Sanofi-Aventis v. Conciergebrain.com
Claim Number: FA0510000571944
PARTIES
Complainant is Sanofi-Aventis
(“Complainant”), represented by Baila H.
Celedonia, of Cowan, Liebowitz &
Latman, P.C., 1133 Avenue of the
Americas, New York, NY 10036. Respondent is Conciergebrain.com (“Respondent”), 18543 Devonshire St #120,
Northridge, CA 91234.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buy-ambien-cheap.us>, <order-ambien.us>, <purchase-ambien.us>, <ambien-tablet.us>, and <ambien-com.us>, registered with Wild West Domains, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on October 3, 2005; the Forum received a hard copy
of the Complaint on October 5, 2005.
On October 4, 2005, Wild West Domains, Inc. confirmed by e-mail to the
Forum that the domain names <buy-ambien-cheap.us>, <order-ambien.us>, <purchase-ambien.us>, <ambien-tablet.us>, and <ambien-com.us> are registered with Wild West Domains, Inc.
and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that
Respondent is bound by the Wild West Domains, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On October 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 11, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, using the same contact
details and methods as were used for the Commencement Notification, the Forum
transmitted to the parties a Notification of Respondent Default.
On November 4, 2005, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <buy-ambien-cheap.us>, <order-ambien.us>, <purchase-ambien.us>, <ambien-tablet.us>, and <ambien-com.us> domain names are confusingly similar to Complainant’s AMBIEN mark.
2. Respondent does not have any rights or legitimate interests in the <buy-ambien-cheap.us>, <order-ambien.us>, <purchase-ambien.us>, <ambien-tablet.us>, and <ambien-com.us> domain names.
3. Respondent registered or used the <buy-ambien-cheap.us>, <order-ambien.us>, <purchase-ambien.us>, <ambien-tablet.us>, and <ambien-com.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Sanofi-Aventis, is the third
largest pharmaceutical company in the world, with a business presence in more
than 50 countries. Complainant holds a
trademark registration for the AMBIEN mark (Reg. No. 1,808,770), registered
with the U.S. Patent and Trademark Office (“USPTO”) on December 7, 1993 and
renewed on December 7, 2003. AMBIEN is
one of Complainant’s three flagship products and is used for the short-term
treatment of insomnia. Complainant also
holds the registration to the <ambien.com> domain name.
Respondent, Conciergebrain.com, registered
the <buy-ambien-cheap.us> domain name on December 29, 2004, the <order-ambien.us> domain name
on January 7, 2005, the <purchase-ambien.us> domain name on January
7, 2005, the <ambien-tablet.us>
domain
name on December 29, 2004, and the <ambien-com.us> domain name on
December 29, 2004. All of the disputed
domain names resolve to similar websites, offering sales of the AMBIEN product
in the main website window.
Additionally, each website has a left banner that offers links to other
drugs, including a link to “Sonata,” a drug offered by a third-party to compete
with Complainant’s AMBIEN product.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
The Panel finds that Complainant has
evidenced its rights in the AMBIEN mark by proffering its USPTO registration. Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The Panel finds that Respondent’s <buy-ambien-cheap.us>, <order-ambien.us>, <purchase-ambien.us>, <ambien-tablet.us>, and <ambien-com.us>
domain names are confusingly similar to Complainant’s AMBIEN mark. The only differences between the disputed
domain names and Complainant’s mark are the addition of hyphens, the addition
of the words “buy” and “cheap,”
“order,” “purchase,” “tablet,” or “com,” and the addition of the “.us”
top-level domain, which do not significantly distinguish the domain name from
the mark. See Health
Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003)
(“[T]he addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to UDRP ¶ 4(a)(i).”); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the subject domain name incorporates the VIAGRA mark in its entirety,
and deviates only by the addition of the word “bomb,” the domain name is
rendered confusingly similar to the complainant’s mark).
The Panel finds that Complainant has
established Policy ¶ 4(a)(i).
Complainant has not licensed Respondent to
sell Complainant’s products. There is
nothing in the record, including the WHOIS registration information for the
domain names, which suggests that Respondent holds a trademark registration
similar to the disputed domain names pursuant to Policy ¶ 4(c)(i) or that
Respondent is commonly known by the disputed domain names pursuant to Policy ¶
4(c)(iii).
Respondent is appropriating Complainant’s
marks to sell Complainant’s goods as well as competitors’ goods. The Panel finds that appropriating another’s
mark to sell its goods as well as its competitors’ goods is not a bona fide
offering of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of UDRP ¶¶ 4(c)(i) or (iii) because
the respondent used the domain name to take advantage of the complainant's mark
by diverting Internet users to a competing commercial site).
The Panel finds that Complainant has
established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s
mark to sell Complainant’s goods without authorization. The Panel finds that Respondent is using the
confusingly similar domain names to create confusion for commercial gain, which
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website,
offering Usag products, together with the domain name may create the
(incorrect) impression that Respondent is either the exclusive distributor or a
subsidiary of Complainant, or at the very least that Complainant has approved
its use of the domain name.”).
Respondent is also appropriating Complainant’s marks to offer links to Complainant’s competitors. The Panel finds that appropriating one’s mark to lead consumers to its competitors is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that although the respondent failed to provide evidence of a plan to use its domain name, the panel inferred that the respondent registered the domain name for ultimate use as an online pharmacy because the domain name incorporated marks of competing pharmaceutical products).
The Panel finds that Complainant has
established Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is
Ordered that the <buy-ambien-cheap.us>, <order-ambien.us>, <purchase-ambien.us>, <ambien-tablet.us>, and <ambien-com.us> domain names be TRANSFERRED
from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 18, 2005
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