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Sanofi-Aventis v. Internet Marketing Inc./John Bragansa [2005] GENDND 1815 (4 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Internet Marketing Inc./John Bragansa

Case No. D2005-0742

1. The Parties

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

The Respondent is Internet Marketing Inc. / John Bragansa, Hollywood, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ambien-discount-online.info> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2005. On July 13, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On July 13, 2005, Dotster, Inc. 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 August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2005.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on September 20, 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 trademark. 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.

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

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 disputed domain name was registered on January 10, 2005. Sometime in 2005, at a date unknown, it was transferred to the Respondent. A letter of demand had been sent by the Complainant’s solicitors on April 18, 2005, to what appears to have been the Respondent’s predecessor-in-title. There was no reply. There is no evidence of a relationship between the Respondent and its predecessor-in-title other than the sale and purchase of the domain name.

It appears that up until the time of the Complaint, the Respondent’s predecessor-in-title operated a portal-style website under the domain name which promoted the sale of the Complainant’s AMBIEN product along with competitive sleep aid products such as AMBYON. It did so by providing a link through to a site seemingly neither owned nor controlled by the Respondent’s predecessor-in-title.

When the Panel viewed the site at “www.ambien-discount-online.info” a slightly modified, but still portal-style, homepage presented itself. This revised homepage again promoted the sale of AMBIEN sleep aids as it did the sale of CDs and sports tickets. The sale of AMBIEN products was via a third-party web site, “www.borderpharmacy.com” which promoted not only AMBIEN sleep products but also sleep aids FLURAZEPAM and HALCION and other so-called “Ambien generics”.

The Complainant now seeks transfer of the 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 words “discount” and “online” and the gTLD “.info” 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 trademark 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 trademark. The Complainant concludes that the Respondent has no legitimate interests in the domain name <ambien-discount-online.info> and has registered it with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.

B. Respondent

The Respondent did not reply.

6. Discussion and Findings

Notwithstanding the fact that the Respondent did not offer a reply, 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 trademark 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 trademark AMBIEN.

Clearly the disputed domain name and the Complainant’s trademark are not identical. The “.info” designation is inconsequential, but there remains the question of whether “ambien” and “ambien-discount-online” are confusingly similar.

The Panel is of the view that the addition of the descriptive words “discount” and “online” to the mark does nothing to dispel a connection in the public’s 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 first element of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the circumstances here are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests 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 therein.

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 trademark systems, it is not per se an infringement of a trademark without the authority of the trademark owner to resell or promote for resale genuine trademarked goods by reference to the mark. Nonetheless, it is axiomatic that use of the trademark must be in utter good faith judged by normal commercial standards.

Although concerned with the activities of an authorized user/Respondent, the relevant UDRP decision is 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 trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the Respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark 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 trademark owner. It promotes the sale of CDs and sports tickets and other goods and services having absolutely no connection with the Complainant or its products.

Additionally, the Respondent’s site then directs those Internet users interested in AMBIEN to a third-party website where a wide range of pharmaceuticals are promoted, including sleep aids such as FLURAZEPAM and HALCION, which are competitive with the Complainant’s AMBIEN marked goods.

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 second 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.

Although the Respondent was not the first registrant of the disputed domain name, it has been held by panels in earlier UDRP decisions that the transfer of a domain name to a third party amounts to a new registration (Substance Abuse Management, Inc. v. Screen Actors Models International, Inc. (SAMI), WIPO Case No. D2001-0782; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338). The Panel finds that there was bad faith at the time the Respondent became the current registrant.

Pursuant to Policy, paragraph 4(b)(iv), the Panel therefore finds evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii) and so the Complainant has also established this final 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 <ambient-discount-online.info> be transferred to the Complainant.

Debrett G Lyons
Sole Panelist

Dated: October 4, 2005