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Sanofi-aventis v. ClickStream Marketing LLC [2005] GENDND 1625 (14 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. ClickStream Marketing LLC

Case No. D2005-0769

1. The Parties

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

The Respondent is ClickStream Marketing LLC, Baltimore, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ambien-sleep.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2005. On July 20, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 20, 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. 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 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2005. The Response was filed with the Center on August 10, 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. 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.us>, <ambien.fr>, <ambien.us>, <ambien.co.uk>, <ambien.net> and <ambien.biz>.

The Complainant’s products are marketed in the United States through its affiliate company, Sanofi-Synthelabo Inc. and through various other alliances and licensees.

The Respondent registered the disputed domain name in April 2005, and, up until the time of the Complaint, operated an active website under the domain name which promoted the sale of the Complainant’s AMBIEN product, and enabled the purchase of that product by providing an automatic link through to another website at “www.integrarx.com”, which is seemingly neither owned or controlled by the Respondent.

On June 17, 2005, the Complainant’s in house attorney sent a cease and desist letter by email to the Respondent alleging trade mark infringement and demanding transfer of the disputed domain name. Between June 17 and June 25, 2005, there ensued correspondence between the parties which indicated some possibility of an agreement to transfer the name, but this ended on June 25, 2005, with an unjustifiably offensive message from the Respondent, the gist of which was that it had no intention of transferring the disputed name to the Complainant.

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 purely descriptive word “sleep” 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 further 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 and is well known throughout the world, especially in the United States. It argues that the Respondent would have not registered the domain name if it had not known that AMBIEN was a leading prescription sleep aid. 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-sleep.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 like “sleep” which simply describes the effect or function of the drug misleads Internet users since it makes them believe that it is the official web site of the Complainant;

- any Internet user would believe the website to be the official web site of the Complainant and refer to the availability of the product on the Internet at a lower price;

- the Internet user may also believe the web site to be the official site of the Complainant since it reproduces the design elements of the AMBIEN trade mark; and

- the Respondent’s exceedingly offensive reply to the transfer demand is per se indicative of bad faith.

B. Respondent

The Respondent’s various arguments can be best summarized as follows :

It is using the domain name to enable Internet users to find its site in the same way that a hardware store might advertise the products in its inventory by putting them in the most prominent storefront window space.

It is using the name to bring visitors to a website which then redirects them to another website “www.integrarx.com” which is an online pharmaceutical store clearly not associated with the Complainant.

The Complainant’s arguments, if correct, would mean that all resellers were diverting Internet users from its official website just by using “promotions or keywords that will place them high in the search engines”.

The Respondent’s own Google search on the word AMBIEN shows that 75% of the sites located are not owned by the Complainant and are all diverting traffic that might otherwise go to the Complainant’s official site.

The Respondent did not believe it needed the Complainant’s authorization to use the mark since many items are legally described and sold on the Internet by people with no authorization. It understood that a product name could be used in a domain name if it did not in any way put the product in an unfavourable light.

The Respondent obliquely broke off email communications with the Complainant’s in-house attorney because it suspected it had become the victim of the practice known as “phishing” and was not dealing with a true representative of the Complainant.

The Respondent has shown its good faith by taking down all webpages from its site during the course of these proceedings.

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met. 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-sleep” are confusingly similar.

The Panel is of the view that the addition of the descriptive word “sleep” to the mark does nothing to dispel a connection in the public mind between the pharmaceutical name and its owner, the Complainant.

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.

Before turning to the second and third limbs of the Policy, it is convenient to note here that the Complainant has also asserted rights in an unproved stylized version of its mark, but the Panel takes the view that those potential rights are relevant to the question of bad faith and so do not require scrutiny here.

B. Rights or Legitimate Interests / Bad Faith

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 particular case, the questions of legitimate rights and good/bad faith use are so closely connected that the Panel will analyze them together.

The Complainant has repeatedly stated that the Respondent was not licensed or otherwise given consent to use the trade mark. In spite of that, it is clear that the Respondent believes it has some sort of tacit permission from another to use the mark which is separate from the more general freedom it also thinks it enjoys to use the mark to identify the goods.

The Respondent describes itself as “legally an online affiliate” but it seems that affiliation, contractual or otherwise, is with the owner of the <integrarx.com> domain name (hereinafter Integrarx). When the Panel visited “www.integrarx.com”, a partnering program was described under which approved “affiliates” share in a referral commission for orders placed with Integrarx which come via the affiliates’ own sites.

