s name it was noted: “private”. After the Complainant had sent the warning letter to Domains By Proxy, the complete Whois, mentioning Juntech, Inc., as Respondent, was released. The domain name leads to a website, promoting AMBIEN and other medical products and providing links to websites where competing products of the Complainant are offered for sale.

The Respondent failed to reply to the cease and desist letter of the Complainant dated April 18, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <online-ambien.biz> 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 the term “online” 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 <online-ambien.biz> consists of the trademark AMBIEN of the Complainant, combined with the generic term “online” and the gtld “.biz”.

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 may be understood by users to purchase the AMBIEN product online. Since the gtld “.biz” 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 and will be confused when being confronted with a website of the Respondent, where not only the product of the Complainant is offered for sale, but also links to websites promoting competitive products are provided.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise consented to the use of its trademark AMBIEN to the Respondent. 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. Furthermore, there cannot be any doubt that the Respondent is aware of the Complainant’s trademark, since on its website it states: “this is the perfect platform to buy Ambien”. Users of the domain name are directed to this website, which provides links to websites promoting the AMBIEN product of the Complainant as well as competitive products, such as XANAX. Such use of the Complainant’s trademark cannot be considered to be a bona fide offering of goods or services. Failing any submission of the Respondent to the contrary, the Panel is satisfied that the Respondent is not commonly known by the domain name. Since the Respondent offers products for sale on its website, it does not make a non-commercial use of the domain name.

Failing any submission of the Respondent the Panel therefore is satisfied 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.

Paragraph 4(b)(iv) of the Policy lists as one of the typical situations as evidence of bad faith that, by using the domain name, the Respondent has intentionally attempted 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 its website or of a product or service on its website.

The Complainant has submitted facts and evidence that the Respondent has fulfilled the conditions set out in paragraph 4(b)(iv). As pointed out before, there can be no doubt that the Respondent knew the product, sold under the Complainant’s trademark AMBIEN, when it registered the domain name. It uses the domain name for a website, in which it renders information about that product in a context that creates the impression that there exists at least some kind of sponsorship or endorsement of the Complainant. In the upper part of the website “www.online-ambien.biz”, copy of which was submitted by the Complainant a picture is appearing where medical professionals are portrayed, thus creating the impression of competence of the website provider. At the home page of the website the text appears: “This site is the perfect platform to buy AMBIEN – the revolutionary medication for the treatment of chronic insomnia.” Several links related to the AMBIEN product are provided, such as a link to general information about the product and a link to its possible side effects. Further links are named: “buy online-AMBIEN” and “ Price online-AMBIEN”. The user may therefore believe that the AMBIEN product is offered by the Complainant or with its consent. Consequently users are likely to be confused with the Complainant’s mark both as to the source, sponsorship, affiliation or endorsement of the website and as to the source, sponsorship, affiliation or endorsement of the AMBIEN product offered for sale on that website. However, the website contains also a further link named: “LINKS”. This link leads to a list of website addresses, containing other pharmaceutical preparations, including products that are directly competing with AMBIEN, such as XANAX. This clearly shows that the Respondent uses the domain name for commercial gain, by attracting users to its website, where the AMBIEN product is offered for sale, but also competing products are offered for sale.

In the absence of any submission of the Respondent to the contrary, the Panel is therefore convinced that the Respondent registered and is using the domain name <online-ambien.biz> 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 <online-ambien.biz> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: August 5, 2005