Sanofi-Aventis v. Conciergebrain.com
Claim Number: FA0512000606476
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 91324.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ambian-prescription.us>, <cheap-ambian.us>, <ambien-without-prescription.us>, <order-cheapest-ambien.us> and <ambien-10mg-sleeping-pill.us>, registered with Wild West Domains, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Tyrus R. Atkinson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on December 8, 2005; the Forum received a hard
copy of the Complaint on December 12, 2005.
On December 8, 2005, Wild West Domains, Inc. confirmed by e-mail to the
Forum that the domain names <ambian-prescription.us>, <cheap-ambian.us>, <order-cheapest-ambien.us> and <ambien-10mg-sleeping-pill.us> are registered with Wild West
Domains, Inc. and that Respondent is the current registrant of the names. On December 9, 2005, Wild West Domains, Inc.
confirmed by e-mail to the Forum that the domain name <ambien-without-prescription.us> is registered with Wild West
Domains, Inc. and that Respondent is the current registrant of the name. 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 December 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 3, 2006 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 Januray 6, 2006, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Tyrus R.
Atkinson, 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 name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
The <ambian-prescription.us>, <cheap-ambian.us>, <ambien-without-prescription.us>, <order-cheapest-ambien.us> and <ambien-10mg-sleeping-pill.us>
domain names registered by Respondent, are confusingly similar to Complainant’s AMBIEN mark.
2.
Respondent does
not have any rights or legitimate interests in the <ambian-prescription.us>, <cheap-ambian.us>, <ambien-without-prescription.us>, <order-cheapest-ambien.us> and <ambien-10mg-sleeping-pill.us>
domain names.
3.
Respondent
registered or used the <ambian-prescription.us>, <cheap-ambian.us>, <ambien-without-prescription.us>, <order-cheapest-ambien.us> and <ambien-10mg-sleeping-pill.us>
domain names in bad faith.
B. Respondent failed to submit a
response to this proceeding.
FINDINGS
Complainant, Sanofi-Aventis, is the third
largest pharmaceutical company in the world, with a business presence in more
than fifty countries. Complainant holds
a trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the AMBIEN mark (Reg. No. 1,808,770 issued December 7, 1993) in
connection with pharmaceutical drugs for the treatment of sleep disorders.
Respondent registered the <ambian-prescription.us>, <cheap-ambian.us>,
and <ambien-10mg-sleeping-pill.us> domain names on December 29, 2004.
Respondent registered the <ambien-without-prescription.us> and <order-cheapest-ambien.us> domain names on
January 7, 2005. Respondent is using the disputed domain names
to redirect Internet users to a website that sells Complainant’s
products.
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.
Complainant has
established rights in the AMBIEN mark
through registration of the mark with the USPTO. See 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.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The <ambian-prescription.us>, <cheap-ambian.us>, <ambien-without-prescription.us>, <order-cheapest-ambien.us> and <ambien-10mg-sleeping-pill.us>
domain names that
Respondent registered are confusingly similar to Complainant’s AMBIEN mark. The disputed domain names incorporate Complainant’s mark and
deviate with the addition of the generic top-level domains, common terms,
hyphens and misspelled variations of Complainant’s mark. These alterations to Complainant’s
registered mark do not distinguish the domain names pursuant to Policy ¶
4(a)(i). See Nev. State Bank v.
Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003)
(“It has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”); see also Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see also Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a Respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to Complainant’s
marks); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May
18, 2000) (holding “that the use or absence of punctuation marks, such as
hyphens, does not alter the fact that a name is identical to a mark").
The Panel finds that Complainant has
established Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name and was not using the domain name in connection with a legitimate or fair use).
Moreover, Respondent’s domain names are confusingly similar
to Complainant’s AMBIEN mark and
are used to redirect Internet users to a website that claims to sell
Complainant’s products. The Panel finds
that Respondent’s use of domain names that are confusingly similar to
Complainant’s mark to divert Internet users to Respondent’s websites is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership
Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”); see also G.D. Searle & Co.
v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the
respondent’s use of the disputed domain name to solicit pharmaceutical orders
without a license or authorization from the complainant does not constitute a bona
fide offering of goods or services under UDRP ¶ 4(c)(i)).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the confusingly similar domain names to sell Complainant’s AMBIEN products constitutes disruption and is evidence that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Additionally, the
disputed domain names are confusingly similar to Complainant’s AMBIEN mark. Consumers accessing Respondent’s domain names may become confused
as to an affiliation between the disputed domain names and Complainant. Thus, Respondent’s use of the disputed
domain names to purportedly sell Complainant’s AMBIEN products is evidence of bad faith registration or use
pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA
93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
UDRP ¶ 4(b)(iv) by selling used Fanuc parts and robots on website
<fanuc.com> because customers visiting the site were confused as to the
relationship between the respondent and the complainant); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent
attracted users to a website sponsored by the respondent and created confusion
with the complainant’s mark as to the source, sponsorship, or affiliation of
that website).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is
Ordered that the <ambian-prescription.us>, <cheap-ambian.us>, <ambien-without-prescription.us>, <order-cheapest-ambien.us> and <ambien-10mg-sleeping-pill.us>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: January 20, 2006
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