There is no clear indication in the papers as to whether the Respondent became an approved affiliate. The affiliate program agreement (which is set out on the Integrarx website) has few intellectual property provisions, but grants a limited licence to link to the site and to identify oneself as a participant in the program subject to certain confidentiality terms and an obligation to ensure:

“that materials posted on your site do not violate or infringe upon the rights of any third party (including, copyrights, trademarks, privacy or other personal or proprietary rights)”.

Integrarx’s general legal and privacy provisions include a statement that:

“All of the Content on the Site is subject to trademark, service mark, trade dress, copyright and/or other intellectual property rights or licenses held by Integrarx or one of its affiliates or by third parties who have licensed materials to us”.

It is beyond the scope of this case, and the role of this Panel, to uncover whether any permission to use the AMBIEN trade mark has been given to Integrarx by the Complainant, or to discover whether any such consent could be extended to the Respondent. The Respondent had the opportunity to elaborate on the issue but did not and so the Panel finds that 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.

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. Indeed, the Respondent does its best to make this same point. Nonetheless, it is axiomatic that use of the trade mark must be in utter good faith judged by normal commercial standards.

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.

In this case, the Respondent has not made bona fide use of the Complainant’s mark in terms of the criteria laid down in the Oki Data case. The Complainant’s site did nothing to disclaim any relationship with the trade mark owner. It did nothing to dispel any possible suggestion that it might be the trade mark owner, or that the website might be the, or a, official site of the Complainant. Moreover, it adopted for use there identical representations of the Complainant’s stylized version of the AMBIEN trademark, again without any brand owner acknowledgement. The Complainant no doubt has copyright if not trade mark rights in that stylized version of AMBIEN.

Additionally, the Respondent’s site then auto-directed Internet users to a third party website over which it had no control. Albeit that the transfer deep linked the Internet user only to the AMBIEN specific page of the third party site, simple truncation by a user could readily produce the “www.integrarx.com” homepage where a wide range of pharmaceuticals are promoted, including products such as SONATA which are directly competitive with the Complainant’s AMBIEN marked goods. This Panel takes the view that even ignoring this modest level of navigational dexterity by an Internet user, it is a matter of principle in keeping with the Oki Data decision, that bona fide usage of another’s mark mandates that the user be in full control of the way in which the mark is used. Linking to a third party site is antithetical to that requisite control.

Turning briefly to the Respondent’s remaining arguments:

1 The Panel is not persuaded by the analogy that a bricks and mortar store advertises the products in the same way by putting them in the most prominent storefront window space. In this case, the Respondent is making equivalent use of the mark as if it were using the mark in the store name itself.

2 The Complainant’s arguments, would mean that all resellers were diverting Internet users from its official website just by using “promotions or keywords that will place them high in the search engines”.

The Panel agrees that this might well be true and points to the fact that in many jurisdictions, the “keyword” use of trade marks as metatags, for example, is a well recognized instance of trade mark infringement.

3 The Respondent’s own Google search on the word AMBIEN shows that 75% of the sites located are not owned by the Complainant and are all diverting traffic that might otherwise go to the Complainant’s official site.

The Panel has examined the evidence submitted by the Respondent in this respect and can not see one instance of the mark AMBIEN being used in a domain name. The hits are all of the word contextually in sites such as “www.drugsforcost.com”.

4 The Respondent did not believe he needed the Complainant’s authorization to use its mark since many items are legally described and sold on the Internet by people with no authorization. It understood that a product name could be used in a domain name if it did not in any way put the product in an unfavourable light.

The Panel has elaborated the requirement that only bona fide use is permissible and that requires the strictest good faith. The question of favourable or unfavourable product statements more likely attracts the operation of other laws and not the application of this Policy.

5 The Respondent obliquely broke off email communications with the Complainant’s in-house attorney because it suspected it had become the victim of the practice known as “phishing” and was not dealing with a true representative of the Complainant.

The Panel on review of all the evidence is not convinced of this and finds the Respondent’s final communication with the Complainant deeply offensive.

6 The Respondent has shown its good faith by taking down all webpages from its site during the course of these proceedings.

The Panel is of the opinion that the Respondent has shown little appreciation of, or respect for, the Complainant’s intellectual property rights and , believes that there is no indication that there will be good faith usage of the domain name in the future both in view of the Respondent’s conduct and also as a result of the inherently confusing nature of the disputed name which will always suggest an association with the Complainant.

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.

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).

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-sleep.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist

Dated: September 14, 2005